d) Use of a known process for a particular purpose 

The board in T 461/07 observed that it was settled case law that there was no basis for regarding the purpose of carrying out a process as having the effect of a functional technical feature distinguishing the process from others carried out using identical features but for a different purpose (T 210/93 and T 1343/04).

In T 210/93 the originally claimed process for the production of a rubber product was held not to be novel by the examining division because the claimed temperature range was already disclosed in D1. With reference to G 2/88 and G 6/88, the applicants thereupon claimed the use of this known process for the purpose of preparing the rubber product having a certain maximum ratio of constituent X. They argued that in the absence of a disclosure of this mole ratio in D1, this constituted a "specific technical purpose of achieving the previously unknown chemical structural arrangement". The board observed that decisions G 2/88 and G 6/88 related to claims to the use of a known compound for a particular purpose, in contrast to the appellants' claim, which was directed to the use of a known process for a particular purpose, the purpose being the preparation of a particular product naturally resulting from such process. In the board's view, the use of a process for the purpose of preparing its product(s) could be said to be nothing but that very same process, and the scope of protection appeared to be the same for a claim to the process as such and a claim to such use (confirmed in T 684/02 and T 2215/08).

In T 684/02 the board noted that claim 1 was directed to the use of the fluorination reaction process in order to remove the unstable end groups from the starting polymer. The effect of this process manifested itself in its result, i.e. in the product together with all its internal characteristics and the consequences of its particular history of origin (see T 119/82; OJ 1984, 217) but not in an effect observed in a particular use of the product. Moreover, in the board's view, a claim to the use of a process or to the process itself addressed the producer of a product, irrespective of any conceivable later applications, methods of further processing or uses of the product, whilst a claim to the use of a product clearly addressed the customer/user of that product. In other words, the asserted advantage or purpose could not be taken into account as a functional technical feature in claim 1 because of the jurisprudence of the boards of appeal as well as for technical reasons, because the asserted advantage or purpose was related only to the product (manufactured in some process or other) when used in certain circumstances and marginal conditions.

In T 1039/09 the physical steps of the claimed method were the same as in the prior art. However it was submitted that the purpose of the method, namely producing bovine milk having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids, was also a technical feature to be taken into account in the assessment of the novelty of claim 1. The board stated that the claim at issue related to a known method for a particular purpose, namely the production of a product, wherein the product is the necessary result of the known method and indistinguishable from the product obtained in the prior art. The question arose whether the purpose could be considered a functional technical feature of a claim directed to a process for producing a product characterised by process steps wherein the purpose of carrying out said process steps was indicated in the claim. In the board's judgment the skilled person would not in the present case use the process for any purpose other than the production of its inevitable product, namely milk containing only beta-casein having a proline at position 67 and therefore also having a reduced level of saturated fatty acids relative to the level of unsaturated fatty acids. The board concluded that the relevant technical features for the purpose of assessment of the novelty of the method of claim 1 were its physical steps and that document (D3), which disclosed these physical steps, anticipated the subject-matter of claim 1 of the main request.

In T 1822/12 the appellant submitted that the prior art did not disclose the purpose of the method steps, which was defined in claim 1 as "a method for reducing acrylamide formation in thermally processed foods", or the step of "cooking said food to form a cooked food with a reduced concentration of acrylamide". According to the appellant, the above purpose and step were features limiting the scope of claim 1 and distinguishing it from the disclosures in the prior art. With regard to the above purpose, the appellant submitted that the principles established by G 2/88 and G 6/88 concerning limiting functional features of a claim should apply equally to the method claim in question. The board, however, stated that G 2/88 related only to a use claim, namely to a claim for the new use of a known compound. It concluded that claim 1 of the main request relating to the known method of thermally processing foods for the unknown purpose of reducing acrylamide formation could not be construed to include that purpose as a distinguishing functional technical feature.