Tuesday, 15 July 2014

T 2184/10 - On second thought, not so clear

This appeal reversed the opposition division's decision on clarity after the opponent introduced evidence to show lack of clarity.

Claim 1 of the main request concerned a method for conveying resistance to beet necrotic yellow vein virus (BNYVV) to a sugar beet plant. The claim requires that "said resistance is a durable resistance and in which the virus does not replicate"

The durable resistance feature was first introduced in an auxiliary request filed during the oral proceedings of the opposition. One might have some reservation about what durable means exactly, but the opposition division had no problems with clarity. In the grounds for the decision the opposition division had this to say about the clarity of this term:

(...) a reference to the durable resistance must be understood as a reference to the properties of the plants obtained by said method. Any other interpretation would be technically meaningless. The Opposition Division also concluded that the term "durable resistance" was clear to the skilled person, i. e. it referred to resistance during essentially the whole life of a plant.

 And I guess that is not unreasonable. Each field has its own terms, and I guess durable resistance can be distinguished in practice from other types of resistance. In fact the opposition division found the Claim not inventive because, inter alia, it is "common practice for the skilled person to look for the best, i. e. complete and durable, resistance and to screen for the complete absence of virus replication."

In appeal, the opponent introduced a new document, which gives a nuanced view of durable resistance, which seems to have swayed the board.

Reasons for the Decision
Main Request
Article 84 EPC; admissibility of document D19

5. In comparison to claim 1 as granted, the Main Request requires the DNA fragment used in step (a) of claim 1 to be "of at least 35 nucleotides" (instead of 15 nucleotides) and the conveyed BNYVV resistance to be "a durable resistance and in which the virus does not replicate" (cf. point VIII supra). The term "durable resistance" was objected under Article 84 EPC for lack of clarity in the opposition proceedings and the opposition division decided that the term fulfilled the requirements of this article (cf. page 12, point 4.1.1 of the decision under appeal).

6. In reply to the appellant's Grounds of Appeal, the respondent maintained the objection of lack of clarity for the term "durable resistance" and filed document D19 to support its arguments (cf. point III supra). Document D19 is a general review which is, as its title indicates: "A critical analysis of durable resistance", clearly concerned with the objected term. Since the feature in claim 1 comprising the objected term was introduced for the first time with the filing of an auxiliary request at the oral proceedings before the opposition division, the board agrees with the respondent that there was no opportunity to file document D19 at an earlier stage of the proceedings (cf. point XIV supra).

7. Thus, the board, in exercise of its discretion, decides to admit document D19 into the appeal proceedings (Article 12(4) RPBA).

8. As for the objection under Article 84 EPC for lack of clarity of the term "durable resistance", the board notes the following:

8.1 As argued by the respondent (cf. point XIV supra), there is no definition for this term in the patent. In fact, several terms are used in the patent, such as "total resistance" and "absolute resistance" (cf. page 2, paragraph [0011], line 56, page 4, paragraph [0028], lines 44, 49 and 50, page 7, paragraph [0048], line 3 of the patent). However, the patent does not define the precise meaning of each of these terms. In the decision under appeal, the opposition division considered the term "durable resistance" to be clear to a skilled person and it further defined this term as meaning a "resistance during essentially the whole life of a plant" without specifying any other limitation and/or requirement (cf. page 12, point 4.1.1 of the decision under appeal).

8.2 This definition closely resembles the definition of this term given in document D19, namely "a resistance that remains effective during its prolonged and widespread use in an environment favorable to the disease" (cf. page 309, first paragraph of document D19). However, document D19 refers to several elements for measuring and/or testing a "durable resistance", including time (long), area (large), number of pathogen races or subtypes, disease pressure, etc. and it further differentiates between the effectiveness or level of resistance and its durability. Indeed, it is explicitly stated that "(t)here is clearly a subjective element in the decision to describe the resistance of a cultivar as durable", further adding that "(i)n many instances the decision will depend partly on the relative performance of other cultivars" (emphasis added by the board) (cf. page 310, third paragraph of document D19).

8.3 The appellant, in its reply to the board's communication pursuant to Article 15(1) RPBA, argued that a "demonstrated durable resistance against BNYVV" is "evidenced by its progeny (i.e. with stable inherited genome insertion)" (cf. inter alia, page 10, fourth paragraph, page 15, last but one paragraph of the appellant's letter dated 18 April 2014; point VI supra). This is also evident from the subject-matter exemplified in the patent, where the bioassay for BNYVV resistance was carried out using the transgenic F1 seeds (cf. page 6, Examples 2 and 3 of the patent). Although, as stated by the appellant (cf. point XIII supra), the definition of the term "durable resistance" given in document D19 and by the opposition division in the decision under appeal did not exclude this further requirement, it did not necessarily include it.

9. In the light of the factual situation described above and under specific consideration of the arguments presented by the appellant itself, the board concludes that the term "durable resistance" has no generally accepted meaning in the here relevant technical field and is thus open to interpretation. As such it is ambiguous and renders the scope of claim 1 unclear. Thus, the Main Request does not fulfil the requirements of Article 84 EPC.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T218410.20140520. The whole decision can be found here. The file wrapper can be found here. Photo by  Derrick Tyson
obtained via Flickr.

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