Friday, January 18, 2019 T 1085/13 - Purity of a compound is not the inevitable result of a prior art preparation method

If the prior art already discloses a (low-molecular) chemical compound having a certain degree of purity and a method for its manufacture, does this imply an implicit disclosure of the same compound having a higher purity - thus prohibiting later claims to the compound defined by a certain higher degree of purity?

Previously, the Examining Division had refused the sole request of the Applicant, pertaining to a chemical compound defined in claim 1 as "Amorphous Lercanidipine Hydrochloride having a purity of at least 99.5% determined by HPLC analysis and containing less than 0.5% of crystalline Lercanidipine Hydrochloride". Relying inter alia on T 990/96, the Examining Division argued that the disclosure of amorphous Lercanidipine Hydrochloride ("LH") and its manufacture in prior art document D1 already had made available this compound to the public in the sense of Article 54 EPC in all desired grades of purity, and the claimed degree of purity could therefore not render the claims novel.

Departing from T 990/96 and subsequent cases including T 0728/98, the present Board of Appeal held that, in line with in particular decisions G 2/88 and G 2/10, in order to conclude a lack of novelty, there must be at least an implicit disclosure in the state of the art of subject matter falling within the claimed scope. Such an implicit disclosure would mean no more than the clear and unambiguous consequence of what is explicitly mentioned in the prior art. Thus, the skilled person, using his common general knowledge, would understand a feature as implicitly disclosed in a prior-art disclosure only if it is the clear and unambiguous consequence, and hence the inevitable result of what is explicitly derivable from said prior art disclosure.

In the present case, it was demonstrated (in a report filed during examination) that a purity falling within the claimed range is not the inevitable result, and thus not an implicit feature, of the preparation method taught in D1. The question whether (further) purification methods required to reach the claimed purity were within the common general knowledge of those skilled in the art was not considered relevant to novelty, but rather a matter to be considered in the assessment of inventive step.

The Board found that having regard to both the common general knowledge and the state of the art, no purification techniques were available prompting the skilled person to solve the technical problem of providing amorphous LH having a higher purity.

Accordingly, amorphous LH having the claimed degree of purity was found to be novel and inventive.

Friday, September 21, 2018 T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")

Tuesday, July 19, 2016 T 2171/14 - Special reasons for not remitting, despite fundamental deficiencies in first instance

In this decision, the Board concluded that the "impugned decision from the Opposition Division presented a fundamental deficiency in that there is no reasoned decision in regard to the specific objections under Article 100(c) EPC made against Auxiliary Request V, which objections had been made originally against the main request and, as specifically stated in the minutes of the oral proceedings (see point VII above), had been maintained against the subject-matter of claim 1 of Auxiliary Request V found allowable by the opposition division. The impugned decision also does not contain any reasoned decision with respect to the further opposition ground under Article 100(b) EPC, nor with respect to the subject-matter of independent claim 12. The missing reasoning on the mentioned opposition grounds together with the remarks made by the opposition division in the "preliminary comments" section of the reasons for its decision, give rise to serious concerns as to the way in which the opposition division approached in particular the objections made under Article 100(c) EPC, as briefly explained below". The Board then carefully considered whether to remit the case -the "normal" procedure in case if fundamental deficiencies in first instance proceedings- or not. And concluded not to (r.5-5.5), but to  examine the opposition themselves. In examining Art. 100(c) EPC / Art.123(2), the Board took explicit care to not limit the the exact text of the application as filed, but to consider what the skilled person would directly and unambiguously derived from the application as filed (e.g., r.6.4.2, r.6.4.3(g)).