In T 469/94 a European patent application on the basis of a set of claims directed to the protection of the second medical indication of choline or a choline derivative was refused by the examining division, because it considered that the known treatment with choline of muscle diseases and hardness was equivalent to, or even a synonym for, the treatment for reducing muscle fatigue which was claimed in the application in suit. In response to a communication from the board, the appellant filed a new set of claims having the form of the protection of the second non-therapeutic use of a product.
Examining the case, the board concluded that the ability of choline to reduce the perception of fatigue had not been made available to the public. The first use of choline, in the therapeutic field, was known from two prior art documents. The board held that an independent invention could be based on the newly discovered effect, if such an effect led to a new technical application which was clearly distinguishable from the previous known application. The prior art documents did indeed describe the use of choline on groups of patients having manifest diseases: either epilepsy or muscle diseases and injuries. Likewise, in the case of the prophylactic use of choline envisaged in a prior art document for muscle rheumatism or muscle troubles arising from thyroidal diseases, the prophylaxis did not appear to mean the prevention of the disease itself, but simply the prevention of the acute phase of a chronic disease. The board observed that fatigue arising from major exercise was not of a pathological nature, and that the performance itself of major exercise appeared to be quite incompatible with the situations envisaged in the prior art documents, specifically that of muscle injuries. The non-therapeutic use of choline according to the invention was therefore independent of, and distinguishable from, the known therapeutic use, because it was directed to a distinct group of persons. The subject-matter of the claim at issue was therefore found to be novel.