T 0738/23 - What is used in a second medical use claim

Key points

• Claim 1 recites "A [medium chain fatty acid, MCFA ] for use in treating and/or preventing anxiety wherein the MCFA is decanoic acid or octanoic acid and wherein the MCFA is in the form of a medium chain triglyceride (MCT)."
• Claim 3 recites: "A composition comprising a MCFA as defined in any one of claims 1 to 2 for use in treating and/or preventing anxiety."
  
  
• Is claim 3 a dependent claim?
• Claim 1 is novel and inventive. Claim 3 is not novel. 
  
  
• "D3b does not identify which ingredient in go ghrita might be responsible for the anti-anxiety effect and is therefore not relevant [for the examination of inventive step of claim 1] for this reason."
• "Whereas claim 1 relates specifically to decanoic or octanoic acid in the form of MCT for the treatment of anxiety, claim 3 more broadly encompasses any composition comprising the same compounds as in claim 1, potentially along with additional substances, for the same therapeutic application."
•  D21 discloses a study investigating the impact of a diet containing goat milk fat (GMF) on inter alia the anxiety behaviour in rats (see Abstract);" [ follows a discussion of the results presented in D21]
•  D21 discloses the use of a composition comprising inter alia octanoic acid and decanoic acid in the form of triglycerides for the prevention or treatment of anxiety."" 
•  Although D21 does not attribute the anxiolytic effect of the GMF to the octanoic and decanoic acids in the form of MCT, a composition comprising octanoic and decanoic acids in the form of MCT for use in the prevention or treatment of anxiety cannot be regarded as novel because D21 discloses the occurrence of this effect in a composition comprising the same triglycerides."
• "Consequently, the subject-matter of claim 3 is not novel over the disclosure of D21, and the main request does not meet the requirements of Article 54 EPC."
• The interpretation of claim 1 seems to be based on  T 0286/09. The analysis of claim 3 is the same as in T 0378/13.
  
  
  
  
  

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t230738eu1