8.1.3 Applicability of G 2/88 and G 6/88 to process claims
In T 1049/99 the board took the view that the criteria set out in decisions G 2/88 and G 6/88 (OJ 1990, 93 and 114) could not simply be transferred to process claims. The board pointed out that, according to those decisions, a new purpose related to a new technical effect could render novel the claimed use of a product already known, even though the means of realisation making it possible to achieve the new purpose was identical to the known means of realisation, given that a use claim in reality defined the use of a particular physical entity to achieve an effect. The board distinguished this situation from that of a process claim which defined the use of a particular physical entity to achieve a product and, therefore, fell within the scope of Art. 64(2) EPC 1973. An extension of the criteria set out in the decisions of the Enlarged Board referred to above would result in protection of a product obtained by a process already known on the basis of the new effect discovered in the process itself, even though that process was identical to that already known (see also T 910/98).
In T 1179/07 the board found that the central findings in G 2/88 und G 6/88 concerned a claim to the use of a known compound for a previously unknown purpose. No findings were made in those decisions with respect to process claims for a specific use. Although the "use of a compound" could be regarded as a process including the compound use as a procedural step, a use claim could not normally be treated as equivalent to a process claim because Art. 64(2) EPC was not, as a rule, applicable to use claims. According to the Enlarged Board in G 2/88, Art. 64(2) EPC was generally not directed to patents whose claimed subject-matter was the use of a process to achieve an effect (this normally being the subject of a use claim) but rather to European patents whose claimed technical subject-matter was a process of manufacture of a product. Despite the indicated purpose, the process claimed in this case was clearly aimed at manufacturing a product: a procedural treatment of the source product resulted in an end product differing from the source product. Were the board to extend the findings made in G 2/88 and G 6/88 to the granted process claim, this would confer fresh protection under Art. 64(2) EPC on the product resulting from granted process claim 1 even though that product was already known from D1 and obtained by precisely the same process as that described in D1. It could not, however, be in keeping with the object and purpose of Art. 64(2) EPC to extend its protection to a product obtained by a known process. It was, in particular, this difference in the treatment of process and use claims in the context of Art. 64(2) EPC which, in the board's view, left it no scope to extend the principles laid down by the Enlarged Board in G 2/88 and G 6/88 with regard to the use of a known compound for a previously unknown purpose to process claims (see also T 684/02, T 910/98 and T 1049/99).
In T 304/08 the board noted that G 6/88 and G 2/88 (OJ 1990, 93) contained no finding concerning claims to a method (or process, these two terms being used synonymously in this decision) wherein the purpose of carrying out the method was defined in the claim. However, G 2/88 stated that there were basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use) and that the technical features of a claim to an activity were the physical steps which defined such activity. Decision G 2/88 further distinguished, in the context of defining the extent of protection conferred under Art. 64(2) EPC, between claims which defined the use of a particular physical entity to achieve an "effect" and the use to produce a "product" and concluded that, providing that the use claim in reality defined the use of a substance to achieve an effect and did not define such a use to produce a product, the use claim was not a process claim within the meaning of Art. 64(2) EPC. Thus, the criteria set out by the Enlarged Board of Appeal in the aforementioned decisions could only be applied to claims directed exclusively to the use of a substance for achieving an effect.
In T 1092/01 the board held that the rationale of decision G 2/88 was applicable to a claim directed to a known process by which a previously unknown technical effect (conversion of lutein to its isomeric form zeaxanthin) was achieved. It considered that the relevant question to be answered was whether the skilled person would use the claimed process for a purpose different from that for which the processes in the prior art had been used. In the board's judgment, in view of its starting material and its procedural steps, the claimed process could only serve the same final purpose of production of pigments for food industry. The disclosure of the purpose did not open the way to a new activity and occurred inherently when carrying out the process in the prior art. Hence the board concluded that the statement of such an effect could not confer novelty on the claimed process (see T 1039/09). Observing that the board in T 1092/01 had not given any detailed reasons for the above-mentioned finding (in point 17 of the decision) that the rationale of G 2/88 could also be applied to a process claim, the board in T 1179/07 likewise held that stating the purpose in the process claim could not establish novelty.