Wednesday, September 26, 2018 T 2355/12 - the boundaries of claim interpretation

A prior art user equipment

In a novelty objection the terms of the claims might be given a broader reading then the applicant would like. This decision shows that there are limits on how broad a term may be constructed.

The invention concerns a "A method for measuring audience size information based on playbacks of a recorded program" in which programs are recorded on "user equipment of a plurality of audience members".  In his refusal, the Examiner found that the central playback facilities in a video distribution system anticipates the term; after all such equipment is in common use by the plurality of audience members. 

The board agreed with the applicant that this interpretation conformed neither to the normal meaning of the term nor to the description of the present application. Unfortunately, for the applicant his victory was short lived as the objection was turned into an inventive step objection upon remittal. The current status of the file is a deemed withdrawal, more than 18 years after the priority date.

Tuesday, April 24, 2018 T 0261/15 - Examples rather than end points

In this opposition appeal, the Board found that claim 1 of the Main Request, relating to a high strength pearlitic steel rail defined by several ranges of alloying elements, although overlapping with the composition of a pearlitic rail disclosed in D1, is novel. More specifically, the Board found that - whilst it is true that the Guidelines for Examination in the European Patent Office, G.VI.8, recite that the claimed sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range as a condition for acknowledging novelty of a numerical selection - the limit values (end points) of a known range, although explicitly disclosed, are not to be treated in the same way as the examples. The person skilled in the art would therefore not necessarily contemplate working in the region of the end-points of the prior art range, which are normally not representative of the gist of the prior art teaching.

Friday, April 20, 2018 T 1931/14 - Suitable for?

This case concerns an appeal by a patent proprietor against a decision of the opposition division revoking his patent on the ground of lack of novelty of claim 1.

Claim 1 reads: "A process for producing oxygen to fuel an integrated gasifier combined cycle (IGCC) power generation system  at a rate which corresponds to the power demand of the IGCC power production...wherein...
(a) during reduction of the power demand from the IGCC...liquid oxygen is produced in excess of that required by the IGCC...wherein...
(b) during an increase in the power demand from the IGCC system excess liquid oxygen is withdrawn..."

In line with T 848/93 (GL (2017), F-IV, 4.13), the BoA came to the conclusion that the stated purpose of the process "to fuel an IGCC" is not to be interpreted as a mere suitability of the process for that stated purpose but rather as functional feature of the process. In other words, the BoA sees the feature "to fuel an IGCC" as a limiting feature of the process claim.

Furthermore, the BoA stated that two claimed steps (a) and (b) are so inextricably linked to such stated purpose that the claim must be read as to be limited for it. 

Therefore the fact that the document used in opposition for attacking claim 1 on the ground of novelty did not mention the same application of the claim "to fuel IGCC systems", would appear to be sufficient for the BoA to establish novelty of claim 1 over said document.   

Tuesday, May 30, 2017 T 260/14 - Partial priority for a working example of a generic claim feature

The opposition division did not allow the main request as it considered  the priority application to be prior art pursuant Art. 54(3) EPC and the generically worded claim 1 of the main request to be anticipated by an examplary dental impression material disclosed in the priority application ('poisonous priority'). The proprietor appealed and argued that partial priority should have been recognized, following the principles of G 1/15. In the opponent's view, the claim was not entitled to partial priority and the working example of the priority document (also present in the granted patent) destroyed the novelty of the claim. In the decision , the Board carefully explains how G 1/15 is to be applied, and confirmed partial priority for the part of claim 1 concerning the working example. Consequently, the claim was novel.

Thursday, February 02, 2017 G 1/15 (2) - The decision on partial priority

The Order was already issued by the Enlarged Board in November last year, but the full decision and its reasoning became available only just now. The Enlarged Board considered the EPC priority provisions of Art. 87(1), 88(2)-(3) and 89, Paris Convention Priority and the FICPI Memorandum in detail to come to its decision. The right to claim priority and its effect/ purpose (reason 4) led the Enlarged Board to conclude that a generic claim encompassing alternative subject matter may not be refused partial priority, provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect. 

Friday, August 26, 2016 T 2052/14 Disclosure of relative dimensions in drawings

The Examining Division held that the subject matter of claim 1 was not new with respect to D1 (EP 1748243 A2). The division derived from the figure a ratio of 0.9 and thus anticipating a claimed ratio from about 0.1 to about 1.0. The Board disagrees. D1 does not indicate that the drawings are to scale. Moreover, D1 is not related to the claimed aspect and there would thus also not have been any reason for D1 to be to scale. This raises the issue whether the skilled person would derive the claimed ratio from a schematic drawing. The Board thinks not.

The Examining Division also regarded to formulation from about 0.1 to about 1.0 unclear (Art.84). The Board disagrees; this formulation only allows a wider interpretation. The Board regards the wider range to be new.

Friday, July 08, 2016 T 277/12 - Technical feature or particular use?

In this opposition appeal, the novelty of claim 1 is discussed, which reads as follows:

"A life support system for an aircraft, including a first oxygen supply apparatus operable to provide a limited supply of first product gas being one of pure oxygen and oxygen-enriched gas, to a breathing gas supply apparatus, and a second oxygen supply apparatus operable to provide a durable supply of second product gas which is an oxygen-enriched gas containing a lower concentration of oxygen than that in the first product gas to the breathing gas supply apparatus, wherein the second product gas is supplied at a pressure which is higher than that at which the first product gas is supplied to the breathing gas supply apparatus".

Of particular interest is the highlighted part: the Board deliberates whether this implies an actual technical limitation of the system, or merely pertains to a particular use of the system.

The Board considers the answer to lie in the specification: "the skilled person will need to interpret the claim by seeking to understand how the claimed pressure relationship is achieved in the rest of the specification".

Friday, December 11, 2015 T 2369/10 - Second medical use of products

Medical Instruments

The applicant found a new medical use for an existing product; namely treatment of substance addiction using a neurostimulator.
 
Normally a product is not made novel merely by identifying a new use for the product. Although, a use claim or a method claim may be possible, a purpose limitation for a product must imply technical differences in the product itself for it to be novel. 

However, if the new use is a medical one, the option of method and use claims are blocked by article 53(c) EPC, which forbids patenting of medical methods (see the articles for details). Fortunately for medical researchers, an exception is made to the general rule;  a new medical use for "any substance or composition" will provide novelty (articles 54(4), 54(5) EPC, G 5/83).

