This is an appeal against the revocation of the opposed patent.
The patent as granted had three independent claims directed at a feed additive, the use of arabinoxylans for the manufacture of a feed additive, and a method for improving the weight gain of monogastric animals, respectively.
The Opposition Division (OD) had found claim 1 of the request on file not to comply with A 84 and A 123(2) as well as A 53(c):
Claim 1 of auxiliary request 6 before the Board was essentially based on claim 1 of the request found unallowable by the OD; it read:
Use of arabinoxylans or preparations or materials containing arabinoxylans for the manufacture of a feed additive for monogastric animals for improving the weight gain and/or feed utilisation of monogastric animals, said feed additive comprising at least 20% w/w of low molecular weight arabinoxylans having a molecular mass between 414 and about 52,800 Da and said feed additive being used at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed.
The Board found this claim to comply with the requirements of A 53(c), A 123 and A 84:
Interpretation of claim 1
[3.1] Claim 1 is drafted in a manner analogous to a so called “Swiss-type” claim as “use of arabinoxylans … for the manufacture of a feed additive for monogastric animals for improving the weight gain and/or feed utilisation of monogastric animals”.
[3.2] The [patent proprietor] filed this claim during the opposition proceedings as a reaction to the finding of the OD that its previous claims relating to “a method for improving the weight gain and/or feed utilisation of monogastric animals … “ contained subject-matter not patentable under A 53(c) […]. According to the [patent proprietor], the OD’s view that both a therapeutic and a non-therapeutic effect were inseparably associated with the use of arabinoxylans and consequently its statement that the method claims were not allowable necessitated amending the claim in the way prescribed by the Enlarged Board of Appeal for a second medical use. Indeed, it is apparent from points 4 and 5 of the minutes of the oral proceedings that the new ground of opposition concerning A 53(c) was indeed admitted into the proceedings having regard to the post-published document D58. D58 was filed by [opponent] 02 in order to show that the dietary inclusion of arabinoxylans had a therapeutic and/or prophylactic effect […].
[3.3] According to EPO practice, in cases where a therapeutic and a non-therapeutic effect of a method are inseparable, because they are inevitable and inextricably linked, claims drafted as method claims are usually not allowed, as such methods are excluded from patentability under A 53(c) (see Case Law, 6th edition 2010, Chapter I.B.4.4.2a) and the decisions therein cited).
[3.4] “Swiss-type claims” were allowed in decision G 5/83 for second (or further) medical uses. There, claims directed to the use of a substance or a composition for the manufacture of a medicament for a specified new and inventive therapeutic application were allowed. The claims were exceptionally allowed because the appropriate form of protection, namely a use claim or a first medical use claim, was not possible.
[3.4.1] The board sees in the present case a certain analogy to this situation. In the present case a method claim is not allowable because the claimed subject-matter embraces (an inseparable) therapeutic treatment excluded from patentability. The drafting of the claim as a “Swiss-type claim” ensures therefore that, insofar as the inseparable therapeutic method is concerned, the claim does not infringe the requirements of A 53(c).
[3.4.2] Although it has been said in some decisions that a Swiss-type claim relating to a non-therapeutic activity has to be interpreted as defining a conventional process of preparation (see T 1286/05 [2.3-4], and T 611/09 [10.1]), it is the board’s view that the approach of G 5/83 applies in a situation such as the present one where the claim, although relating to a non-therapeutic activity, also embraces an inseparable therapeutic activity. Thus, in analogy to a second medical use claim in the Swiss-type format, the features supporting novelty (and inventive step) of claim 1 of auxiliary request 6 will be the intended use. In other words, novelty and inventive step have to be examined in the light of the intended use, namely the use of the specified feed additive for improving the weight gain and/or feed utilisation of monogastric animals.
Amendments
[4.1] Amended claim 1 is based on claim 16 as filed, this claim being directed to “The use of arabinoxylans or preparations or materials containing arabinoxylans for the manufacture of a feed additive according to any of the claims 1 to 15”.
In addition to the features of claim 1 to which claim 16 refers back, it has been specified that the feed additive is “used at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed”. This feature is disclosed on page 6, lines 28 to 32 of the application as filed where it is stated that: “In a preferred embodiment the enrichment of the feed with the feed additive results in a low molecular weight arabinoxylan-concentration in the feed between 0.1 and 10% (w/w). In a more preferred embodiment, the low molecular weight arabinoxylan-concentration in the feed varies between 0.1 and 5 % (w/w)”. The latter range is equivalent to the now claimed amount per kg of feed.
