Tuesday, 10 June 2014

T 1141/10 - Sufficient Identity





In this opposition appeal an insufficiency objection (Art. 83 EPC) was raised. Claim 9 requires a collagen like material prepared by genetic engineering having "an amino acid sequence equivalent to that occurring in nature for collagen, wherein equivalent implies amino acid identity of at least 80%".

The board takes care to distinguish sufficiency from a clarity (Art. 84 EPC).

Reasons for the Decision


(...)
Article 100(b) EPC; Article 83 EPC

5. Although Article 100(b) EPC was an original ground of opposition, there is no decision of the opposition division on this article in the decision under appeal.

5.1 In a first decision dated 12 January 2007, the opposition division decided that the main and sole request fulfilled the requirements of Article 83 EPC. In the First Appeal, the respondent/opponent submitted arguments to contest the decision of the opposition division on Article 83 EPC. There was, however, no reasoned decision of the board on this issue in the decision T 98/07 of the First Appeal.

5.2 After the board's remittal of the case for further prosecution, both the opposition division and the patentee considered that the board had decided on Article 100(b) EPC/Article 83 EPC and that it was not an issue in the further prosecution of the case. This was contested by the opponent in opposition proceedings and in the present appeal proceedings.

5.3 In the light thereof, the board considers the ground of opposition based on Article 100(b) EPC/Article 83 EPC to be part of the present appeal proceedings and the parties' arguments on this ground are to be examined by the board.

6. The respondent's objections under this article arise essentially through the presence of ambiguity in the claims, in particular concerning the features "amino acid identity of at least 80%" (claim 9) and "being free of helix structure" (claims 1 and 9) (cf. point XIX supra).

6.1 According to the case law of the Boards of Appeal, care has to be taken that an insufficiency objection is not in fact an objection under Article 84 EPC. A distinction has to be made between the clarity of what has been disclosed and the clarity of what is claimed. For Article 83 EPC, it is necessary to show that the feature is so ill-defined that the skilled person is not able, on the basis of the disclosure as a whole and using its common general knowledge to identify (without undue burden) the technical measures or suitable parameters necessary to solve the problem underlying the patent (cf. inter alia, T 593/09 of 20 December 2011, Catchword and point 4.1.4 of the Reasons, T 608/07 of 27 April 2009, point 2.5.2 of the Reasons).

7. As for the objected first feature, the following points are of relevance:

7.1 The objection against the first feature was raised with the respondent's letter of 23 November 2009 (page 18) for the first time in the proceedings. Although a similar feature was present in product claim 50 as granted, it was always discussed in the context of Article 84 EPC and its relevance for a broad interpretation of the claim under Article 54 EPC. In these submissions, reference was made to prior art disclosing several methods for determining the level of sequence identity and to sequence alignments with known sequences occurring in nature for collagen. No problems were encountered to argue against the novelty of the claimed subject-matter in these earlier stages of the proceedings. These arguments are also submitted by the respondent under Article 100(a) EPC/Article 54 EPC in the present appeal proceedings (infra).

7.2 There is obviously no information on new (non-disclosed) sequences of collagen occurring in nature and thus, the respondent's argument is based on mere assumptions, namely the existence of new collagen sequences that might be significantly different from the known collagen sequences.

8. As for the objected second feature, the following points are of relevance:

8.1 The method cited in the patent and disclosed in document D25 allows a skilled person to identify and measure the presence of (collagen, gelatin) helix structures. Although the selection of several parameters influences the presence of these structures, these parameters are identified in document D25 (temperature, pH, ionic strength, concentration, etc.) and conditions disclosed for which the presence of these structures is most probable.

9. In view thereof, the board considers the Main Request to fulfil the requirements of Article 83 EPC.

(...) 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T114110.20140311. The whole decision can be found here. The file wrapper can be found here. Photo by Maria Teresa Ambrosi obtained via Flickr.


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