Monday, 29 August 2011

T 177/08 – Fake Dependency

Another decision with an interesting paragraph on dependent claims, but also on A 69 and R 139 ...

This appeal was directed against the decision of the Opposition Division to revoke the patent.

Claim 1 of all the requests on file before the Board concerned the use of a compound of general formula II:

for the preparation of a pharmaceutical composition for inhibiting hyperproliferation in a cell.

The Board found the main request not to comply with A 123(3):

[3.1] The Markush formula according to claim 1 as granted can contain C1-C10 alkyl rests at three locations, namely at positions R1, R2 and R8. The claims do not contain any information as to whether or not these alkyl rests may be substituted. As was correctly pointed out in the decision under appeal, alkyl according to IUPAC is equivalent to CnH2n+1, which precludes substitution. On the other hand, paragraph [0086] of the description reads:
“Moreover, the term “alkyl” (or “lower alkyl”) as used throughout the specification, examples, and claims is intended to include both “unsubstituted alkyls” and “substituted alkyls”, the latter of which refers to alkyl moieties having substituents replacing a hydrogen on one or more carbons of the hydrocarbon backbone.”
[3.2] According to A 69, the extent of the protection conferred by a European patent shall be determined by the claims. Nevertheless, the description and the drawings shall be used to interpret the claims. It therefore has to be decided whether said interpretation of the claims by the content of the description is limited to cases where the claims are in need of interpretation, e.g. because of functional or unclear features, or whether it also applies to the present case, where a well-known and generally accepted meaning of a term is overthrown and replaced by a new definition given in the description.

[3.3] The appellant cited decisions T 1321/04 and T 190/99 in this context.

T 1321/04 [2.3] indicates that terms are not considered in isolation but in the context of the content of the document as a whole. Terms must be construed as they would be by the skilled person according to the whole content of the application, taking into account what is achieved by the invention. However, decision T 1321/04 concerned the question of how the term “predetermined value of nitrogen oxide concentration” should be interpreted in view of the assessment of novelty. To understand the meaning of this term, the whole content of the document was taken into consideration. The case was not concerned with the issue of determining the scope of protection.

In the present case, the situation is quite different: here, the meaning of the feature in question is generally accepted, perfectly understandable per se, and unambiguously defined by IUPAC, whom the skilled person acknowledges as the competent authority in this context. The skilled person therefore has no need to consult the description for a definition of “alkyl”. The board is of the opinion that the second sentence of A 69 does not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims should be superseded by a different definition found in the description. If it is intended that a term which is in no need of any interpretation is given a new meaning, then the definition for this new meaning must be put into the claims. Third parties cannot be expected to check every single term of the claims for a potentially different meaning that might be hidden somewhere in the description. As a consequence, irrespective of the definition in paragraph [0086] of the contested patent, the term “alkyl” in the claims as granted has the meaning of CnH2n+1.

[3.4] Nor does decision T 190/99 have any bearing on the present case. In T 190/99 [2.4], it was found that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent pursuant to A 69. The patent must be construed by a mind willing to understand, not by a mind desirous of misunderstanding. In T 190/99 [2.2.4], the board held that the skilled person reading the feature
“said plurality of tensioning warp threads (19) extending parallel with and between said upper and lower binding warp threads (17, 18)”
would not unreservedly assume that the term “parallel” had to be understood in the strict geometrical sense of the word (i.e. two equidistant straight lines). It was part of the most basic knowledge of the skilled person that in a woven fabric warp threads appeared to be parallel when the fabric was seen in plan, but running approximately sinusoidally when seen in cross- section. Warp threads were therefore not parallel in the strict sense of the word (see point [2.2.3]). As a consequence, the board arrived at the conclusion that in view of the overall disclosure the replacement of “parallel” by an amended and less restricted definition was not objectionable under A 123(3).

In contrast to decision T 190/99, where a term used in its usual meaning did not make technical sense, formula II according to claim 1 of the contested patent does not include any subject-matter which is illogical or does not make technical sense if the term “alkyl” is used in its usual and well-known meaning. Reference is again made to the last two sentences of point [3.3] above.

[3.5] As a consequence, the board concludes that the subject-matter of the main request extends the protection conferred and does not meet the requirements of A 123(3).

The same was found to be true for the first auxiliary request. The Board then went on to examine the second auxiliary request:

[5.1] The subject-matter of auxiliary request 2 does not include substituted alkyl groups. As a consequence, the objections raised above in point 3 do not apply to auxiliary request 2.

[5.2] Formula II according to claim 1 of auxiliary request 2 comprises compounds in which L adjacent to X is -CH(R10)-. Claim 1 as granted does not include this option. However, claim 21 as granted, which refers to any preceding claim and thus also to claim 1 as granted, comprises compounds wherein X adjacent to L includes unsubstituted methylene groups if L adjacent to R1 is absent. The latter condition is also fulfilled by the subject-matter of auxiliary request 2, where L adjacent to R1 was deleted from formula II.

NB: Claim 21 as granted read:
21. The use as in any preceding claim, wherein L adjacent to R1 is absent, and L adjacent to X is a substituted or unsubstituted methylene.
Claim 21 as granted, in combination with the preceding claims to which it refers, therefore encompasses the subject-matter of auxiliary request 2. As a consequence, it has to be evaluated whether claim 21 as granted can be taken into consideration or, as was alleged by [opponent 2], whether it is erroneous and therefore to be disregarded. In this context, [opponent 2] made reference to R 43 and R 139.

R 43

[5.2.1] R 43(4) stipulates that any claim which includes all the features of any other claim is a dependent claim and shall contain, if possible at the beginning, a reference to the other claim and then state the additional features.

Claim 21 as granted contains a reference to the preceding claims and has the same category as the claims to which it refers. However, the compounds defined by formula II according to claim 21 as granted are different from those according to claims 1 to 20 as granted as far as the substituent L adjacent to R1 is concerned: substituted methylene groups (claim 21 as granted) are not included in the list of substituents for L as defined in claim 1 as granted. Despite its reference to the preceding claims, claim 21 as granted is therefore an independent claim, as it does not include all the features of the claims to which it refers. As a consequence, the requirements of R 43(4) are not met.

Despite this deficiency, the skilled person has no doubts as far as the content of claim 21 as granted is concerned. He will conclude that the definitions for those substituents not mentioned there (i.e. all substituents except R1 and L adjacent to X) can be found in the preceding claims and in particular in claim 1. Doing so, he will realise that claim 21 is indeed an independent claim which, however, is clearly and unambiguously defined and therefore does not give rise to any doubts regarding its content. As a consequence, the skilled person would not disregard claim 21 as granted.

R 139

[5.2.2] Making reference to R 139, [opponent 2] alleged that claim 21 had been erroneously introduced in the course of substantive examination. Features which were the consequence of an obvious error had not been intended to be part of the claims and could therefore not be used in support of A 123(3).

This argument cannot succeed, as the [patent proprietor] contested that the introduction of claim 21 was the result of an obvious error. The fact that [opponent 2] has doubts regarding the basis for claim 21 as granted in the application as originally filed is an issue that does not concern A 123(3) but should be discussed in connection with the requirements of A 123(2). The board therefore concludes that claim 21 is not the result of an obvious error.

[5.3] As a consequence, the use of compounds according to formula II as defined in auxiliary request 2, in which L adjacent to X is -CH(R10)-, is encompassed by the claims as granted, so the requirements of A 123(3) are met.

The Board then remitted the case to the Opposition Division for further processing.

Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.