T 1020/11 - By the same token Art 84

Key points

• In this examination appeal, the Board finds that Article 83 EPC is complied with, " in the absence of such verifiable facts relevant to the specific case, the board cannot find the objection of lack of sufficient disclosure persuasive." 
• "It follows that the board concludes that claims 1 to 24 of the main request meet the requirements of Article 83 EPC and by the same token, the requirements of Article 84 EPC for support in the description." 
• Therefore, the requirement of support under Article 84 EPC does not provide an way for examiner to raise sufficiency of disclosure objections not substantiated by verifiable facts. 

Reasons for the Decision

Article 83 EPC - Disclosure of the invention

Article 84 EPC - Support in the description

5. In its decision, the examining division held that claims 1 to 9 of both the main and auxiliary request related to an invention which the patent application did not disclose sufficiently clearly or completely for it to be carried out by a person skilled in the art. The reason given for this finding was the absence of information about "how and how much [of the PRRS antigen] to give so that it works". This information was "crucial because success in vaccine development is unpredictable [...] the co-administration of two or more antigens is not always successful, even when it is known that the two antigens by themselves are efficient ("interference"). The phenomenon of interference has been recognized for decades and belongs to the common general knowledge of the skilled artisan, and the technical field is riddled with suitable examples of interference". In the section "Further Remarks", this reasoning was held to apply mutatis mutandis as an objection of lack of support in the description (Article 84 EPC).

6. The established case law of the boards of appeal is that a finding of lack of sufficient disclosure should be based on serious doubts, substantiated by verifiable facts (Case Law of the Boards of Appeal of the European Patent Office, 7th edition 2013, II.C. 4.3, 6.1.4 and 8.). The facts put forward by the examining division to justify a finding of lack of sufficient disclosure are based on the potential problem of immune interference between the PCV2 ORF2 protein and the PRRS antigen. As noted by the examining division, interference does not occur in every case and it is not predictable between which antigens it will occur. There is no evidence on file that interference occurs in the present case. Thus, the objection is based on a potential problem which might occur between different antigens in combination. There are however no verifiable facts on file that demonstrate that interference is a problem in the present, specific case. In the absence of such verifiable facts relevant to the specific case, the board cannot find the objection of lack of sufficient disclosure persuasive.

7. It follows that the board concludes that claims 1 to 24 of the main request meet the requirements of Article 83 EPC and by the same token, the requirements of Article 84 EPC for support in the description.

Article 84 EPC - Clarity

8. As an obiter dictum, the examining division remarked that the phrase "for lessening the severity of clinical symptoms associated with PCV2 infection" was unclear as it covered both prevention and treatment of an existing infection.

9. The board notes that, although the objection was raised under the heading lack of clarity, the reasoning provided (see Section III.II. ) shows that the examining division did not in fact question the skilled person's ability to understand the claim.

9.1 The board is of the view that, as submitted by the appellant (see Section X.X. ), the skilled person would realise that pigs may be held together in very large units and therefore the time of PCV2 infection will not be controlled. Thus, in veterinary practice, prevention and treatment cannot be readily distinguished and are not mutually exclusive. As a consequence, the board considers that, in the context of infection of pigs with PCV2, the skilled person would consider the expression "(i) lessening the severity of clinical symptoms associated with PCV2 infection, and/or (ii) preventing PCV2 infection, in piglets" to be clear.

9.2 The clarity of claims 2 to 24 was not questioned in the decision under appeal. The board see no reason to raise such objections of its own motion.

9.3 Accordingly, claims 1 to 24 of the main request are considered to meet the requirements of Article 84 EPC for clarity.

10. In summary, the board finds that the claims of the main request meet the requirements of Article 123(2) EPC, Article 83 and Article 84 EPC.

Article 111(1) EPC - Remittal

11. In view of the appellant's request (see Section XI) and also considering that, beyond a brief negative comment as obiter dictum, the question of inventive step was not addressed in the contested decision, the board considers it appropriate to make use of its discretion under Article 111(1) EPC and remits the case to the examining division for further prosecution on the basis of the main request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.