T 3035/19 - Two lists and no pointer

 Key points

•  In a way, this case feels like T 1676/08  redux, in that the patent is about oxycodone (leaving aside the political controversy about such medicaments) and Art. 123(2) and that the patent in suit has about 13 proprietors.
• The proprietors are different legal entities for almost every designated state of the European patent, all belonging (it seems) to the same enterprise. Speculation for the reasons for this legal structuring are beyond the ambit of this weblog.
• There are also 11 opponents.
• “ the opposition division decided the following. Regarding claim 1 of the main request, the earlier application as filed did not make directly and unambiguously available to the skilled person the teaching that in order to significantly reduce opioid induced obstipation without compromising analgesic activity for pain treatment, a fixed weight ratio oxycodone/naloxone 2:1 had to be used. Arriving at the combination of the features pertaining to weight ratio 2:1 and to reducing opioid induced obstipation required simultaneous selections from several independent lists.”
• “ "Opioid induced obstipation" is synonymous with "opioid induced constipation", abbreviated OIC.”
• The Board: “Here, the earlier application as filed discloses several oxycodone:naloxone ratios, including the ratio of 2:1 (see page 16, lines 19-21), and lists several side effects, one of which is OIC (see page 9, lines 15-17). However, the fact that each of these two features of claim 1 of the main request is, individually, disclosed in the earlier application as filed is not sufficient to conclude that their combination is also derivable from the earlier application as filed.”
• “While the notion of selection from two lists is not meant to take the place of the gold standard, it provides valuable guidance and finds wide application in case law for the assessment not only of added subject-matter but also of novelty (see the landmark decision T 12/81 [and CLBA ] I.C.6.2). Consequently, in view of the importance of applying a uniform concept of disclosure for the purposes of Article 54 and 123(2) EPC (see G 2/10, []), and by the same token Article 76(1) EPC, the Board considers that a departure from this established criteria for selection inventions in the assessment of added subject-matter is not appropriate.”
• “The Board emphasizes that the combination of features resulting from selections in two or more lists, or pertaining to separate embodiments, only introduces added subject-matter in the absence of a pointer to that particular combination. Thus, an amendment based on the combination of two items disclosed in the earlier application in two lists of some length, may still be considered to comply with the requirement of Article 123(2) EPC (or 76(1) EPC) if the earlier application contains a pointer towards this combination. In other words, the concept of selection from lists must be applied with due regard to the whole content of the earlier application as filed.”
• “As explained in T 598/12 (see point 4.3.6 of the reasons), what has to be judged is whether the notional skilled person working in the field would consider something as directly and unambiguously implicitly disclosed in the light of his common general knowledge. The assessment of what information is implicitly disclosed in an application cannot go beyond the limits of what the skilled person would objectively understand to be a direct and unambiguous consequence of the explicit disclosure in the particular case. Moreover, when performing this assessment, the common general knowledge cannot serve to enlarge or replace, in a subjective or artificial manner, the actual content of the specification.”

T 3035/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t193035eu1.html

decision text omitted.