But what if someone invents a new medical use for a product which is not a substance or composition? The possibility of a method or use claim is blocked by article 53(c) EPC.  The lack of novel technical differences blocks the product claim. Although, article 54 does not explicitly allow the application to products which are not substance or composition, it is not forbidden either. 

The board declined the invitation though, and ruled that no novelty is obtained by a medical purpose limitation if the object is not a substance or composition. A request to  refer questions to the Enlarged board was denied. 

No Catchword or headnote is provided but reasons 8.1 give the following summary.

In the present case, the Board holds that, having regard to the wording of Article 54(4),(5) EPC, the ordinary meaning of this Article shall not be extended so as to include something which is not explicitly provided for.

Consequently the Board considers that there is no basis to contemplate that novelty may be conferred on products, other than substances and compositions, by virtue of the provisions of Article 54(4),(5) EPC.

Tuesday, May 26, 2015 T 557/13 - Poisonous or nothing wrong?

At the closure of the debate in oral proceedings in T 557/13, the Chairman announced that the Board will refer one or more questions to the Enlarged Board of Appeal in relation to what is often referred to as partial priority, poisonous divisionals and poisonous priorities. The questions are not yet formulated - the decision will be given in writing.  The topic is however of such an interest that we want to post it already now on our blog -- we will come back to the topics once the referral is done. 

Background / Summary of Facts and Submissions

Friday, January 23, 2015 1754/11: A fabric finished with a "mixture"

This appeal lies from a decision of the Opposition Division. There was an earlier appeal T0681/01 in this case. In decision T0681/01 the then pending third auxiliary request was remitted to the Opposition Division to decide on the issue of novelty over alleged prior use and the issue of inventive step. The Opposition Division decided to maintain the patent in accordance with the claims of the then pending main request, which are equal to the above mentioned third auxiliary request. Opponents 1 and 2 filed the appeal.
As the result of the submissions of the Appellants and the Respondent (patent owner) the
Board had to interpret the main claim, in particular the term "mixture". Also, the Board decided on inventive step and "for the sake of completeness" the Board discussed two inventive step approaches which each start from a different closest prior art.
The decision comprises also many other interesting points, like the admissibility of alleged public prior use and the apportionment of costs.  For those subjects, the interested reader is referred to the full text of the decision.

Summary of Facts and Submissions
 
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IV. Claim 1 according to said third auxiliary request reads as follows:"1. A pleated blind or roller shade comprising a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side, and said second side of said fabric having substantially the same colour as said first side.".

Dependent claims 2 to 7 according to said request relate to specific embodiments of the pleated blind or roller shade of claim 1.

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The Opposition Division decided, inter alia,
- to admit documents D7 and D11 despite their belated filing,
- not to admit documents E20 to E25 in view of their very late filing, their lack of prima facie relevance and their lack of completeness, in the sense that they did not prove up to the hilt the alleged public prior use of a fabric according to sample E5;
- that the fabric "Dapple SPC Ecru" belonged to the prior art under Article 54(2) EPC;
- that, however, the public prior use of the fabric "Dapple SPC Ecru" was not novelty destroying for the subject-matter of claim 1 at issue since said fabric did not comprise a second finish on the second side containing a mixture of pigment particles as required by claim 1;
- moreover, the claimed subject-matter was inventive with regard to the public prior uses of the fabric "Dapple SPC Ecru" and of fabrics for shower curtains corresponding to those of samples E3 and E4;
- hence the claimed subject-matter was novel and involved an inventive step over the cited prior art.
The Opposition Division also considered that the second oral proceedings of 1 April 2011 had to be held because of the late filing by Opponent 01 of documents E20 to E25, but that "no voluntary abuse of the proceedings was intended" by Opponent 01. Hence, for reasons of equity, the Opposition Division decided an apportionment to Opponent 01 of 70% of the costs endured by the Patent Proprietor in connection with the second oral proceedings of 1 April 2011.

VI. Appellants 01 and 02 (Opponents 01 and 02) submitted in their statements of grounds of appeal that the claimed subject-matter lacked novelty or at least inventive step in view of the alleged prior uses.
In particular they invoked :
- lack of novelty over the alleged public prior use of a fabric according to sample E5;
- lack of novelty or inventive step over the alleged public prior use of a fabric "Dapple SPC Ecru" and of other Louver-Lite SPC fabrics mentioned in exhibit SWB1; and
- lack of inventive step starting from the public prior uses of a fabric according to samples E3 or E4.
Appellant 02 also submitted as further evidence inter alia
D14: Declaration by Mr. Barratt dated 14 October 2011 including exhibits BLB3 to BLB5;
D15: Extracts from the Oxford Dictionary of Chemistry, fourth edition 2000, page 364, relating to the definition of "mixture"; and
D16: Printout (11/10/2011) of four web pages (1/4 to 4/4) from the Online Free Dictionary, relating to the definition of "mixture".
Appellant 01 also contested the decision on apportionment of costs.

VII. The Respondent (Patent Proprietor) re-submitted with its reply of 2 March 2012 the sets of claims (labelled "main request claims - filed 23 January 2009") held allowable by the Opposition Division, and also filed further sets of amended claims as auxiliary claim requests 1 to 11. It contested also the admissibility of documents that had been filed belatedly during the opposition and appeal proceedings by the Appellants and maintained that the claimed subject-matter was novel and inventive over the cited prior art. Moreover, it also contested the decision on apportionment of costs.

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Reasons for the Decision
 
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Respondent's main request - Construction of claim 1

1. Interpretation of the term "mixture" in claim 1

1.1 Claim 1 concerns a "pleated blind or roller shade comprising a fabric material having a first finish comprising a first pigment on a first side and a second finish on the second pearlescent side". As regards said second finish the wording of the claim requires that it comprises "a mixture including said first pigment and a second, light reflective pearlescent pigment".
As regards the meaning to be given to the term "mixture" within the context of claim 1 there was no agreement among the parties. Therefore, the Board must decide which is the proper meaning of this term in the context of claim 1, in order to establish the breadth of the claim to be considered in the assessment of novelty and inventive step.

1.2 It is established jurisprudence of the Boards of Appeal of the EPO that claims should be read giving the words the meaning and scope which they normally have in the relevant art unless the description gives the words a special meaning by explicit definition (see e.g. decision T 620/08, point 3.8 of the reasons).

