T 2593/11 - Stent with clamp

Key points

• The Board "would emphasise that the requirements of Article 123(2) EPC differ from those of Article 83 EPC. Article 123(2) EPC aims more particularly to prevent inventors from obtaining protection for inventions they had not thought of at the date of filing, respectively not put into their application as filed. Article 83 EPC aims more particularly to prevent them from obtaining protection for "theoretical" inventions which could not be carried out at the date of filing. While in some specific instances there might be a link between the two, in the present case, as explained above, the manufacturing of the medical device from a planar braided metal fabric is clearly disclosed." 
• Filing date 1 september 1998, first text intended for grant 4 May 2007, further text intended for grant 7 May 2010, decision to refuse 4 August 2011. Let's see if the application can be granted within the 20 year patent term.

EPO T 2593/11 - link

Reasons for the Decision

3. Added subject-matter

3.3 However, this does not mean that devices made from a planar braided metal fabric were not disclosed. Indeed, the more general part of the description (page 6, line 14 to page 13, line 23) mentions several times that tubular or planar braided metal fabrics can be used, without indicating any specific advantage of the one option over the other (page 6, line 17; page 6, line 19; page 7, line 13; page 8, line 9; page 8, line 12; page 10, line 4; page 11, line 17).

More specifically, for instance, the second paragraph of page 8 describes how the device is manufactured (the issue queried by the Examining Division):

"When forming a medical device in accordance with the present invention, an appropriately sized piece of tubular or planar metal braided metal fabric is inserted into a mold, whereby the fabric deforms to generally conform to the shape of the cavities within the mold. The shape of the cavities are such that the metal braided metal fabric deforms into substantially the shape of the desired medical device. The ends of the wire strands of the tubular or planar metal fabric should be secured to prevent the metal fabric from unraveling. A clamp or welding, as further described below, may be used to secure the ends of the wire strands" (emphasis added).

Therefore, from this general part, the person skilled in the art learns that it makes no fundamental difference whether manufacturing starts from a tubular or planar braided metal fabric; both options are equally suitable or compatible with the devices to be manufactured.

Mechanically it is self-evident that if a planar - as opposed to a tubular - braided metal fabric is used to manufacture the embodiments shown in the figures, only one side of the device has to be provided with a means for securing the wire strands, because on the other side the strands would have no free ends. In other words, for the person skilled in the art, disclosing that the manufacturing process can start from a planar braided metal fabric amounts to disclosing that only one side of the device is provided with means for securing the strands.

In the opinion of the Board, this is enough to comply with Article 123(2) EPC.

The Examining Division took the view that if a planar braided metal fabric were used, the proximal part of the device would be more rigid because there would be more braids, and that consequently, because of this increased rigidity, it was not self-evident that devices according to claim 1 could actually be manufactured using such a fabric. It argued that for the person skilled in the art this amounted to non-disclosure of such devices made from a planar braided metal fabric.

The Board does not agree. It would emphasise that the requirements of Article 123(2) EPC differ from those of Article 83 EPC. Article 123(2) EPC aims more particularly to prevent inventors from obtaining protection for inventions they had not thought of at the date of filing, respectively not put into their application as filed. Article 83 EPC aims more particularly to prevent them from obtaining protection for "theoretical" inventions which could not be carried out at the date of filing. While in some specific instances there might be a link between the two, in the present case, as explained above, the manufacturing of the medical device from a planar braided metal fabric is clearly disclosed.

3.5 Therefore, claim 1 of the main request complies with Article 123(2) EPC.

To avoid further discussion and delay, the Board would add that it considers the requirements of Article 83 EPC to be fulfilled as well. Manufacture from a planar braided metal fabric requires forming a kind of pocket first before using the mould, but that is the only difference compared to manufacture from a tubular braided metal fabric. The braids have to be shaped in the mould in the same way in either case. The process may have to be adapted to the higher density of braids on one side of the device, but that is part of the normal adaptation of the process. If making the device from a tubular braided metal fabric, the person skilled in the art also has to choose the right material, thickness, physical properties, etc. of the braids in order to arrive at the desired result. Things are no fundamentally different if he uses a planar braided metal fabric. The presence of some technical difficulties which can be overcome by simple testing is not detrimental to compliance with Article 83 EPC. It must be possible to carry out the invention without undue burden, and that is the case here.

5. The remaining requirements of the EPC have not yet been dealt with by the department of first instance. Accordingly the Board finds it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the department of the first instance for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.