The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke its patent.
Claim 1 of the main request before the Board read:
Use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water, as an antiradical for the preparation of cosmetic products for skin protection against UV rays.
The Board examines whether this claim complies with the requirements of A 76:
[2.1] The patent in suit is based on European patent application No. 03 078 256.9 which is a divisional application of the earlier European patent application No. 99 102 534.7. For the requirements of A 76(1) to be fulfilled, it is thus necessary that the content of the patent in suit does not go beyond the content of the parent application as filed.
[2.2] In accordance with the established jurisprudence of the Boards of Appeal, the relevant question to be decided in assessing whether an amendment adds subject-matter extending beyond the content of the parent application as filed, is whether the proposed amendment was directly and unambiguously derivable from the parent application as filed, either explicitly or implicitly, implicit disclosure meaning no more than the clear and unambiguous consequence of what is explicitly disclosed.
[2.3] Claim 1 of the main request and of auxiliary requests 1 and 2 is directed to the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water. The claim thus defines the extract which is used by virtue of the process for obtaining it.
The only passages in the parent application as filed which describe how the extract may be obtained are at page 2, lines 14 to 15, said passage requiring that the extract is prepared by dipping the leaves into water, and subjecting the infusion to ultrasounds, and claim 14, which requires that the extract is obtained by extraction with water, with the aid of ultrasounds.
[2.4] There is thus no disclosure in the parent application as filed for the use of an extract obtainable exclusively by dipping the leaves into water without the aid of ultrasounds, said two steps being disclosed in combination only, such that subject-matter has been added which extends beyond the content of parent application as filed.
[2.5] According to the [patent proprietor], who conceded that an extract obtainable exclusively by dipping the leaves into water was not explicitly disclosed in the parent application as filed, such an extract was nevertheless implicitly disclosed therein.
[2.5.1] In support of this argument, the [patent proprietor] submitted that the step of subjecting the infusion to ultrasounds was not described in the parent application as filed as being essential, and could thus be deleted.
However, the passages at page 2, lines 14 to 15 and claim 14 of the parent application as filed do not indicate that the step of subjecting the infusion to ultrasounds is optional, but rather these two process steps are only disclosed in combination with each other. Said passage on page 2 also clearly indicates that the second process step has a technical effect, since it is described as accelerating the extraction, such that it cannot be viewed as a non-technical feature. Hence, the [patent proprietor’s] argument that this feature could be deleted because it was not “essential” must fail.
[2.5.2] The [patent proprietor] further submitted that the feature was not indispensable for the function of the invention in the light of the technical problem it solved, since the invention lay in the use of an aqueous extract as opposed to the prior art alcoholic extracts. As such, the essential feature was that the extract was an aqueous extract, not that is was obtainable by subjecting the aqueous infusion to ultrasounds, such that this process step may be deleted.
However, the disclosure requirement of A 76(1) requires merely that the subject-matter of the divisional shall not extend beyond the content of the parent application as filed. The distinction between features which are allegedly “dispensable” or “indispensable” in order to solve a technical problem is irrelevant to the question of what is directly and unambiguously disclosed in the parent application as filed. Hence, this argument of the [patent proprietor] must also be rejected.
[2.5.3] Finally, the [patent proprietor] argued that the subject-matter of claim 1 of these requests fell within that of claim 1 of the parent application as filed, which related to the use of an extract from the leaves of Olea Europea obtainable by any means.
However, merely because the claimed subject-matter falls within the subject-matter disclosed in the parent application as filed does not mean that said restricted subject-matter is actually disclosed therein (see T 288/92 [3.1]), for which the only criterion to be applied is whether the proposed amendment, even if it results in a restriction of the claimed subject-matter, is directly and unambiguously derivable from the parent application as filed.
[2.6] For these reasons, the Board concludes that claim 1 of the main request and auxiliary requests 1 and 2 is amended in such a way that subject-matter extending beyond the content of the parent application as filed is added, contrary to the requirement of A 76(1), there being neither an explicit nor an implicit disclosure in the parent application as filed for the use of an extract from the leaves of Olea Europea, obtainable by dipping the leaves into water only, with the consequence that the main request and auxiliary requests 1 and 2 are not allowable.
0 comments:
Post a Comment