T 0990/23 - When the 1600 examples pay off

Key points

• "As submitted by the respondent, the application as filed discloses more than 1600 compounds containing the same central conserved region of the claimed structure Ib-iii (point II above), for which activity as CFTR modulators has been demonstrated (see table 3 on pages 1190 to 1224 of the patent corresponding to pages 1392 to 1426 of the application as filed)."
• "This conserved region, which distinguishes the compounds of granted claim 1 from D12 (see point 7 above), is thus a structural feature associated with CFTR modulator activity. In fact, the examples of the application as filed confirm that varying the substituents while maintaining the same central moiety does not affect CFTR modulator activity."
• " At no point has the appellant [opponent] provided any evidence that the claimed compounds are inactive. Moreover, the examples provided in the patent are structurally diverse with respect to the substituents on the conserved central moiety. As illustrated by the respondent, at least 37 different ring moieties are exemplified for the group represented by ring C in formula Ib-iii, including mono-, bi- and spiro-cyclic rings, and including heteroaryl and heterocyclic rings; similarly, at least 153 different moieties are exemplified for variable R2, and at least 94 different moieties are exemplified as substituents on the R1 to R4 variables. Therefore, the board agrees with the respondent that the scope of the claims is commensurate with the examples. In the absence of any proof to the contrary, the appellant's argument that the CFTR modulating activity is not achieved across the whole claimed scope amounts to mere speculation."
•  "Therefore, the board concurs with the respondent's view that it is credible that the CFTR modulator activity is achieved across the whole claimed scope. Hence, the rationale of decision T 415/11 invoked by the appellant does not apply to the case at hand."
• Just for completeness' sake, what is examined here is the evidence that the asserted technical effect is actually achieved over the scope of the claims, see T 939/92.
• "Therefore, the objective technical problem has to be formulated as being the provision of alternative compounds useful as modulators of CFTR."
• (....)  "For these reasons, the board concludes that the subject-matter of claim 1 as granted involves an inventive step within the meaning of Article 56 EPC. Therefore, the ground for opposition under Article 100(a) EPC does not prejudice maintenance of the patent as granted."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230990eu1