Anticipation of “for” and “use” claims

3.56 A claim for a new method of using a known apparatus may be regarded as novel. This was established by Parker J in Flour Oxidizing Co Ltd v Carr and Co Ltd 25 RPC 428:

“But when the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it”.

However, the form of claim must be such as to limit the monopoly to the new use.

3.57 A claim to an apparatus for a particular purpose (e.g. for carrying out the process of another claim) is normally construed as a claim to an apparatus suitable for that purpose. That is, the intended use does not restrict the claim to the apparatus when used in that way (L’Air Liquide Societe’s Application 49 RPC 428). Accordingly any apparatus which has all of the features specified in the claim will anticipate that claim even if it is used for a different purpose. For example, a claim to a material or composition for a particular purpose is regarded as a claim to the material or composition per se (Adhesive Dry Mounting Co Ltd v Trapp and Co 27 RPC 341). This is contrary to G 2/88 Friction reducing additive, which determined that with respect to a claim to a known compound for a new non-medical use reflecting a newly discovered technical effect of said known compound, the attaining of such technical effect should be considered as a functional technical feature of the claim. However, the approach in G 2/88 should not be followed.

3.58 Note that definitions such as “fish-hook” and “hook for fishing” are essentially equivalent. Accordingly a citation disclosing a hook that is suitable for this purpose would anticipate a claim using either form.

3.59 An exception to this approach is a claim to a known substance or composition for use in a surgical, therapeutic or diagnostic method. In this case the defined use does place a limitation on the scope of the claim. Thus a claim to “compound X for use in therapy” would only be anticipated by a disclosure of the use of compound X in therapy and not by the disclosure of compound X in any non-therapeutic use. Anticipation of medical use claims is further discussed in Section D in Chapter 8.

3.60 In some cases a term in a claim may appear to only require a product to be suitable for a specified use, but is in fact limited to a particular environment or interaction with another element. For example, a claim to:

“An isolating and matching device to enable a heating element of a motor vehicle electrically heatable window, not designed specifically to be an aerial and essentially aperiodic and non-resonant at RF frequencies, to be used as a receiving aerial …”

was held to define the matching device in association with the window heating element. In this case the Court considered that in order to define the invention it was necessary to take into account the interaction with the heating element in the window since each would have different impedance (BSH Industries Ltd’s Patents [1995] RPC 183).

3.61 Furthermore, if the prior art disclosure of the claimed matter is in a form which would render it entirely unsuitable for the defined use it will not anticipate the claim. Similarly if the prior art disclosure would require modification in order for it to be suitable for the defined use, it will not anticipate the claim.

3.62 A claim to a product when used in a particular method is interpreted as a claim to a method per se. For example, a claim to “compound X when used as a herbicide” is a claim to a method of using compound X as a herbicide. Similarly, a claim to “the use of compound X as a herbicide” is interpreted as a method of using compound X as a herbicide. These claims would be anticipated only by a document disclosing such a method.

3.63 A product-by-process claim will generally be interpreted as a claim to the product per se, irrespective of whether the term “obtained”, “obtainable”, “directly obtained” or an equivalent wording is used. For example,

1. A method of preparing Article X comprising the steps of …

2. Article X produced by the method of Claim 1

Since Claim 1 is a method claim and Claim 2 is a product claim, the process steps of Claim 1 would not limit product Claim 2. As a result, if the Examiner finds a prior art which discloses Article X produced by a different process, Claim 2 would still lack novelty even though Claim 1 might be novel.

3.64 An exception to the interpretation of a product-by-process claim will be where the process steps result in the product possessing unique properties. In such instances, the product-by-process claim would only be anticiptated by a disclosure of a product with the same unique properties or by a disclosure of a product produced by the same process as defined in the claim. However, where there are no unique properties, the claim will be anticipated by any disclosure of the product per se. This should be factored into the search strategy for the claim.

3.65 A claim to a method or process for producing a particular product, depending on wording of the claim, should generally be understood in the sense that the method or process has to be merely suitable for producing said product, rather than the method limited to producing said product. Consequently, a prior disclosure of the same method or process, comprising the same steps and performed under the same conditions, but without an indication of its intended use for producing the same product would nevertheless anticipate the claim (T 304/08 Method for reducing malodor/BASF).