1.3 It is undisputed that in the present case there is no explicit indication in the description of the patent in suit of any such special meaning to be attributed to the term "mixture" within the context of claim 1. Therefore, the term "mixture" has in the present case the meaning and scope that it normally has in the relevant art.

1.4 The Board agrees in this respect that dictionaries containing definitions for the term "mixture", as illustrated in documents D15 and D16, are a suitable basis for the correct interpretation of this term within the context of claim 1 insofar as the definitions are applicable to the specific technical field, which is the chemical technical field of pigment comprising compositions.

1.4.1 The Board remarks also that the admissibility of D15 and D16 was not contested by the Respondent (see point IX supra) despite their late filing. The Board has also no reason for disputing their admissibility.

1.4.2 Moreover, even though the filed pages of D15 and D16 relate to versions of dictionaries published after the priority date claimed by the patent in suit, it was not disputed that the definitions contained therein were already applicable at said priority date.

1.4.3 D15 is an excerpt from a chemical dictionary and defines a "mixture" as "a system of two or more distinct chemical substances" and specifies that there exist "homogenous mixtures...in which the atoms or molecules are interspersed" and "heterogenous mixtures which have distinguishable phases".

1.4.4 D16 is a collection of excerpts from various dictionaries. The definitions of the term "mixture", which are at first sight applicable also to the chemical technical field of pigments are the following:
- "1.a. The act or process of mixing: An alloy made from the mixture of two metals;
and
"5. Chemistry A composition of two or more substances that are not chemically combined with each other and are capable of being separated"
(excerpt from "The American Heritage Dictionary of the English Language", page 1 of D16);
- "1. the act of mixing or state of being mixed;
and
"3. (Chemistry) Chem A substance consisting of two or more substances mixed together without any chemical bonding between them"
(excerpt from "Collins English Dictionary - Complete and Unabridged", page 1 of D16);
- "A composition of two or more substances that are not chemically combined with each other and are capable of being separated"
(excerpt from "The American Heritage Science Dictionary" page 1 of D16);
- "(chemistry) a substance consisting of two or more substances mixed together (not in fixed proportions and not with chemical bonding)"
(excerpt from "Based on WordNet 3.0, Farlex clipart collection", page 2 of D16).
From the definitions listed above it can thus consistently be derived that the term "mixture" indicates normally in the chemical technical field a homogenous or heterogenous system formed by mixing together two chemical entities which do not bind chemically with each other.

1.5 Appellant 02 invoked inter alia the following special definition:
"lamellar mixture - a mixture in which substances occur in distinct layers"
(excerpt from "Based on WordNet 3.0, Farlex clipart collection", page 2 of D16).

1.5.1 However, it is clear for the Board that this definition concerns a very specific system occurring only under particular circumstances, which system would always be referred to in the relevant art as "lamellar mixture" and not simply as "mixture". Hence, this definition cannot be considered to represent the normal meaning that a skilled person would apply to the term "mixture" in the relevant art, let alone in the context of claim 1.

1.5.2 The Board remarks in particular that the wording of claim 1 requires said first pigment particles and said second pearlescent pigment particles to be present in a "mixture" comprised in one and the same finish.
Therefore, the Board concludes that the wording of claim 1 does clearly not encompass, on a proper interpretation, a mixture wherein said two types of pigments particles are not contained in the same layer but in different layers.

1.5.3 Consequently, a fabric comprising on one side a coloured first pigment and a pearlescent pigment in different layers, wherein both pigments are, in combination, responsible for the visual colour effect perceived by the observer on said side of the fabric, does not, for the Board, meet the criterion of claim 1 at issue, which requires instead two individual types of pigment particles mixed together in one and the same finish composition.

1.6 As regards the Appellants' submission that the "mixture" according to claim 1 at issue would also encompass embodiments wherein the pearlescent pigment comprises a coating consisting of a first pigment of smaller particle size, the Board remarks that such an interpretation is also not in agreement with the normal meaning to be given to the term "mixture" as set out above.

1.6.1 In such a case the pearlescent pigment is coated onto the particles of the first pigment but not "mixed" with the first pigment.

1.6.2 Moreover, the fact that at a microscopic level some admixing of the first pigment with the pearlescent pigment could anyway occur is irrelevant since the coating is an integral part of the pearlescent pigment and a pearlescent pigment comprising a coating is, on a proper interpretation, also clearly distinct from a mixture of a first pigment and a second pearlescent pigment.

1.6.3 This is confirmed by the use of the term "pearlescent pigment" in the prior art as, for example, shown in the brochure BLB3, submitted by Appellant 02 with the declaration D14, concerning the commercially available pearlescent pigments of the Iriodin® series, consisting of mica coated with titanium dioxide. This document reads, in fact, on page 2: "The mica serves as a carrier for the transparent titanium dioxide layer, which is solely responsible for the pearl lustre".

1.7 Therefore, the Board accepts the argument of the Respondent that a "mixture" of a first pigment with a pearlescent pigment in the sense of claim 1 must be understood to concern a composition comprising two types of distinct, individual pigments particles of different particle size mixed together (as opposed to one particle type coating the particles of the other type) within said finish composition without formation of any chemical bond between them.

Respondent's main request - Novelty and inventive step

2. Objections and evidence

2.1 Allegation of prior use relying on sample E5

(...)

2.1.2 The Board also sees no reason for calling into question the finding decision of the Opposition Division that said allegation of public prior does not meet the strict standard of proof applicable. Hence, this alleged prior use is not further considered as prior art in the following reasons.

2.2 Public prior uses of fabrics according to samples E3 and E4

(...)
2.2.2 These fabrics may thus be taken into consideration as prior art in the assessment of inventive step.

2.3 Alleged public prior uses of SPC fabrics

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2.3.4 Therefore, in the following, the prior uses based on SPC fabrics are all dealt with by referring to the fabric "Dapple SPC Ecru" only.

3. Novelty

3.1 As confirmed by Appellant 02 at the oral proceedings, the fabric "Dapple SPC Ecru", which can be used in a roller blind or shade as disclosed in SWB1 (see e.g. page 3, section Solar Protective Coating (SPC); section "Shades of Perfection"; sub-section "Roller Blinds" and Figure; Table on page 4), comprises a dyed fabric material containing a first pigment permeating the fabric, an intermediate heat-sealable layer coated on one side of the dyed fabric and a white layer of titanium dioxide coated mica (a pearlescent pigment) as outer layer on the heat-sealable layer.

