Friday, 10 November 2017

T 2002/13 - Extension of subject matter


In this opposition appeal, the proprietor intended to limit the claim 1 as granted as follows:


A method to detect the presence or absence of an MREJ type xi methicillin-resistant Staphylococcus aureus (MRSA) strain characterised as having within the right extremity of SCCmec the sequence of SEQ ID NOs 17, 18 or 19 the SEQ ID NO 17 comprising:
generation of SCCmec right extremity junction sequence data by
contacting a sample to be analyzed for the presence or absence of said MRSA strain, said MRSA strain including a Staphylococcal cassette chromosome mec (SSCCmec) element containing a mecA gene inserted into chromosomal DNA, thereby generating a polymorphic right extremity junction (MREJ) type xi sequence that comprises sequences from both the SCCmec element right extremity and chromosomal DNA adjoining said right extremity, with a first primer and a second primer, wherein said first and second primers are at least 10 nucleotides in length, and wherein said first primer hybridizes with said SCCmec element right extremity of an MREJ type xi sequence selected from the group consisting of SEQ ID NOs: 17, 18 and 19 and complements thereof, and wherein said second primer hybridizes with a chromosomal sequence of S. aureus  and wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 or complements thereof  to specifically generate an amplicon if such MRSA strain is present in said sample; and
detecting the presence or absence of said amplicon.

At first glance these amendments limit the claim. In particular, the board acknowledges that the definition of the second primer is narrower than its definition as granted. Nevertheless, the combination of features amount to extension of the conferred protection.



Reasons for the Decision
(...)
Auxiliary request 3
Article 123(3) EPC
The feature "wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 of complements thereof"
23. In the decision under appeal (cf. page 6, first paragraph), the opposition division found that the feature "wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 of complements thereof" did not extend the scope of protection as compared to the granted claims. The board does not agree with the opposition division on this issue.
24. Claim 1 as granted defines a first primer hybridizing "with said SSCmec element right extremity of an MREJ type xi sequence selected from the group consisting of SEQ ID NOs: 17 [...] and complements thereof" and a second primer that "hybridizes with a chromosomal sequence of S. aureus to specifically generate an amplicon if such MRSA strain is present in said sample" (cf. point I supra). The sequence of both the first and second primer may be located closely or immediately adjacent to the SCCmec insertion site defining the MREJ type xi of sequence of SEQ ID NO: 17 but, whilst the first primer must necessarily hybridize with a sequence within the SCCmec element right extremity of said MREJ type xi, the second primer may hybridize with any S. aureus chromosomal sequence, not necessarily within the MREJ type xi of sequence of SEQ ID NO: 17. All possible combinations of first and second primers fulfilling these conditions form the population of primer pairs that can be used in the method according to claim 1 as granted.
25. Amended claim 1 of auxiliary request 3 defines the first and second primers by the feature that "each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17", and further requires that they "specifically generate an amplicon if such MRSA strain is present in said sample" (cf. point XII supra). Thus, even though the first primer is not explicitly required to hybridize with the SCCmec element right extremity of the MREJ type xi of sequence of SEQ ID NO: 17, a detection of the MRSA strain in the sample implicitly requires that at least one of the primers, if not both of them, must necessarily hybridize with sequences located within the polymorphic right extremity of the SCCmec because it is this specific polymorphic sequence which characterizes the MREJ type xi MRSA strain and allows its detection (cf. paragraphs [0007], [0012] and [0034], and claim 1 of the patent application).
26. The second primer in the method of claim 1 of auxiliary request 3 does not hybridize with any chromosomal sequence of S. aureus - as in claim 1 as granted, but only with the MREJ type xi sequence of SEQ ID NO: 17. Although this definition of the second primer is narrower than the definition of the second primer found in claim 1 as granted, the second primer as defined in claim 1 of auxiliary request 3 may now hybridize not only with the orfX sequence closely or immediately adjacent to the SCCmec insertion site defining the MREJ type xi sequence of SEQ ID NO: 17, but it may also hybridize with the insertion site itself, as well as with the SCCmec right extremity as far as this second primer, together with an appropriate first primer, specifically generate an amplicon if an MREJ type xi MRSA strain is present in the sample. A method using such combinations of first and second primers does not fall within the scope of granted claim 1. Since in the amended claim 1 the protection conferred by claim 1 as granted has been extended, the amendment is not allowable under Article 123(3) EPC.
27. Thus, the appellant's request to maintain the patent on the basis of claims 1 and 2 according to auxiliary request 3 fails.
(...)
This decision T 2002/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T200213.20170517. The file wrapper can be found here. Photo by Skeeze obtained via PixaBay under CC0 Creative Commons.

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