T 47/07 – Arbitrary

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its patent application. Claim 1 of the main request before the Board read (the differences with respect to the claim as refused by the ED are apparent; click to enlarge):

The Board examines whether the amendments comply with the requirements of A 123(2):

[4.1] Claim 1 as originally filed relates to

− prevention and

− treatment of three different diseases namely a heart disease chosen from

− cardiac insufficiency,

− chronic heart failure, and

− acute heart failure.

In addition, original claim 13, referring to original claim 2 which itself refers to original claim 1, concerns a list of − eleven therapeutic agents for the combined therapy, used each alone or in mixture with another one.

[4.2] Claim 1 of the main request essentially relates to

− treatment of

− chronic heart failure

− in combined therapy with another therapeutic agent selected from the restricted group consisting of seven agents.

Nothing in the wording of the claims as originally filed links the disease “chronic heart failure” specifically to “treatment” in combined therapy with another therapeutic agent selected from a restricted group consisting of seven agents instead of eleven.

Nor is such a link supplied by any text in the description as originally filed.

Accordingly, the teaching of claim 1 of the main request cannot be regarded as individualised and thus is not recognisable as such in the application as originally filed.

[4.4] As a consequence, the teaching of claim 1 of the main request represents an unallowable extension of the content of the application as originally filed (A 123(2)). […]

[7.1] The appellant argued that he was entitled to restrict to “treatment” alone since “prevention and treatment” was contradictory.

However, even if the board were to refrain from reading “for prevention and treatment” as a short form of “for a disease (sic) selected from prevention and treatment” which usually is accepted, the only amendment following from this argumentation is to replace the word “and” by “or”. There is absolutely no need to prefer either “prevention” or “treatment” when dismissing one of the terms in order to remove the alleged contradiction. Thus, the choice of “treatment” is arbitrary and not inevitable; the latter being necessary for allowability of this choice in the context of the other amendments of the subject-matter as claimed.

[7.2] A similar argumentation applies to the amendment of the list of other therapeutic agents for combined therapy.

Since there is no real need to adjust this list to a new perception of agents normally used in heart therapy nowadays, the amendment is arbitrary and not inevitable; it is not allowable in the context of the subject-matter as claimed. […]

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