3.2 Based on its interpretation of the term "mixture" as used in claim 1 (point 1.7 supra), the Board concludes that this SPC fabric does not contain on a second side a finish comprising a "mixture" of a pearlescent pigment and a first pigment of smaller particle size.

3.3 Hence, the subject-matter of claim 1 and, consequently, of claim 2 to 7 dependent thereon, is novel over a roller blind comprising the fabric "Dapple SPC Ecru" or any other SPC fabric made available to the public by prior use.

3.4 Since no other prior art was cited against the novelty of claim 1 according to the main request (see point XI supra), the Board concludes that the subject-matter of claim 1 and, consequently, that of claims 2 to 7 dependent thereon is novel (Articles 52(1) and 54(1)(2) EPC).

4. Inventive step

4.1 The invention

4.1.1 The invention concerns a pleated blind or roller shade.

4.1.2 As explained in the patent in suit (paragraph [0002]), pleated blinds and roller shades of the prior art usually incorporated fabric material coloured on the first side to enhance the decorative function of such window covering product, while being metallized on the opposite second side for reflecting sunlight or heat.

4.1.3 Therefore, according to the patent in suit (see paragraphs [0009], [0011] and [0016]), the invention aimed at providing alternative pleated blinds or roller shades which have substantially equal heat and light reflective properties as conventional metallized fabrics, have an improved resistance against damage and wear during use, may be prepared in a more economical way in a single operation and wherein both sides may have substantially the same colour.

4.2 Closest prior art

4.2.1 The Respondent considered the known metallized pleated blinds described in paragraph [0002] of the patent in suit as the most appropriate starting point for the evaluation of inventive step, i.e. pleated blinds which incorporate fabric material that is coloured on the first side to enhance the decorative function of such window covering product, while being metallized on the opposite second side to reflecting sunlight or heat.

4.2.2 For the Board, the starting points indicated by Appellant 01, i.e. the prior used fabrics according to samples E3 or E4 are a less appropriate starting point than the prior art cited by the Respondent, since they were made for use in shower curtains, i.e. they belong to a different technical field than that of the patent in suit and were not intended to have substantially equal heat and light reflective properties as conventional metallized fabrics.

4.2.3 As regards a roller blind according to SWB1 comprising the allegedly prior used fabric "Dapple SPC Ecru", the advertisement SWB1 clearly describes on its last page under the heading "Solar, Optical and Colour Fastness Properties" the outstanding heat and light reflective properties of the SPC fabrics described.
Therefore, the Board accepts that the public prior use of such a fabric, if proven, could well be considered to represent a suitable starting point for the evaluation of inventive step.

4.2.4 In the following assessment of inventive step the Board thus follows, for the sake of completeness, each of the two possible approaches, which, however, both lead to the same conclusion that the claimed subject-matter is not obvious. Approach A starts from a roller blind containing the fabric "Dapple SPC Ecru" (assuming for the sake of argument that it belongs to the state of the art to be considered) and approach B starts from a pleated blind comprising a metallized fabric as mentioned in the patent in suit.

Approach A

4.3 Technical problem underlying the invention

4.3.1 According to Appellant 02, the technical problem underlying the claimed invention, in the light of a roller blind comprising the fabric "Dapple SPC Ecru", consisted only in the provision of an alternative roller shade having a fabric of substantially the same colour on both sides.

4.4 The solution
As the solution to the technical problem indicated above, the patent in suit proposes the roller shade according to claim 1 at issue, which is characterised in that it comprises " a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side, and said second side of said fabric having substantially the same colour as said first side".

4.5 Success of the solution
The parties did not contest that the technical problem indicated above was successfully solved by means of the claimed solution. The Board has also no reason to doubt the success of this solution.

4.6 Non-obviousness of the solution

4.6.1 It remains thus to be decided whether it was obvious for the skilled person, starting from a roller blind comprising the fabric "Dapple SPC Ecru", to modify such a fabric in such a manner as to arrive at a roller shade falling within the terms of claim 1 at issue.

4.6.2 As already noted above (point 3.1 supra) the fabric "Dapple SPC Ecru" has an intermediate heat-seal layer between the dyed fabric and the outer SPC pearlescent layer. Moreover, SWB1 explicitly discloses that (emphasis added) "As the SPC backing (the pearlescent outer layer) is white, blinds will always give a uniform appearance to the outside of a building irrespective of the colours chosen for individual work area".

4.6.3 Therefore, SWB1 does not induce the skilled person to modify the colour of the pearlescent outer layer. Consequently, it does also not suggest to modify the structure of the SPC fabrics, for example, by removing the intermediate heat-sealing layer in the attempt to allow the coloured first pigment present on the other side and in the fabric to migrate till the SPC layer, or by using a different pearlescent pigment which contains an appropriate coloured coating matching the colour of the other fabric side.

4.6.4 Furthermore, even if the skilled person were to consider replacing the white pearlescent pigment of "Dapple SPC Ecru" with a differently coloured one, the resulting fabric would still be different from the fabric of the roller shades according to claim 1 at issue, since it would not contain a finish comprising a mixture of a first pigment with a pearlescent pigment.

4.6.5 As was submitted by Appellant 02 the skilled person, faced with the technical problem mentioned above, could, in theory, try to modify the fabric "Dapple SPC Ecru" by maintaining the white pearlescent backing whilst replacing the coloured pigment used for dying the fabric with, for example, a white pigment like titanium dioxide (which is the coating material of the pearlescent pigment). According to Appellant 02, this approach was suggested by the listing of a product "Dapple SPC White" on the last page of SWB1.
However, the Board observes that further details of said fabric are not given in SWB1 and were not provided by Appellant 02. Moreover, even if the skilled person were to consider putting said theoretically possible concept into practice, the resulting fabric would still be different from the one defined in claim 1 at issue, since the latter must contain a mixture of two different pigments in the pearlescent finishing layer.

4.6.6 Therefore, the Board concludes that the skilled person, starting from a roller blind comprising "Dapple SPC Ecru" (or any of other SPC fabrics invoked), would not, without considerations based on hindsight, arrive in an obvious way at a roller shade falling within the terms of claim 1 at issue.

Approach B

4.7 Technical problem

4.7.1 In the light of the pleated blinds containing a metallized fabric (see paragraph [0002] of the patent in suit) taken as closest prior art, the technical problem was stated to consist in the provision of pleated blinds having improved properties and which can be produced in a more economical way (see point 4.1.3 supra).

