5.2.7 Product claim with process features

In T 815/93 and T 141/93 the claims comprised both product features and features for a process for manufacturing the product. In both cases, only the process features distinguished the invention from the prior art. Following the case law on the novelty of product-by-process claims, the board found that process features not previously described could establish the novelty of the claimed product only if they caused it to have different properties from the products previously described. Neither the patent proprietor in the first case nor the applicant in the second case could demonstrate this.

In T 32/17 the board found that a process feature in a product-by-process claim only contributes to the novelty of a product claim insofar as it gives rise to a distinct and identifiable characteristic of the product (see also T 179/03). From hybridomas' deposit information the skilled person derived that hybridomas producing the claimed antibodies had been deposited and had been assigned deposit numbers. This deposit information however did not convey any technical information about the chemical composition or molecular structure of the antibodies produced by these hybridomas, such as their amino acid sequence, either explicitly or implicitly. The board thus concluded that the deposit of a hybridoma under R. 31 EPC for compliance with the disclosure requirement of Art. 83 EPC did not in itself convey any technical information about the molecular structure of the monoclonal antibody produced by said hybridoma, such as its amino acid sequence.