Résumé de Article 083 EPC pour la décision T2037/22 du 01.10.2024

In T 2037/22 (PBAT resin composition), the appellant (opponent) alleged that evidence D4 and D5 should not be taken into account, since it would be derivable from decision G 2/21 that a lack of sufficiency could not be remedied by post-published evidence. However, the board observed that the analysis in G 2/21 of the jurisprudence regarding sufficiency of disclosure was made in relation to second medical use claims in which the technical effect was usually a therapeutic effect. In such a case, because the subject-matter of second medical use claims is commonly limited to a known therapeutic agent for use in a new therapeutic application, the board explained it was necessary that the patent at the date of its filing rendered it credible that the known therapeutic agent, i.e. the product, was suitable for the claimed therapeutic application (G 2/21, point 74 of the Reasons). Accordingly, the appellant's argument relying on G 2/21 was based on a generalisation of an analysis made by the Enlarged Board exclusively concerning the case law relative to claimed therapeutic effects. The EBA, however, did not make such a generalisation. There was in particular no indication that the EBA in G 2/21 was of the view that in order to meet the sufficiency requirement, proof of a claimed technical effect which was not a therapeutic effect, had to be provided in the application as filed, let alone in general for a parametric or functional definition meant to provide a limitation of the subject-matter defined otherwise in terms of structural features. Independently of the point in time for proof of claimed technical effect to be provided, the EBA in G 2/21 did not question the established requirements for acknowledging sufficiency. The board further stated that contrary to the appellant's position, the skilled person did not need to make assumptions as to the amount of iron compounds to be used in order to prepare the claimed composition. Also, concerning the alleged incomplete information provided in respect of the PBAT resin, it was undisputed that the preparation of such PBAT resins was well known in the art, and that typically a metal based catalyst was used. Accordingly, the absence of an indication of which specific catalyst or stabiliser was used for the synthesis of the PBAT resin did not mean that the skilled person would not be in the position to prepare such resins. In any event, the appellant did not explain as to why the catalyst or the stabiliser would be relevant in order to meet the parametric conditions defined in operative claim 1, let alone provided any evidence. Embodiments empirically showed that the decisive factor in order to meet the parametric requirement (variation of b-value) of operative claim 1 was the content of the iron element and not the catalyst (which was not described as having been varied for the embodiments). Also unconvincing was the objection that all embodiments falling within the structural definition of operative claim 1 would not necessarily fulfil the functional requirement of a variation of b-value of less than 2. The question was not whether any conceivable possible combination of features falling within the structural definition of operative claim 1, in particular those not based on the teaching of the specification, would meet the functional definition of that claim, but whether the specification taken as a whole would provide the skilled person with sufficient guidance to generally identify within the structural definition of operative claim 1 and over its full scope those compositions which met the parametric definition. The non-availability of some particular variants of a functionally defined component feature of the invention is immaterial to sufficiency as long as there are suitable variants known (G 1/03). Then, the mere existence of some compositions meeting the structural definition, but not fulfilling its functional definition was not enough to conclude there was a lack of sufficiency of disclosure. The decision also dealt with the issue of burden of proof in relation to an unusual parameter and concluded that no reversal applied.