3. Document D1 relates to the serum-free, recombinant production of human proteins in immortalised human cell lines (see page 1, lines 3 to 7). It discloses a process for the production of recombinant human factor VIII (rhFVIII), one of the proteins referred to in claim 1, in the human embryonic kidney (HEK) 293F cell line, one of the cell lines referred to in claim 1 (see Examples 1B, 4B and Figure 8 of document D1).
claim 1 is, in fact, a claim to a process of producing a product (see also decision G 2/88, OJ EPO 1990, 93, Reasons, point 2.2). It results in the production of a product, e.g. a rhFVIII protein having a certain glycosylation pattern, the process step according to the claim being the use of the HEK cells.
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6. Thus, - and this is undisputed - the process of claim 1 and the process disclosed in document D1 are the same except that the characterisation of the product produced according to the process of claim 1 as "having a human-like glycosylation pattern but the protein is devoid of N-glycolylneuraminic acid and/or the carbohydrate group Galalpha-3Gal" is not explicitly disclosed in that document.
10. As to the appellant's second argument, the Enlarged Board of Appeal (EBA) has dealt in opinion G 1/92 (OJ EPO 1993, 277) with points of law concerning the interpretation of the requirement "made available to the public" in relation to the prior use of a product (see Reasons, point 1.1). The EBA held (see Order, point 1) that the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether particular reasons can be identified for analysing the composition. This ruling has been constantly applied in the jurisprudence of the boards of appeal when the product was the result of a process of producing a product (see decisions T 210/93, Reasons, points 3.2.4.2 to 3.2.5; T 910/98, Reasons, point 2.2.2 and T 1822/12, Reasons, point 3.2.3).
opinion G 1/92 to the present situation leads to the conclusion that the teaching of document D1 made the chemical composition of rhFVIII produced by the process disclosed in document D1, including its glycosylation pattern achieved after production in HEK 293F cells, available to the public. Therefore, the feature at issue cannot establish the novelty of the subject-matter of claim 1 vis-à-vis document D1.
This view is in line with established jurisprudence of the boards of appeal holding that a claim directed to the use of a known process for a particular purpose, the purpose being the preparation of a product naturally resulting from such process, is in fact nothing but a claim to that very same process (see Case Law of the Boards of Appeal, 8th edition 2016, section I.C.8.1.3 d) and the decisions cited therein: T 210/93, Reasons, points 3.2.2 to 3.2.5; T 684/02, Reasons, point 5.5; T 2215/08, Reasons, point 2.4.1 and
16. They differ from the set of claims of the sole request underlying the decision under appeal in that the claims were amended and are now directed, inter alia, to rhFVIII and rhFIX proteins defined in terms of their production process, i.e. by product-by-process features.
20. Rather, the appellant submitted in the statement of grounds of appeal that since the wording of the set of claims examined by the examining division had not been found allowable, it seemed that "a reset of the subject-matter for which protection is thought [sic] is appropriate". It appears to the board that by re-introducing product-by-process claims, that were present in the claims of the application as filed (see claim 12) but deleted in the claim request filed with entry into the regional phase before the EPO, the claimed subject-matter has indeed been "reset". 2ff7e9595c
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