T 0928/23 - Can a claim be novel over itself?

Key points

• D3: EP14306121.6 (EP 2 965 760 A1) is a prior right under Art. 54(3) having as claim 1: composition comprising : - an effective amount of a first antiretroviral agent, said first antiretroviral agent being tenofovir, or a salt or a solvate or a prodrug thereof, and an effective amount of at least a second antiretroviral agent, said second antiretroviral agent been chosen among the group consisting of: lamivudine, rilpivirine, efavirenz, raltegravir, or a combination thereof, or a salt or a solvate or a prodrug of the above, for its use for the prevention or the treatment of chronic inflammatory diseases." Claim 2: wherein the said auto-inflammatory diseases is chosen among the group consisting of: psoriasis, sclerodermia, schizophrenia, autism, Alzheimer's disease,
• Claim 1 under examination:  "1. Reverse transcriptase inhibitor for use in the prevention or treatment of a degenerative disease selected from Parkinson's disease and Alzheimer's disease, said reverse transcriptase inhibitor being selected from: - nucleoside inhibitors, - Efavirenz (EFV), 
  - Nevirapine (NVP), - Delavirdine (DLV), - Etravirine, and - Rilvipirine."
• The Board disagrees with the OD  and considers that claim 1 under examination does not exclude combination therapy.
• The Board, in translation: "The Board considers, however, that the subject-matter of claim 1 is novel vis-à-vis D3, because the treatment of Parkinson's disease or Alzheimer's disease by the combinations of active agents given in D3 is not directly and unequivocally disclosed in that document and that document reveals that only certain retroviral agents or their combinations are actually active."
• "This document thus provides no evidence of the potential activity of an isolated compound as claimed, in the treatment of inflammatory diseases, even less for the treatment of Parkinson's or Alzheimer's diseases."
• "It cannot be concluded that the teaching of D3 demonstrates that one of the claimed reverse transcriptase inhibitors would make it possible to treat Parkinson's or Alzheimer's diseases."
  
• "The subject-matter of claim 1 is novel over D3 and the main request meets the requirements of Article 54 EPC."
• Which shows that a claim can be novel over itself, it seems to me. And shows that the claim under examination benefits from the magic 'it works' implied feature (G2/88 r.9 - link to para), whereas the same claim, when in the published patent application, does not. 
• The Board also considers the claimed subject-matter to be inventive (over other prior art). 

• EPO

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

https://www.epo.org/fr/boards-of-appeal/decisions/t230928fu1