EPO Case Law week 20

Noteworthy EPO decisions of week 20 (published 11 - 15.05.2015)

Week 20 was a quiet week at the EPO regarding published decisions.

T 0522/11 - Art 123(2) Added subject matter by combining claim 1 with (separate) dependent claims 3 and 5 unallowable - " It may be added that whilst nothing would seemingly prevent the combination of the features in claims 3 and 5 from a technical viewpoint, this is not the standard which is to be applied when deciding on the issue of a direct and unambiguous disclosure of the combination of these features."

T 2389/13 - in this examination appeal, the Board cites a Wikipedia printout D8 (dated January 2015) together with the summons for oral proceedings as evidence " that the person skilled in the art by applying his common general knowledge and taking account of the chemical and physical properties of this specific aluminate type will consider trying out other commonly known aluminate spinel compounds such as for example ZnAl2O4 (having a melting point of 1950°C [...] as material for said transition layer 24 (see for example D8, page 1) in order to solve the objective problem of providing an alternative material with high temperature resistance."

T 1023/11 -  Art 54(5) - second medical use - formulation " for use in the treatment of spasticity" - D1 discloses the compound as muscle relaxants and muscle relaxants are useful in the treatment of muscle stiffness, which is a well-known sign of spasticity, however use for treatment of spasticity is still novel, because " a muscle relaxant can also be used for therapeutic applications other than the treatment of spasticity. Therefore, the examining division's conclusion that D1 provides an implicit disclosure of the use of the baclofen compositions in the treatment of spasticity is not tenable." Also inventive because closest prior art D4 teaches away from oral formulations.


T 1164/11 - Art 83 - cancer curing device (cf. perpetuum mobile) apparatus with functional feature "an energy emitter (9) [...] active on the molecules of at least one medicament to cause penetration of same into a skin region to be treated " insufficiently disclosed - "the Board is not aware of a known physical mechanism according to which light is able to push molecules of a medicament, contained in the matrix of a solidified medicamentous solution, into the skin"; " The Board accepts that it may not be possible to provide a scientifically sound explanation and that the invention may still be sufficiently disclosed if such an unexpected effect is convincingly demonstrated. However, the original application is devoid of any test results or experimental evidence that could give an indication of light-induced enhancement of penetration of medicament molecules into the skin."