T 3048/19 - Suitable for killing P. salmonis

Key points

• Claim 1 is directed to "Propyl-methyl-phenol compound, or composition comprising a propyl-methyl-phenol compound for use in the treatment and/or prophylaxis of Salmonid rickettsial septicemia (SRS) and/or diseases caused by Piscirickettsia salmonis, and/or for the use in killing, combating or controlling Piscirickettsia salmonis."
• The Board: "Purpose limited product claims, formulated in accordance with Article 54(5) EPC, are limited by their reference to methods of Article 53(c) EPC. However, "killing, combating or controlling" is not restricted to methods for treatment of the animal (including human) body by therapy and includes disinfection of water, as also indicated in the description of the patent which states "said propyl-methyl-phenol compound is applied to a locus to be protected from said bacteria or virus" (see paragraph [0020] of the patent in suit). In this case, the killing, combating or controlling of PS/SRS or ISA/ISAv may occur outside the fish."
• "Consequently, the compounds and compositions comprising the compounds of the second alternative defined in claims 1 and 2 ("for the use in killing, combating or controlling") do not profit from the purpose limitation under Article 54(5) EPC but are to be construed as compounds and compositions merely "suitable for" the intended use"
• In D10, "Paragraphs [0043] to [0062] list a number of non-volatile or volatile bioactive compounds. Among the non-volatile compounds, phenols, including propyl-methyl-phenols such as thymol or carvacrol, are an option (see paragraph [0044])."
• "Based on the claim construction above (see point 2.1), any prior-art compound "suitable for" killing, combating or controlling PS/ISAv, i.e. inherently possessing the claimed physiological properties, will take away novelty of the claimed composition."
• "Document D10 discloses a composition comprising thymol or carvacrol (see paragraph [0044]), i.e. propyl-methyl-phenol compounds, suitable for killing, combating or controlling PS and ISAv. It is inherent that the composition has been manufactured. "
• "Thus, the second alternative "for the use in killing, combating or controlling" of claims 1, 2, 14 and 15 is anticipated by the disclosure of document D10 within the meaning of Article 54 EPC. The main request is not allowable."
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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/t193048eu1.html

2.2.3 Second alternative - "for the use in killing, combating or controlling"

Based on the claim construction above (see point 2.1), any prior-art compound "suitable for" killing, combating or controlling PS/ISAv, i.e. inherently possessing the claimed physiological properties, will take away novelty of the claimed composition.

Document D10 discloses a composition comprising thymol or carvacrol (see paragraph [0044]), i.e. propyl-methyl-phenol compounds, suitable for killing, combating or controlling PS and ISAv. It is inherent that the composition has been manufactured.

Thus, the second alternative "for the use in killing, combating or controlling" of claims 1, 2, 14 and 15 is anticipated by the disclosure of document D10 within the meaning of Article 54 EPC. The main request is not allowable.