T 0411/19 - (II) Commercially available so anticipating?

Key points

• " [Patentee] had several lines of argument as to why document D2 did not disclose subject matter anticipating that of claim 1. They were ... ii) that the skilled person needed to refer to other documents to identify the sequence of DX-88,"
• The patentee argued that:  " the term "DX-88" was just an internal designation, whereas the actual compound designated by it was unknown. The skilled person needed to refer to other documents to identify what was meant by the term "DX-88". According to the decision under appeal, it could be determined from document D13 that DX-88 was a peptide with a sequence identical to SEQ ID NO:23 of the patent. This approach failed because document D13 was not even cited in the list of documents mentioned in document D2. If the person skilled in the art searched for the sequence of DX-88 in the references actually cited in document D2, they would not have been able to find any conclusive, clear and direct disclosure. It was not permissible under the case law of the boards of appeal, in the assessment of novelty, to combine the disclosure in two separate documents, such as document D2 and document D13."
• The Board: " The second line of argument, that the skilled person would not know that DX-88 represented a peptide having SEQ ID NO: 23, is not convincing. This is because it is evident from the cited passage on page 16 of document D2 that the compound was commercially available from Dyax, Cambridge, MA, under the name DX-88. The skilled person need not to be aware of the structure of the compound referred to as this is an inherent feature of the named molecule. That DX-88 is a peptide identical to SEQ ID NO: 23 of the patent under appeal has been demonstrated, inter alia in patent document D13 with a filing date 7 February 2003 (column 12, lines 19-20, column 62, Table 2). There is no reason to assume that the structure of DX-88 was changed between this date and the filing date of the patent and such change is not probable. "
• As a comment, G 1/92 held that "The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition."
• Possibly, implicitly, the requirements of G 1/92 are always met for peptides as a product.
• The Board deems it permissible for the examination of novelty to combine document D2 with the actual product DX-88 as prior art in the sense of G 1/92, it seems.
• Still, the sentence in italics above seems not entirely in line with G 1/92.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t190411eu1.html