T 2785/17 - Sufficiency of a compound claim

Key points

• Claim 1 is directed to a class of chemical compounds, purely defined in terms of the chemical formula ("A compound of formula (II) ...". 
• The Board, notes, under inventive step, that "[t]he patent states that the compounds of claim 1 of the main request are useful as proteasome inhibitors (paragraph [0002] of the patent). Proteasomes are protein complexes which degrade intracellular proteins by proteolysis, a chemical reaction that breaks peptide bonds (paragraph [0004] of the patent)."
• Turning to sufficiency, "[t]he appellant [opponent] objected to sufficiency of disclosure of the compounds of claim 1 of the main request. It argued that the subject-matter of the claim was not disclosed in a sufficiently clear and complete manner to be carried out by a person skilled in the art across the whole scope of the claim. The appellant essentially submitted that there was no limitation on the number or type of substituents allowed in claim 1 of the main request and that the compounds encompassed by the claim would not necessarily have any physical or chemical properties in common, i.e. the properties to be used as boronic ester prodrugs to treat cancer. "
• "The board does not agree. As submitted by the respondent, the technical effect relating to the pharmaceutical activity is not incorporated in the claims of the main request, and thus whether the claimed compounds achieve this effect should not be examined under Article 83 EPC but rather Article 56 EPC."
• As a comment, see G 2/03 r.2.5.2:  " If an effect is expressed in a claim, there is lack of sufficient disclosure [if there is a lack of reproducibility of the claimed invention]. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92 []). "
• "Consequently, the board concludes that the invention underlying the subject-matter of claim 1 of the main request is sufficiently disclosed within the meaning of Article 83 EPC."
• The Board also concludes that claim 1 involves an inventive step. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/j210007eu1.html

Sufficiency of disclosure

15. The appellant objected to sufficiency of disclosure of the compounds of claim 1 of the main request. It argued that the subject-matter of the claim was not disclosed in a sufficiently clear and complete manner to be carried out by a person skilled in the art across the whole scope of the claim. The appellant essentially submitted that there was no limitation on the number or type of substituents allowed in claim 1 of the main request and that the compounds encompassed by the claim would not necessarily have any physical or chemical properties in common, i.e. the properties to be used as boronic ester prodrugs to treat cancer. The respondent had not satisfied its burden of providing evidence of how to identify the working embodiments covered by claim 1 of the main request.

15.1 The board does not agree. As submitted by the respondent, the technical effect relating to the pharmaceutical activity is not incorporated in the claims of the main request, and thus whether the claimed compounds achieve this effect should not be examined under Article 83 EPC but rather Article 56 EPC. This conclusion was given in the communication pursuant to Article 15(1) RPBA 2020. The appellant did not dispute this conclusion.

15.2 Consequently, the board concludes that the invention underlying the subject-matter of claim 1 of the main request is sufficiently disclosed within the meaning of Article 83 EPC.

16. None of the appellant's objections against the claims of the main request is convincing.

17. In view of the above, the board concludes that the main request is allowable.