4.7.2 In the following assessment, the Board considers, purely for the sake of argument and in favour of Appellant 01, that this technical problem was not convincingly solved.

4.7.3 Therefore, the technical problem formulated, accordingly, in less ambitious terms, can be seen in the provision of alternative pleated blinds having heat and reflective properties and comprising a fabric of substantially the same colour on both sides.

4.8 The solution

4.8.1 As the solution to this technical problem, the patent in suit proposes a pleated blind according to claim 1 at issue (see 4.4 supra as regards all the characterising features) wherein one side of the fabric is provided with a finish comprising a mixture of the first pigment, which is also present in the finish on the other fabric side, with a pearlescent pigment.

4.8.2 The parties did not contest that the stated technical problem is successfully solved by the claimed solution. The Board has also no reason to doubt this.

4.9 Non-obviousness of the solution

4.9.1 It remains thus to be decided whether it was obvious for the skilled person, starting from a pleated blind comprising a metallized fabric, to modify the metallized fabric side in a manner leading to a pleated blind falling within the terms of claim 1 at issue.

4.9.2 In the Board's judgement the skilled person faced with the less ambitious technical problem posed (point 4.7.3 supra), would not even take into consideration a fabric according to sample E3 or E4, intended to be used for a very different technical application which does not require the fabric to have solar and heat reflective properties.

4.9.3 Consequently, the argument invoked by Appellant 01 that such fabrics were prepared on the same machine by the same companies as fabrics for pleated blinds and roller shades, as allegedly derivable from document E14, is of no relevance. In fact, even if this would be the case, it would not amount to a suggestion to the skilled person to try the application of said fabrics, prepared for complying with the technical requirements of a shower curtain, in products belonging to a different technical field, requiring different technical properties.

4.10 Hence, in the Board's judgement, irrespective of the starting point considered (approach A or B), the subject-matter of claim 1 at issue and, consequently, of claims 2 to 7 dependent thereon, involves an inventive step (Articles 52(1) and 56 EPC).

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Order

For these reasons it is decided that:
The appeals are dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T175411.20141112. The whole decision can be found here. The file wrapper can be found here. Photo obtained from FreeDigitalPhotos.net.

Monday, December 15, 2014 T 571/10 - Partial PRI / OR / ITY

This interesting decision deals with the question of partial priorities. 
In fact, the question was whether the subject-matter of a claim in a divisional application that had the same priority date as the alleged prior art document D9, while also claiming the same priority from the same priority application, was novel over the content of D9 under Art 54(3) EPC. The claim contained a generalized term, parts of which were present in the priority application, and parts of which that were not. 
The board concluded that there were two clearly defined alternative subject-matters, one (a) that was disclosed in the priority document, and the second (b) that was not directly and unambiguously derivable from the priority document and that therefore did not enjoy priority. Since (a) enjoyed priority, D9 did not belong to the state of the art under Art 54(3) EPC and for this subject-matter, D9 was not relevant at all in the analysis of novelty. Alternative (b) did not enjoy priority, hence D9 was considered state of the art under Art 54(3) EPC; however, only for the subject-matter for which the priority of D9 was valid, which was alternative (a). Since (a) and (b) did not overlap, D9 was not considered novelty-destroying for alternative (b) either. 
The board followed the earlier decision T1222/11 and departed from other board of appeal decisions that followed the strict and literal interpretation of the condition "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" mentioned in G 2/98.

Catchwords:

In a case in which a single priority is claimed for a given application and a number of features of a claim of said application are generalisations of specific features disclosed in the priority document, a partial priority is to be acknowledged, as long as it is possible to conceptually identify, by a comparison of the claimed subject-matter with the disclosure of the priority document, a limited number of clearly defined alternative subject-matters, including among the alternatives the specific embodiments which are directly and unambiguously derivable from the priority document. In order for this condition to be met, it is not necessary that the clearly defined alternative subject-matters are spelt out as such in the application, nor that the word "or" actually occurs (see point 4.5.12). This condition extends to the case of multiple priorities. In that case, a comparison with the disclosure of each of the priority documents is necessary and for each of the clearly defined alternative subject-matters the earliest priority from which the alternative subject-matter is directly and unambiguously derivable is acknowledged (see point 4.5.13).

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division announced at oral proceedings on 25 September 2009 to refuse European patent application n° 08 165 575.5. The application was filed as a divisional application of European patent application n° 00 951 701.2, which was filed on 4 August 2000, claiming priority from GB 0001621.1 filed on 26 January 2000.

II. The decision was based on claims 1 to 15 of the main request and claims 1 to 14 of the first auxiliary request, both filed during oral proceedings held on 25 September 2009.

Claim 1 of the main request read as follows:

"A pharmaceutical composition comprising (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl]-(3R, 5S)-3,5-dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof as the active ingredient, the composition having a ferric oxide light protective coating; provided that the composition does not comprise the calcium salt of the active ingredient and a tribasic phosphate salt in which the cation is multivalent."

[...]

III. In the decision under appeal, the following documents were cited inter alia:

[...]

D9: WO-A-01/54668 (published on 2 August 2001, filed on 4 August 2000 and claiming priority from GB 0001621.1 filed on 26 January 2000)

IV. The decision of the examining division can be summarised as follows:

a) Claim 1 of the main request did not meet the requirements of Articles 76(1) EPC, since in the earlier application as filed the provision of a composition having a ferric oxide light protective coating could not be read in isolation from the feature defining the presence of an inorganic salt in which the cation is multivalent, which feature was absent from claim 1 of the main request. The latter feature being essential to the definition of the invention, the requirements of Article 84 EPC in combination with Rule 43(1) EPC were also not met.

b) Claim 1 of the first auxiliary request lacked inventive step in view of D1 or D2 as closest prior art, in combination with D3. D1 and D2 disclosed the active ingredient, rosuvastatin, and differed from claim 1 in that they did not disclose the combination of the active ingredient with an inorganic salt in which the cation is multivalent, nor a light protective coating comprising ferric oxide. The problem was identified as the provision of a composition wherein degradation of the active agent under storage conditions was minimised or avoided. The solution was obvious in view of D3 which taught the use of a pharmaceutical composition comprising the active agent in admixture with a water-soluble alkaline substance such as calcium carbonate and further comprising a film coating of "Opadry Yellow" which was a light protective coating comprising ferric oxide.

