EP 2 850 175 B1 relates to a cell culture and cell recovery device for static cell culture.
Brief outline of the case
The patent was maintained according to AR6 and the opponent appealed.
The board held that claim 1 as maintained was not in compliance with Art 123(3). As the same applied to AR1, the patent was revoked.
The case is interesting in view of the extension of scope of protection.
Change in wording in the claims
Claim 1 as granted comprised the feature “when the device is oriented in the static culture position the growth surface (1006) is in a horizontal position, the distance from said growth surface to said cell removal opening (1008) is less than half the distance from said growth surface (1006) to said upper confine (1012)”.
This feature was amended in claim 1 as maintained to read “when the device is oriented in the static culture position the growth surface (1006) is in a horizontal position, the distance from said growth surface (!006) to said medium removal opening (1002) is at least 0.2cm and less than half the distance from said growth surface (1006) to said upper confine (1012)”.
The proprietor’s point of view
The proprietor asserted that the limitation was inherent as the claim defined that the cell removal opening was “located along the lower edge of the device” and acted “to drain media and cells from low point in the device”. In view of these features in combination with the fact that the cell removal conduit was defined as being “in contact with the growth surface”, the only possible position for the lower edge of the device and hence the cell removal opening was at the growth surface as exemplified in Figure 22 of the patent.
The opponent’s point of view
The opponent argued that the lower edge and the low point as defined in the claim as maintained can also be located at the upper confine if the device is tilted accordingly.
In its SGA, the opponent proposed some embodiments in which the cell removal opening is located more than half way of the distance from the growth surface to the upper confine or is located at the upper confine in a cell removal conduit extending from the growth surface towards the upper confine, are within the ambit of claim 1 as maintained.
The board’s decision
As the expression “cell removal opening” has been replaced by “medium removal opening“, claim 1 as maintained does not any longer require that the distance from said growth surface (1006) to said cell removal opening (1008) is less than half the distance from said growth surface (1006) to said upper confine (1012).
In view of this, the scope of protection of claim 1 as maintained was extended compared to that of claim 1 as granted.
The board did not agree with the proprietor because the claim does not define the “lower edge” in relation to any other part of the device. It defines a growth surface and an opposing “upper” confine of the cell culture compartment, but there is no relation between this upper confine and the “lower edge” or the “low point” of the device to which the claim later refers.
In fact, the claim defines the lower edge and low point of the device only under the condition “when the device is oriented in a cell recovery position in which the growth surface is not horizontal” and therefore defines them only in relation to a tilted device in which the growth surface is not horizontal.
It is therefore not clear from the wording of the claim which part of the device should be the “lower edge” in relation to the growth surface or the upper confine.
The board noted that the patent specifically contemplates embodiments in which the cell removal opening is not at a “lower edge” of the device as exemplified in Figure 22, i.e. at an edge formed by the growth surface and a side wall. This is evident from paragraph [0120] of the patent, in which it is stated that skilled artisans should recognize that the conduits need not be as shown [in Figure 22], but can be any configuration”.
For the board, it is established case law that the requirements of Art 123(2+3) are assessed according to the standard of “beyond reasonable doubt”, e.g. T 307/05, Reasons 3.3.1. This means that if there are doubts that the scope of extension is extended in an amended claim compared to the claims as granted, the requirements of Art 123(3) are not met.
Comments
One wonder why the proprietor changed from “cell removal opening” to “medium removal opening” when filing AR6.
Had reference signs been added in the claim as granted and in claim 1 of AR6, the mistake would have been immediately apparent.
It is also surprising that the OD did not spot the difference in wording and considered that claim 1 of AR6 was in conformity with Art 123(3).
The decision is also interesting in that it reminds that, next to the gold standard on added matter, the criterion “beyond any reasonable doubt” applies to added matter as well as to extension of scope.
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