T 1001/07 – Anointed Yet Doomed

This appeal deals with the refusal of an application by the Examining Division (ED).

Claim 1 of the application as filed read:

1. Pharmaceutical ointment for use in the therapy of dermatologic diseases consisting of Vaseline, Hydrochloric Acid solution 37%, Boric Acid, and Oil of Black Cedar in the following proportions:

- 1000 gr of Vaseline used as an excipient;

- 100-150 ml of Hydrochloric Acid solution 37%;

- 30 gr of Boric Acid;

- 30 gr Oil of Black Cedar.

The ED refused the application because claim 1 did not comply with the requirements of A 83 and A 84. The term “Black Cedar” could be understood as three different unrelated plant species which resulted in the fact that the subject-matter of the claim was not clearly defined (A 84) and not disclosed in the application in a manner sufficient for a skilled person to put it into practice (A 83).

Together with the notice of appeal, the applicant submitted a new set of claims. Claim 1 of this set of claims read:

1. Pharmaceutical ointment for use in the therapy of dermatologic diseases consisting of Vaseline, Hydrochloric Acid solution 37%, Boric Acid, and Oil CADE in the following proportions:

- 1000 gr of Vaseline used as an excipient;

- 100-150ml of Hydrochloric Acid solution 37%;

- 30 gr of Boric Acid;

- 30gr Oil CADE (oil of Juniperus Oxycedrus).

In what follows the Board deals with the question of whether this amendment complies with A 123(2):

[4] A 123(2) requires that the application shall not be amended so as to contain subject-matter which extends beyond the content of the application as filed.

[5] The present claim 1 refers first to “Oil CADE” and subsequently to “Oil CADE (oil of Juniperus Oxycedrus)” instead of to “Oil of Black Cedar” on both occasions in the claim as originally filed.

[6] There is no explicit basis in the application as filed for either of the expressions “Oil CADE” or "oil of Juniperus Oxycedrus". Based on evidence contained in documents D1 to D3, the ED found, in the decision under appeal in the context of the assessment of compliance with A 83 and A 84, that the term “Black Cedar” was not an accepted common denomination for any particular plant species. In fact, it established that document D1 referred to Black Cedar in its scientific denomination as being Thuja occidentalis Nigra, document D2 as being Nectandra pisi, whereas according to the priority document for the application Black Cedar was equivalent to CADE, which according to document D3 corresponded to Juniperus oxycedrus.

[7] In accordance with established case law 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 application as filed is whether the proposed amendment is “directly and unambiguously” derivable from the application as filed (see Case Law of the Boards of Appeal of the European Patent Office, 6th Edition 2010, III.A.7).

[8] In view of the above finding by the ED, and contrary to the argument of the appellant that the term “Black Cedar” is synonymous with either of the terms CADE or Juniperus oxycedrus, there exists no unambiguous technical correspondence for these terms in the relevant technical field. The board therefore necessarily concludes that neither “Oil CADE” or “Juniperus Oxycedrus” is directly and unambiguously derivable from the application as filed.

[9] The appellant has argued that oil of black cedar (oil cade) was found “in the market” where the appellant bought it for the preparation of the ointment (document De) and could there also be found as Juniperus oxycedrus – oil cade. Document (De), a certificate of analysis dated 2 June 2006 for a certain batch of “cade oil” ordered by a person different from the appellant, has been filed in this context.

[10] It is accepted in the case law of the boards of appeal that a disclosure implicit in the patent application, i.e. what the person skilled in the art would consider necessarily implied by the patent application as a whole, is also relevant when assessing the requirements of A 123(2). For an overview of the case law relating to the definition of the notion “skilled person” the board refers to the publication "Case Law of the Boards of Appeal of the EPO", 6th Edition, 2010, chapter I.D.7.

[11] The board accepts that it may well be that for the production of her ointment the appellant has in fact always used oil derived from the species Juniperus oxycedrus. Nevertheless, in view of the finding in point [8], above, it cannot be accepted by the board that this establishes that it would be considered necessarily implied by the skilled person that the patent application equates Black Cedar with Cade or Juniperus oxycedrus. Accordingly, this argument must fail.

[12] The appellant has furthermore referred to the Greek patent application 20030100419 which was filed on 15 October 2003 and from which the present application claims priority. The appellant argued that the claims of this application had been amended before the Greek patent office on 4 December 2003. These amendments had however not been attached by the Greek Office to the priority certificate provided to the EPO. The pharmaceutical ointment comprising oil of black cedar (oil cade) disclosed in the Greek priority application filed on 15 October 2003 was the same as the ointment disclosed in the present European patent application. The omission of the term "oil cade" in the European application was due to the translator who translated only the first term appearing in claim 1 of the Greek priority application.

Claim 1 of the Greek priority document (as filed)

[13] Also in the context of this argument, the board emphasises that the relevant reference point for assessing the compliance of amendments with the requirements of A 123(2) is the application as filed. It notes that neither of the documents representing the European application, be it in the Greek language or the English language, refers to oil CADE but instead refers to oil of Black Cedar, although it is true that the priority document as filed in the Greek language makes reference to oil CADE (see e.g. example 2 and claim 1).

However, it has been established in the case law of the boards that “the content of the application as filed” as referred to in A 123(2) does not include any priority documents (see e.g. decision T 260/85). Such document can therefore not be taken into account when assessing compliance of claimed subject-matter with the requirements of A 123(2). Also this argument must therefore fail.

[14] Accordingly and in view of the above considerations the board decides that claim 1 does not meet the requirements of A 123(2). […]

The appeal is dismissed.

Dura lex (casus) sed lex. 

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