Thursday, 2 December 2010

T 1138/09 – No Transformation

This decision deals with the decision of the Opposition Division to reject the oppositions filed against the patent under consideration.

Claim 1 of the patent as granted read:
A surgical tissue coagulator (A) comprising an elongate, biocompatible, tube (10) having an open distal end (12) and a proximal end (14); means (22) for connecting the proximal end (14) of said tube (10) with a source (24) of an inert, ionizable gas so that a stream of said gas can flow through said tube (10) and exit the distal end (12) of said tube (10); a handle 18 attached to said tube (10) adjacent the proximal end (14) of the tube (10) for maneuvering said tube (10); a wire (28) within said tube (10) for conducting radiofrequency current, the wire (28) having a distal end (30) for positioning adjacent the distal end (12) of said tube (10), and means (32) at the distal end (30) of said wire (28) for discharging an arc (34) of radiofrequency energy away from the distal end (30) of said wire (28) within said stream of inert gas exiting the distal end (12) of said tube (10) so as to form an ionized gas stream which is capable of coagulating tissue (38) during endoscopic surgery within a patient, the wire (28) having a proximal end (40) opposite the distal end (30) of the wire (28), and means (42) for connecting the proximal end (40) of the wire (28) with a source (44) of radiofrequency energy, characterized in that said tube (10) and said wire (28) are flexible, the tube has further an external diameter of less than about 5 mm, is insertable into a surgical endoscope (16) having a length of at least about 35 cm, and in that said handle is adapted for maneuvering said tube (10) within said endoscope (16) while said handle (18) is outside said endoscope (16).

When discussing inventive step of this claim, the Board makes a statement on A 53:

[4.3] In the Board’s judgment, the inventive step of the claimed solution resides in the combination of all features of the claim, i.e. the structural features of the coagulator (K1 to K3) and the fact that the coagulator is specifically designed for insertion into an endoscope as defined by features K4 to K6, which are functional features.

The coagulator according to the invention involves an inventive step since the claimed solution permits the coagulator to be used in single-port endoscopic surgery with direct and continuous observation of the treatment site. The operation can be performed and observed through a single endoscope which may be flexible and can remain in the desired position to which it was previously manoeuvred.

Contrary to the assertions of the appellants, A 53(c) is not relevant in the present case since the claim is directed to a coagulator, i.e. a physical entity, and not to a method of treatment by surgery or therapy, i.e. a physical activity, which represents a different category of claim (G 2/88 [2.2]). In general, a claim to a physical entity confers absolute protection, which also encompasses all its uses (G 2/88 [5]).

A 53(c), second sentence, explicitly states that the exclusion provision does not apply to products for use in such methods. Whereas method claims are absolutely forbidden in order to leave the physician free to act unfettered, product claims are allowable provided their subject-matter is new and inventive (G 2/08 [5.7]). The fact that some features of the claimed apparatus are functional, as in the present case, does not in itself transform the claim into a method claim (T 712/93 [3]). There is no reason to disregard advantages achieved in the use of the claimed coagulator when assessing inventive step, even when this use relates to surgery or therapy.

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