[4.2] The OD and the [opponents] objected to the amendment on the grounds that it could mean that the 1 to 50 g of arabinoxylans were simply present in the feed additive without it being incorporated into a feed or that it could mean that the 1 to 50 g of arabinoxylans were present in the feed because they were contained in a feed additive that was actually incorporated into a feed. These two possible meanings thus resulted in an objection under A 123(2).
[4.3] The board cannot accept these arguments. Claim 1 indicates that the feed additive is “being used at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed” (emphasis by the board). That is to say, the low molecular weight arabinoxylans present in the feed additive are those which result in the required concentration per kg of feed. There is no room for an interpretation of the claim wherein the feed additive is not incorporated into a feed.
Thus claim 1 has been limited to the embodiment wherein the feed additive is added to the feed in the specified amount, an embodiment explicitly disclosed as preferred in the application as originally filed […].
[4.4] Concerning the question whether the amended claim 1 extends the protection conferred, it is noted that claim 1 is based on claim 12 as granted, this claim being directed to “the use of arabinoxylans ... for the manufacture of a feed additive according to any one of claims 1 to 11”. Compared to granted claim 12, the subject-matter of claim 1 has been limited by specifying that the feed additive is “for monogastric animals for improving the weight gain and/or feed utilisation of monogastric animals” and that the feed additive is used “at 1 to 50 g of said low molecular weight arabinoxylans per kg of feed”.
Thus, the scope of claim 1 of auxiliary request is limited over the scope of claim 12 as granted.
[4.5] Insofar as the [opponents] argued that the granted claims did not protect a therapeutic use of the feed additive whereas the amended claims protect such use, the board notes that this line of argument contradicts the core of the [opponents’] submissions that the granted claims were not allowable because they embraced a therapeutic use.
In any case, either because the therapeutic use was already embraced by the granted claims or because the granted claims, by not specifying the intended use, embraced any use, the claims have not been amended in such a way as to extend the protection they confer.
[4.6] The OD in its decision did not raise any objection under A 123(2) against the remaining claims, i.e. dependent claims 2 to 8. Nor did the [opponents] during the appeal proceedings. The board sees no reason to raise any objection of its own.
[4.7] Consequently, the subject-matter of the claims of auxiliary request 6 meets the requirements of A 123(2) and (3).
A 84
[5.1] The OD saw a lack of clarity in the feature “said feed additive used at 1 to 50 g of said low arabinoxylans per kg of feed” and concluded that said lack of clarity had consequences for whether the claim fulfils the requirements of A 123(2).
However, as explained above in relation to the discussion of the amendments (see point 4.3), the board sees no lack of clarity in the above mentioned feature. The objected feature therefore fulfils the requirements of A 84.
[5.2] The [opponents] further argued a lack of clarity in the wording of the claim due to its drafting in the Swiss-type format.
The board agrees with the [patent proprietor] that so far as the EPO is concerned, a Swiss-type claim relating to a second medical use has not given rise to any problem under A 84 for almost 30 years. As set out in point [3.4.2] above, claim 1 of auxiliary request 6 has to be interpreted analogously, namely that the invention lies in the intended use. Consequently, the drafting of the claim in a manner analogous to Swiss-type claims does not infringe the requirements of A 84 either.
[5.3] Finally, as regards the [opponents’] objection that the arabinoxylans referred to at the beginning of the claim (“Use of arabinoxylans ...”) are not limited to the specific low molecular weight arabinoxylans mentioned subsequently in the claim, the skilled person when considering a claim would rule out interpretations which are manifestly inconsistent with its clearly intended meaning. In the present case, it would be immediately evident to the skilled person that the claim embraces only the use of the specified arabinoxylans, i.e. the low molecular weight arabinoxylans.
[5.4] For these reasons the claims do not infringe the requirements of A 84.
A 53(c)
[6.1] A 53(c) requires that European patents shall not be granted in respect of methods for treatment of the human or animal body by surgery or therapy.
[6.2] The [opponents] objected to claim 1 as embracing a therapeutic method, the reason being that the low molecular weight arabinoxylans may have both a therapeutic and a non-therapeutic effect.
[6.3] This argument, however, no longer applies to present claim 1 which, as set out above, is drafted in a manner analogous to a Swiss-type claim as “Use of arabinoxylans … for the manufacture of a feed additive …”. Such a claim formulation is allowable even if the manufactured feed additive were used in a therapeutic method.
[6.4] Consequently, the requirements of A 53(c) are met.
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