In addition, the minutes of the oral proceedings at which the decision was taken indicated that it was announced by the chairperson that the disclaimer in claim 1 according to the first auxiliary request was "allowable and established novelty over D9 (Article 54(3) EPC)" (see paragraph bridging pages 1 and 2 in the minutes).

V. The appellant (applicant) filed an appeal against that decision. With the statement setting out the grounds of appeal, the appellant filed four sets of claims as main request and first to third auxiliary requests. A disclaimer was present in claim 1 of all requests.

In that statement of grounds the appellant additionally cited inter alia the following documents:

D13: Extract form a report labelled "Appendix A"

(originally filed with the letter dated 24 July 2009)

D15: Declaration of Joseph Richard Creekmore dated 3 July 2006 (originally filed with the letter dated 13 February 2009)

D15a: "Appendix A" of D15 (originally filed with the letter dated 13 February 2009)

VI. With the letter dated 8 December 2010 the appellant filed eight sets of claims to replace those on file, whereby claim 1 in all requests still contained a disclaimer, and the following document in response to the third party observations which had been filed anonymously with letter dated 30 September 2010:

D17: Supplementary declaration of Richard Creekmore dated 19 November 2010

VII. In a communication sent in preparation for oral proceedings the Board reviewed the submissions of the appellant. In particular, with regard to the disclaimers included in all requests on file, it expressed the preliminary opinion that said disclaimers appeared unnecessary to establish novelty over document D9. With respect to inventive step, the Board pointed out that the available tests did not convincingly demonstrate an effect across the entire scope of the claim.

VIII. In reaction to that communication the appellant filed with letter of 13 May 2014 eight further sets of claims to replace those on file, in which the disclaimer had been deleted and further amendments had been introduced.

IX. Oral proceedings were held on 3 June 2014, during which a set of claims 1 to 12 was submitted as the main request and all previous requests were withdrawn.

Claim 1 of said request read as follows:

"1. The use of a light protective coating containing lactose, hydroxypropyl methyl cellulose, triacetin, titanium dioxide and ferric oxide to reduce the rate of formation of photodegradation products of (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl]-(3R, 5S)-3,5-dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof in a pharmaceutical composition comprising the said compound or salt as the active ingredient, wherein the pharmaceutical composition further comprises an inorganic salt in which the cation is multivalent, and wherein the coating comprises 1 to 3% by weight of the composition."

[...]

Inventive step

Claim 1 involved an inventive step, since the skilled person starting from D2, which was the closest prior art, and wishing to provide stable pharmaceutical compositions, would look to the disclosure of D4 in which the issue of photodegradation was addressed. Nothing in D4 pointed to a coating as a method of reducing photodegradation. Rather, D4 taught that the problem of photodegradation could be solved by using calcium carbonate. On that basis the presence of an inventive step was to be acknowledged.

XI. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request filed at oral proceedings before the Board on 3 June 2014.

Reasons for the Decision

[...]

Article 76, Article 84 and Rule 43(1) EPC

2. According to the appealed decision, claim 1 of the main request before the examining division did not meet the requirements of Articles 76(1) EPC, since the feature defining the presence of an inorganic salt in which the cation is multivalent was absent in the claim. Since said feature was seen as an essential feature, the requirements of Article 84 EPC in combination with Rule 43(1) EPC were equally not met.

2.1 Since the disputed feature has been included in claim 1 of the new main request, the corresponding objections have been overcome.

2.2 The Board has no other concern with regard to the requirements of Article 76(1) EPC, Article 84 EPC and Rule 43(1) EPC.

Basis in the application as filed

3. Claim 1 results from a combination of independent claim 2 of the application as filed with dependent claims 13 and 14, which refer to the weight percentage of the coating, and dependent claim 15, which specifies the composition of the coating, together with a change of category from a product claim (a pharmaceutical composition) to a use claim (the use of a light protective coating to reduce the rate of formation of photodegradation products). The specific purpose indicated in the use claim is disclosed in the original description for coatings containing ferric oxides in close association with the coating composition specified in the claim and the weight percentage range thereof (page 6, lines 5 to 12, see in particular the last sentence).

3.1 On that basis, claim 1 of the main request fulfills the requirements of Article 123(2) EPC. The Board has no concerns regarding Article 123(2) EPC for the dependent claims.

Novelty over D9

4. Claim 1 according to both requests on which the decision was based contained the disclaimer: "provided that the composition does not comprise the calcium salt of the active ingredient and a tribasic phosphate salt in which the cation is multivalent". While no analysis related to the presence of the disclaimer and compliance with the requirements of Article 123(2) EPC was made in the decision under appeal, the minutes of the oral proceedings at which the decision was taken indicated that the disclaimer was allowable and established novelty over D9 (see point IV, above). As no disclaimer is present in claim 1 of the main request, the issue of novelty over document D9 needs to be analysed.

4.1 Since the requirements of Article 76(1) EPC, second sentence, have been found to be complied with, the present divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority of the earlier application.

4.2 By virtue of this, document D9, which was published well after the filing date of the present application, does not belong to the state of the art according to Article 54(2) EPC.

4.3 As to Article 54(3) EPC, the present application and document D9 share not only the same filing date, but also the same priority claim, since they claim priority from the same document (see points I and III, above). On that basis, document D9 could belong to the state of the art under Article 54(3) EPC, only insofar as the priority of the present application is not validly claimed, while the priority of D9 is effective.

4.4 The crucial point in order to analyse novelty over D9 resides therefore in the validity of the priority for the present application and for document D9.

4.5 Priority of the present application

4.5.1 The priority document discloses in a paragraph exactly corresponding to a paragraph of the present application (cf. page 4, lines 6 to 13 of the priority document and page 6, lines 5 to 12 of the present application) the use of coatings containing ferric oxides to reduce the rate of formation of photodegradation products of the active agent of a coated pharmaceutical composition in close association with the coating composition specified in claim 1 of the main request and the weight percentage range thereof.

4.5.2 As to the active agent and the salt included in the coated pharmaceutical composition, the priority document discloses a pharmaceutical composition comprising (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl]-(3R, 5S)-3,5-dihydroxyhept-6-enoic calcium salt as the active agent and a tribasic phosphate salt in which the cation is multivalent (page 1, lines 3 to 6 and 24 to 25).

4.5.3 Both the active agent and the accompanying salt disclosed in the priority document are specific embodiments with respect to the generic disclosures in claim 1 of the main request, in which the active agent is the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof (a generic class including the calcium salt) and the accompanying salt is an inorganic salt in which the cation is multivalent (a generic class including a tribasic phosphate salt in which the cation is multivalent).

