T 2048/10 - Available but not disclosed

EPO T 2048/10

For the decision, click here

Key points

• The claim is directed to a nucleic acid molecule or nucleotide sequence as such, having a particular nucleotide sequence.
• The opponent considers the claim to be not novel in view of document D39, which discloses a partial EST sequence which would anticipate the claimed sequence.
• The Board notes that "D39 only discloses a partial sequence, not annotated and completely uncharacterised. There is thus no reason for the board to depart from the established case law on EST sequences, stating that their mere existence in a large collection of clones is not seen as a form of implicit disclosur" (cf. T 18/09, [10]-[14]).
However, in T 18/19, the Board observed that the DNA sequence disclosed in the EST documents " have several undetermined nucleotides and nucleotides different from those reported for Neutrokine-alpha, as well as sequence frameshifts when compared to the nucleic acid sequence of Neutrokine-alpha. Thus, the sequences of the IMAGE clones actually given in documents D22 or D24 do not anticipate the claimed subject-matter." (at [11]). The Board then considered possibly implicit disclosure of the sequence by the clones (as products) (G1/92). 

Summary of Facts and Submissions

[...] XIII. Claims 1 and 4-5 of the Main Request read as follows:

"1. A nucleic acid molecule or a nucleotide sequence selected from the group consisting of:
(a) a nucleic acid molecule encoding a polypeptide comprising the amino acid sequence of SEQ ID NO: 11 or 13;
[...]
(k) a nucleic acid molecule comprising the nucleotide sequence of SEQ ID NO: 6, 10, 12 or PTA-1993;
(l) a nucleotide sequence encoding a polypeptide comprising the amino acid sequence encoded by the DNA contained in PTA-1987 or PTA-1988;
(m) nucleic acid molecule which is complementary to the sequence of the nucleic acid molecule according to any one of (a) to (k); and
(n) a nucleotide sequence encoding an extracellular domain of an amino acid sequence selected from the group consisting of SEQ ID NO: 7, 11 and 13 and a nucleotide sequence encoding an Fc domain of immunoglobulin G.

Reasons for the Decision

[...] Claims 1(k) and 1(m), claim 2

13. According to Example 1 of the patent, Incyte Genomics clone 4616811 belongs to the Incyte Genomics Library ID No. BRAYDIT01. This clone was identified using Incyte Genomics template 252899.8 which, according to Example 1, is a consensus EST sequence, representing a mRNA transcript (cf. page 33, paragraphs [0190]-[0191] of the patent). Document D39 shows a partial EST sequence which, according to the appellant, anticipates claim 1(k) as far as it relates to SEQ ID NO: 6 (the nucleic acid sequence of the BSL2-4616811 clone disclosed in the patent; Figure 3A) and to the deposited PTA-1993.

14. There is however no evidence on file showing that the nucleic acid sequences of the Incyte Genomics clone 4616811 or the Incyte Genomics template 252899.8 (or template 252899.6 cited in Example 1) were identified as encoding a member of the B7 family. As it is the case for many EST sequences, document D39 only discloses a partial sequence, not annotated and completely uncharacterised. There is thus no reason for the board to depart from the established case law on EST sequences, stating that their mere existence in a large collection of clones is not seen as a form of implicit disclosure (cf. T 18/09 of 21 October 2009 from this board in a different composition; see points 10-14 of the Reasons).

15. Contrary to the opposition division, the board decides that the availability of the Incyte Genomics clone and templates is not relevant in the present case since, even if available, their presence in a general library, among other clones and EST sequences, does not represent a clear and direct disclosure of the specific nucleic acid sequence of claim 1(k) and/or the deposited PTA-1993, which is required to be considered for the assessment of novelty (Article 54 EPC).