EPO Board of Appeal confirms that advantages of a process of manufacturing a product do not carry over to the product itself

The claimed subject-matter is a display comprising an uneven structured layer, provided with two regions (R1 and R2), arranged “so that a reduction of a colour shift with respect to the intended colour of the display is established”. In the inventive step discussion, the Board acknowledged that the claimed device differed from the prior art in the configuration of the distances d (from R1) and D (from R2) in the layer, which were chosen to provide specific optical properties to the device (Reason 3.9). 

However, it was questioned whether the last feature of the claimed device, which related to the “reduction of a colour shift” with respect to the intended colour of the display, could support a technical effect.

As such, the legal issue at hand was whether said technical effect could be inferred from the claimed product because it would not be apparent what the “intended colour” was. The feature also expresses that certain, manufacturing-dependent variations in the product only lead to small colour variations. Thus, the effect was to make the manufacturing process easier by allowing some variations, as these would be compensated for in the product.

Case law in the field of chemistry indicates that: “an intermediate intended for the preparation of a known end product is deemed to be inventive if its preparation takes place in connection with inventive preparation or inventive further processing” (T 648/88) and “a chemical compound can involve an inventive step irrespective of whether it itself has an unexpected technical effect, or whether its effect is linked to the improvement in a complete processing” (T 1089/15). This case law was used to argue that the claimed display is inventive based on its preparation or processing.

The Board decided however, that the feature in question related solely to the manufacturing process and could not limit the claimed display (Reason 3.10). The Board further held that “a technical effect achieved by the manufacturing process cannot be relied upon when assessing inventive step of the display of claim 1. Even if the process produces an ensemble of displays whose standard deviation from the mean (target) colour is reduced, for an individual display neither the target colour nor the deviation or reduction thereof is recognizable” (Reason 3.12). The Board then concluded that in the assessment of inventive step of a device, i.e. a physical artefact, advantages of the manufacturing process do not carry over to the claimed device itself (Catchword).