Key points
- Claim 1 of the patent is directed to: "1. Use of N-n-butylpyrrolidone as a non-reprotoxic solvent."
- The prior art discloses the use of N-n-butylpyrrolidone (NBP) as a solvent but does not mention non-reprotoxicity.
- "The board notes that D1 (page 1, lines 1-7) discloses compositions intended for topic application, with the solvent used (for example NBP) facilitating the absorption by the skin of ingredients having cosmetic or medical properties. In the board's view, such solvated compositions were implicitly held non-toxic at the filing date of D1, since they were supposed to be absorbed by the skin."
- "Since NBP was moreover not classified as being reprotoxic at the publication date of D1, the skilled reader would at this date have understood from D1 that the solvent used was also inherently non-reprotoxic and could be commercialised without any warning label and freely used by any possible group of users. "
- "The present case thus differs from a new therapeutic application wherein an unknown therapeutic effect can be discovered by clinical trials. This conclusion in line with established case law, for example T 1523/07, reasons 2.4, according to which "implicit disclosure means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content".
- "differently from the uses considered in decisions G 2/88 and G 6/88 that clearly concerned a technical effect (namely friction reduction and fungi control, respectively) different from those already known for the substance in question, and wherein the known chemical substance was purposively applied to achieve the new technical effect, the use of NBP as a non-reprotoxic solvent, even if considered to be a purposive application, underlies that already disclosed in D1."
- "This conclusion is supported by case law, for example that in T 892/94 (OJ 2000, 1, notes II) which concluded that "... a newly discovered technical effect does not confer novelty on a claim directed to the use of a known substance for a known non-medical purpose if the newly discovered technical effect already underlies the known use of the known substance."
- "the board concludes that the label of the use of NBP as "non-reprotoxic" solvent is merely an explanation of the non-toxicity already inherently known from D1 by means of its use for absorption by human skin, which use cannot distinguish the claimed use from the known one."
- The patent is revoked.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2023/11/t-063821-non-novel-second-non-medical.html
