Patent decision

BL number

O/0506/25

Hearing Officer

Dr R Dinham

Decision date

4 June 2025

Person(s) or Company(s) involved

BENE AKROMAA AFOLABI

Provisions discussed

Patents Act 1977 sections 1(1)(a), 14(5)(b) and 76(2)

Keywords

Added subject matter, Novelty

Related Decisions

None

Summary

The application relates to a mixture of deoxycholic acid and inulin. The deoxycholic acid and inulin form a complex when mixed, and is demonstrated to inhibit the proliferation of colon cancer cells and promote programmed cell death.

The examiner maintained objections to novelty, added matter and clarity, deferring consideration of sufficiency and support. Novelty centred around a single document and was based on the fact that any mixture of inulin and deoxycholic acid would inherently result in the formation of a complex.

During preparation for the hearing, the hearing officer discovered an additional disclosure of a conference abstract from the applicant, that disclosed a mixture of deoxycholic acid and inulin. The applicant was given the opportunity to consider this ahead of the hearing and then was able to address this abstract at the hearing, confirming that the method and the mixture in the conference abstract was the same as that of the present application, and that the deoxycholic acid and inulin therein would form a complex. At the hearing the applicant stressed that the complex formation was not known at the time the abstract was published.

Whilst acknowledging that the formation of a complex was a new scientific detail, the hearing officer found that this cannot confer novelty on a claim to the complex per se, as it would have inherently been produced when following the instruction of the conference abstract. The hearing officer also found that the claims also lacked novelty over the document cited by the examiner, as the mixture therein would also have inherently resulted in the same complex.

In addition, the hearing officer found that passages in the description that sought to demonstrate advantages of the invention resulted in added subject matter.

In light of the lack of novelty and the unallowable added subject matter, the hearing officer did not consider it necessary to fully consider the outstanding issues of clarity, or to consider sufficiency or support. The application was refused.

Full decision O/0506/25 232Kb