Thursday, 15 March 2012

T 605/09 – Paraphrase

This appeal was against the rejection of the opposition by the Opposition Division.

The decision contains an interesting paragraph on the novelty of the main request, claim 1 of which read:
A method for improving activity in a pet, the method comprising administering to the pet a nutritional agent which promotes the growth of bifido- and lactic-bacteria in the gastro-intestinal tract of the pet.

[2.1] Claim 1 of the main request is directed to:
  • a method for improving activity in a pet,
  • comprising administering to the pet a nutritional agent,
  • which promotes the growth of bifido-and lactic-bacteria in the gastro-intestinal tract.
The nutritional agents used are known prebiotics, including oligosaccharides, probiotic micro-organisms, or a fermentation product thereof […].

[2.2] Claim 1, although drafted as “method of improving activity in a pet”, is undoubtedly framed so as to protect the “use” of the known nutritional “for improving activity in a pet”, that is to say, the claim is to be understood as a second non-medical use claim. This is in fact how the parties and the opposition division interpreted the claim throughout the opposition proceedings.

According to decision G 2/88 novelty within the meaning of A 54(1) can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claims in terms of the use of that substance for a hitherto unknown, new non-medical purpose reflecting such effect, even if the only novel feature defined in the claims is the purpose for which the substance is used.

It is then to be decided whether the claimed improvement of activity in a pet is a new technical effect in terms of G 2/88.

[2.3] The novelty of claim 1 was contested by the appellant during the appeal proceedings having regard inter alia to the disclosures of D4, D6 and D7.

[2.4] D4 discloses the use of pullulan and/or dextran as growth-promoting agent for bifid bacteria […]. Although D4 does not disclose that pullulan and dextran promote the growth of lactic-bacteria, they are in fact growth-promoting for lactic bacteria, as evidenced by D22, D23 and D24. The agent can exert its activity in domestic animals such as dogs and cats […] and is said to be very useful, inter alia, in the maintenance and improvement of health […].

D6 discloses a pet diet which alters the function and morphology of the gastrointestinal tract in ways which are beneficial to the animal’s health and well-being […]. The diet comprises fermentable fibres such as fructooligosaccharides or inulin […], both being nutritional agents which promote the growth of bifido- and lactic-bacteria in the gastro-intestinal tract […].

D7 discloses the use of sucrose thermal oligo-saccharides to increase the number of bifidobacteria and lactobacilli within the gastrointestinal tract […]. The nutritional agents of D7 are used to enhance the growth rate and health of animals, including dogs and cats […].

[2.5] Thus, neither D4, D6 nor D7, nor any other cited prior art, contains an explicit disclosure that these nutritional agents have the claimed capability of improving the activity in a pet.

[2.6] The assessment of novelty depends on the answer to the question whether or not this effect, i.e. the capability of the nutritional agents to improve the activity in a pet, which is not verbatim disclosed in the state of the art, can confer novelty to the subject-matter of claim 1 in view of the conclusions laid down in G 2/88 […].

[2.7] In the board’s judgement this is not the case here because the improvement of the activity of the pet does not represent a newly discovered technical effect of the nutritional agents for the following reasons:

[2.7.1] There is undeniably a correlation between improving health of a pet and its (physical) activity. As pointed out by the appellant, every dog or cat owner knows that a primary indicator of the health of a dog or a cat is its level of activity. In particular, it is well known that lethargy or inactivity are an indicator of illness. This self-evident truth is reflected, for example, in D20, in which the state of health of a cat is assessed by means of a modified “Karnofsky” score. The levels of playing and social activity in the cat contribute to the overall score, such that increased activity is taken as an indicator of improved health. The health improvement disclosed in D4, D6 and D7 results inherently in an increase of the activity of the pet.

[2.7.2] In fact the alleged newly discovered effect of improving pet activity is necessarily correlated to the known one. In other words, the claimed effect was already manifest and could not have been overlooked by a pet owner when feeding the compositions of D4, D6 or D7 to its pet.

Hence, the effect relating to improving pet activity is not a new technical effect in the sense of G 2/88 and cannot confer novelty on the subject-matter of granted claim 1 over the disclosure of D4, D6 and D7.

[2.8] The respondent maintained that an improvement in the health of a pet did not mean that the activity of the pet was increased. The claimed improvement in activity in a pet was not necessarily correlated with the known improvement of health and could be clearly distinguished therefrom.

[2.9] The board cannot accept this argument for the following reasons:

[2.9.1] It is correct that the prior art does not mention the wording “improving activity”. It is however self-evident that an improvement of health results in increased activity as explained above. Calling the “improvement of health” which is disclosed in D4, D6 and D7 “improving activity” is only paraphrasing a known effect. Specifically pointing to this effect cannot be considered as an additional piece of knowledge about the known use of the nutritional agents because it is only the rewording of a known effect. The above considerations are in line with the conclusions in decision T 254/93 [4.8] where it is stated that “the mere explanation of an effect obtained when using a compound in a known composition, even if the effect was not known to be due to this compound in the known composition, cannot confer novelty on a known process if the skilled person was aware of the occurrence of the desired effect”.

[2.9.2] Furthermore, the patent in suit associates health improvement with improved activity. In examples 1 and 4 the increased level of activity is associated with effects related to an enhancement of health (a healthy look, shinier coats, brighter eyes). Moreover in examples 2 and 3, where arthritic (i.e. ill) dogs were used, the improvement of activity can again not be separated from the known improvement of health.

[2.9.3] Finally, it is noted that the patent attributes the improvement in activity to the increased production of nutrients and/or absorption of nutrients due to the increasing concentration of bifido- and lactic-bacteria, which provide the pet with better nutrition and more energy […]. This is indeed the known effect of the used prebiotic and probiotic microorganisms. The ability to improve glucose metabolism and enhance nutrient absorption in animals is the reason for its beneficial use for improving health […].

[2.10] For these reasons the subject-matter of claim 1 of the main request is not novel.

The patent was finally revoked.

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

The file wrapper can be found here.