Résumé de EPC2000 Art 056 pour la décision T0335/20 du 29.09.2022

See also abstract under Article 88(3) EPC. In T 335/20 the board found that D9 provided an enabling disclosure of the suitability of PGRN replacement for the treatment of FTD (see also T 609/02). Since document D9 dealt with the same disease as claim 1, identified low levels of PGRN as the cause of the disease and provided an enabling disclosure of the suitability of PGRN replacement for the treatment of FTD, it was considered to be a suitable starting point for the assessment of inventive step in claim 1. It was undisputed that D9 did not provide any information on the specific therapeutics to be used for the replacement of PGRN or any technical teaching for reducing the therapeutic application to practice. The opposition division had held that this lack of information as to how to reduce the therapeutic application to practice meant that the "therapeutic use" was not directly and unambiguously derivable from the disclosure of D9, with the result that this document did not disclose "in an enabling manner, a method of treating FTD", and therefore was not directed to the same, or to a similar, purpose as claim 1. The respondents furthermore submitted that, since D9 was not an enabling disclosure of a therapeutic application, it was not a disclosure of such an application at all, and that the closest prior art could not be a teaching in a document that could not be reduced to practice by the skilled person on the basis of that document. The board considered that D9 provided an enabling disclosure of what it proposed, i.e. PGRN replacement therapy as a therapeutic strategy to treat FTD. It was not necessary for D9 to provide an enabling disclosure of what was claimed. When applying the problem-and-solution approach in the assessment of inventive step, information that was not disclosed in the prior art is considered in determining the distinguishing features, the resulting technical effect, and the formulation of the objective technical problem to be solved. To what extent the claimed subject-matter differed from the disclosure in D9 was thus relevant when determining the distinguishing features. The teaching towards the distinguishing features may then come from another prior-art document or from the common general knowledge of the skilled person. D9's lack of disclosure as regards implementation of the proposed PGRN replacement therapy did not therefore disqualify it from being the starting point for the assessment of inventive step.