4.5.4 While it is clear that priority cannot be acknowledged for the whole scope of the claim in view of the generalisations, the question to be answered is whether and to what extent a partial priority can be acknowledged with respect to the subject-matter disclosed in the priority document. This is to be decided on the basis of the articles of the EPC relevant for priority (Articles 87 to 89, in particular Article 88(2) and (3) EPC, as far as multiple priorities and partial priority are concerned) and of the case law relating to those articles.

4.5.5 With reference to Article 88 EPC and in particular of the situation as the present one in which several alternatives (in the present case the acid, the calcium salt or a different salt for the active agent and a tribasic phosphate salt or a different inorganic salt for the salt) are covered by a claim (the so-called "OR"-claim), decision G 2/98 (OJ EPO 2001, 413) includes a full paragraph related to this subject. In detail, it refers to a memorandum which is part of the historical documentation related to the EPC (Memorandum C drawn by FICPI, M 48/I, Section C, simply referred to as the memorandum in what follows) and is said to express the legislative intent underlying Article 88(2) EPC, second sentence (point 6.4 of the decision) and states the following:

"As regards the "OR"-claim ..., it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. It is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters." (point 6.7 in G 2/98)

See FICPI Memorandum

4.5.6 A detailed analysis of G 2/98, of the memorandum and of previous case law was accomplished in T 1222/11 of 4 December 2012 in order to fully understand the conditions for acknowledging the validity of priority when the "OR"-claim is drafted using a generic term or formula (see points 11.1 to 11.8 of the reasons for the decision).

4.5.7 In T 1222/11 it was found that the assessment as to which elements of the "OR"-claim are covered by any of the multiple priority documents can be achieved only by a comparison of the claimed subject-matter of the "OR"-claim with the multiple priority documents, so that the words "gives rise to the claiming of a limited number of clearly defined alternative subject-matters" used in the cited passage of G 2/98 refer to the ability to conceptually identify by said comparison a limited number of clearly defined alternative subject-matters to which the multiple rights of priority claimed can be attributed or not (point 11.5.2 of the decision). That this comparison should give rise to a limited number of clearly defined alternative subject-matters is obviously necessary in order to identify which parts of the claims benefit from the effect of the priority right defined in Article 89 EPC (point 11.5.3 of the decision).

4.5.8 This approach was found to be supported by the memorandum, which according to G 2/98 proved the intent of the legislator concerning the question of multiple priorities. In particular reference was made in T 1222/11 to a statement on page 2 of the memorandum, which reads "It is of course immaterial whether the word "or" actually occurs in the claim, or is implied through the use of a generic term, or otherwise" (point 11.5.4 of the decision) and to three examples provided in the memorandum and referring to the "Broadening of a chemical formula", the "Broadening of range (temperature, pressure, concentration, etc.)" and a method of coating the inner wall of a pipe vs a method of coating the inner wall of bottles or any other hollow bodies (points 11.5.5 to 11.5.7 of the decision).

4.5.9 In particular with reference to the first example in the memorandum, which is the one which comes closer to the present situation, a passage of the memorandum was cited in T 1222/11, which reads: "A first priority document discloses a relatively narrow chemical formula supported by representative examples. A second priority document discloses a broader chemical formula which within its scope includes the narrower chemical formula, and which is supported by additional examples justifying the broader formula. If multiple priorities for one and the same claim are allowed [as it is indeed the case according to Article 88(2) EPC, second sentence], it will suffice to draw up a single claim directed to the broad formula. This claim will then enjoy priority from the first priority date to the extent that the compound in question comes within the scope of the narrow formula, and the second priority for the rest of its scope." This example was found to confirm that the attribution of the partial priorities to the different parts of the claim has to be made by a comparison of the subject-matter of the claim with the disclosure of the priority documents, the clearly defined alternative subject-matters being in this example the narrow formula and the rest of the scope of the claim (point 11.5.5 of the decision).

4.5.10 Moreover, while said analysis referred to the case of multiple priorities, in T 1222/11 it was concluded that there is no reason why the assessment of partial priority for an "OR"-claim should be different depending on whether a single priority or multiple priorities are claimed, nor is there any provision in the EPC which would support a different view (point 11.6 of the decision).

4.5.11 In addition, while the Board in T 1222/11 was well aware of a number of previous decisions of other Boards (T 1877/08 of 23 February 2010, T 476/09 of 21 September 2012, T 1443/05 of 4 July 2008 and T1127/00 of 16 December 2003) which followed a strict and literal interpretation of the condition "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" mentioned in G 2/98, which was seen as characterising the manner in which the subject-matter of the "OR"-claim must be defined, it found that said condition, when read in its proper context, should be given a different meaning than that attributed to it in those decisions (points 11.4 and 11.5 of the decision of T1222/11).

4.5.12 The present Board fully shares the analysis and the approach of T 1222/11 and, on that basis, comes to the conclusion that in a case such as the present one, in which a single priority is claimed for a given application and a number of features of a claim of said application are generalisations of specific features disclosed in the priority document, a partial priority is to be acknowledged, as long as it is possible to conceptually identify, by a comparison of the claimed subject-matter with the disclosure of the priority document, a limited number of clearly defined alternative subject-matters, including among the alternatives the specific embodiments which are directly and unambiguously derivable from the priority document. In order for this condition to be met, it is not necessary that the clearly defined alternative subject-matters are spelt out as such in the application, nor that the word "or" actually occurs.

4.5.13 This condition clearly extends to the case of multiple priorities. In that case, a comparison with the disclosure of each of the priority documents is necessary and for each of the clearly defined alternative subject-matters the earliest priority from which the alternative subject-matter is directly and unambiguously derivable is acknowledged.

4.5.14 Applying this condition to the present case, one can identify, by comparing the claimed subject-matter with the disclosure of the priority document, two clearly defined alternative subject-matters covered by claim 1 of the main request, namely:

(a) the use of claim 1 of the main request in a pharmaceutical composition comprising the calcium salt of the substituted dihydroxyhept-6-enoic acid as the active ingredient and a tribasic phosphate salt in which the cation is multivalent,

(b) the use of claim 1 of the main request in a pharmaceutical composition comprising the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, wherein the active ingredient and the inorganic salt are other than the calcium salt of the acid and a tribasic phosphate salt in combination.

