EP 3 121 274 B1 relates to a method for predicting responsiveness to the treatment of cancer with a compound inhibiting p300.
Brief outline of the case
The patent was revoked for lack of sufficiency for the patent as granted as well as for AR1-7. AR8 was not admitted by the OD.
In appeal the MR consisted of AR4 filed in opposition.
The board held that the invention in the MR was sufficiently disclosed.
The case was remitted to the OD for further prosecution.
In the present entry we will deal with the lack of sufficiency.
In a separate blog, remital and obiter dictum are dealt with.
Interpretation of “responsive” by the OD
The term “responsive” in claim 1 was interpreted by the OD to mean “high response rate to the treatment, cf. § 0048, which is underpinned by concept of synthetic lethality, cf. § 0007-0011 and 0014″.
Interpretation of “responsive” by the board
The board disagreed with the OD’s interpretation of claim 1.
For the board, there is no general requirement for claims to be interpreted with the help of the description. The skilled person has only to ascertain whether the expressions used are to be understood in their ordinary literal sense or whether they have a special meaning defined exclusively in the description.
Only if the claims are obscure will the skilled person seek to clarify them using other claims and/or the description and drawings in order to establish their correct interpretation.
The board considered that in claim 1 the term “responsive” in the phrase “responsive to the treatment of cancer” is clear and well-understood. The skilled person would understand this expression to mean that the growth of cancer cells is inhibited to some degree.
There is no indication in claim 1 that the treatment involves the presence of synthetic lethality or that it means that the treatment’s response is stronger. This interpretation is moreover supported by the description, since paragraph [0048] of the patent application specifies that “responsiveness to the treatment of cancer” is an index for deciding whether or not the compound inhibiting p300 can exert therapeutic effects on cancer and that the determination of the responsiveness may include also the evaluation of the degree of the responsiveness.
There is no indication that the responsiveness has to occur via synthetic lethality in this paragraph. The concept of synthetic lethality is mentioned in paragraphs [0007] to [0011] and [0014]) of the application, where it is explained that the effect of the – paralogous – relationship between CBP and p300 in cancer cells is essential to the present invention, but, contrary to the conclusions of the OD, this has no bearing on the claim’s interpretation, which is not restricted to any particular mechanism.
Thus, even when the claim is interpreted in context and considering the information provided in the description, the meaning of the term “responsive” remains consistent.
Consequently, if the wording of the claim is silent about a selected functional limitation feature mentioned only in the description, there is no reason why this limitation should be read into claim 1.
Hence, the board sees no valid reason to interpret the claims, in particular claim 1, as limited to cancer treatment relying on synthetic lethality.
The board considered that, since the technical effect of predicting responsiveness to the treatment of cancer is recited in the claim, it must be taken into account under sufficiency of disclosure rather than under inventive step, see G 01/03, OJ 2004, 413, Reasons 2.5.2. This technical effect is not, though, restricted to treatment of cancer underpinned by synthetic lethality.
Comments
It is interesting to note that the board reminded that, in general, if the claim is clear in itself, there is no need to resort to description when a feature in a claim is understood in its ordinary literal meaning.
A limitation found in the description is not to be read into the claim.
A special meaning should as well not be hidden in the description.
Let’s hope that G 1/24 will confirm this views.
When the board observes that the concept of synthetic lethality mentioned in the description is essential to the present invention, it could at best be inferred that claim 1 lacks an essential feature and not that the invention is insufficiently disclosed. The objection is thus rather an objection under Art 84 and not under Art 83.
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