4.5.15 The subject-matter of alternative (a) is fully disclosed in the priority document (see points 4.5.1 and 4.5.2, above) and enjoys the claimed priority, while the subject-matter of alternative (b) is not directly and unambiguously derivable from the priority document and does not enjoy a priority right.

4.6 Priority of document D9

4.6.1 Document D9 discloses, in a paragraph exactly corresponding to a paragraph of the priority document (cf. page 4, line 20 - page 5, line 5 of D9 and page 4, lines 6 to 13 of the priority document), the use of coatings containing ferric oxides to reduce the rate of formation of photodegradation products of the active agent of a coated pharmaceutical composition in close association with the coating composition specified in claim 1 of the main request and the weight percentage range thereof.

4.6.2 As to the active agent and the salt included in the coated pharmaceutical composition, D9 discloses a pharmaceutical composition comprising the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof as the active agent and a tribasic phosphate salt in which the cation is multivalent (claim 1).

4.6.3 An analysis of the priority of D9 (which is the same as the priority of the application under analysis, see its content in points 4.5.1 and 4.5.2, above) and an application of the same condition as above lead also in this case to the identification of two clearly defined alternative subject-matters, namely:

(a) the use of claim 1 of the main request in a pharmaceutical composition comprising the calcium salt of the substituted dihydroxyhept-6-enoic acid as the active ingredient and a tribasic phosphate salt in which the cation is multivalent,

(b) the use of claim 1 of the main request in a pharmaceutical composition comprising the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof other than a calcium salt as the active ingredient and a tribasic phosphate salt in which the cation is multivalent.

4.6.4 Also in this case the subject-matter of alternative (a) is disclosed in the priority document and enjoys the claimed priority, while the subject-matter of alternative (b) is not directly and unambiguously derivable from the priority document and does not enjoy a priority right.

4.7 Conclusions

4.7.1 Once the validity of the priority has been determined both for the application under analysis and for document D9, the relevance of D9 under Article 54(3) EPC can be determined.

4.7.2 For the subject-matter of claim 1 of the main request for which the priority is valid (alternative (a) in paragraph 4.5.14, above), D9 does not belong to the state of the art under Article 54(3) EPC, as it has no valid date prior to the priority date of the application under analysis. For this subject-matter therefore D9 is of no relevance at all in the analysis of novelty.

4.7.3 For the subject-matter of claim 1 of the main request for which the priority is not valid (alternative (b) in paragraph 4.5.14, above), D9 is state of the art under Article 54(3) EPC, however only for the subject-matter for which the priority of D9 is valid (alternative (a) in paragraph 4.6.3, above). However, the subject-matter of alternative (a) of D9 is not novelty destroying for the subject-matter of alternative (b) of claim 1 of the main request, as the former subject-matter has no overlap with the latter.

4.7.4 As no lack of novelty arises, there is no need for a disclaimer with respect to document D9.

Inventive step

5. Closest prior art

[...]

Consequently, D4 is identified as the closest prior art for the subject-matter of claim 1.

5.6 Claim 1 differs from the disclosure of D4 in that:

a) the latter does not disclose the active ingredient of claim 1 but rather compounds which differ in that they comprise a pyran ring.

b) the latter does not disclose the use of a light protective coating, let alone a coating containing lactose, hydroxypropyl methyl cellulose, triacetin, titanium dioxide and ferric oxide, to reduce the rate of formation of photodegradation products of the active agents.

5.6.1 Although in D4 the preparation of tablets which are film coated to about a 3% weight increase is mentioned (examples 3 on page 21 and example 8 on page 23), the composition of the coating is not disclosed and there is no indication in D4 that the coating may play a role in the prevention of photodegradation of the active ingredients, which according to D4 is provided by the stabilizing effect of the pharmaceutically acceptable alkaline earth metal salt (such as calcium carbonate) comprised within the compositions (page 5, lines 8 - 29).

6. Problem solved

6.1 Since a comparison of the method for reducing photodegradation according to D4 with that of the present application is not available to the Board, no particular advantage or improvement can be attributed to the differences identified. In view of this, the problem solved is the provision of a further method for reducing the rate of formation of photodegradation products of an inhibitor of HMG-CoA possessing a hydroxy acid side chain attached to a nitrogen heterocycle.

6.2 That the problem has been solved is demonstrated by documents D13, D15, D15a and D17, filed by the appellant as evidence of the effect on photodegradation of a tablet coating comprising ferric oxide and titanium dioxide. D13 identifies the major photodegradation products of the active ingredient of claim 1 as the epimeric PDP1 and PDP2 (paragraphs 1.6.3.1 and 1.6.4.2). According to test report D15 and the supplementary experimental detail provided as D17, a coating comprising titanium dioxide was compared with a coating comprising ferric oxide and titanium dioxide. The results, displayed in D15a, demonstrate that coatings comprising titanium dioxide and ferric oxide are effective in protecting the active ingredient against photodegradation: at the same percentage of coating weight gain, coatings comprising titanium dioxide and ferric oxide led to less photodegradation products than coatings comprising only titanium dioxide. Although a comparison was not drawn with a composition of the active ingredient in the absence of a coating, it is reasonable to assume that such a composition would not demonstrate a lower rate of formation of photodegradation products than if it were surrounded by a coating comprising only titanium dioxide, thereby allowing the indirect comparison of the rate of formation of photodegradation products of the active ingredient according to claim 1 to the rate which would be observed in the absence of a coating.

7. Obviousness

7.1 None of the prior art documents on file teaches that a reduction of the rate of photodegradation in compounds similar to the active ingredient of claim 1 may be achieved by using a light protective coating containing the ingredients listed. D3, the only document apart from D4 which mentions the light sensitivity of the subject compounds, refers to the possibility of employing coatings which may comprise as ingredients inter alia titanium dioxide and iron oxide (D3, page 9, paragraph 2). However, there is no indication in D3 that using said coating, or a coating of any kind will reduce the rate of formation of photodegradation products in the active ingredients. The skilled person faced with the posed problem, would have therefore no motivation to use a coating as the one indicated in the claim.

7.2 It follows that the subject-matter of claim 1 involves an inventive step.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent on the basis of claims 1 to 12 filed during the oral proceedings before the Board and a description yet to be adapted thereto.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T057110.20140603. The whole decision can be found here. The file wrapper can be found here. Photo by Rkolarsky, obtained via Wikimedia Commons, the free media repository.