30 Sep 2016

T 1242/06 - Tomatoes III (After G2/12)

Key points
  • This is the final decision on the Tomatoes case, after the second decision of the Enlarged Board in G2/12. The Board finds the claimed tomatoes to be inventive. It was not obvious to include a trait from desert tomato (a small wild shrub) into the agronomically relevant tomato L. esculentum.
T 1242/06 - link

http://www.epo.org/law-practice/case-law-appeals/recent/t061242eu3.html


Claims at issue (auxiliary request I)
"1. A tomato fruit of the species Lycopersicon esculentum which is naturally dehydrated, wherein natural dehydration is defined as wrinkling of skin of the tomato fruit when the fruit is allowed to remain on the plant after a normal ripe harvest stage, said natural dehydration being generally unaccompanied by microbial spoilage." 

"2. A dehydrated tomato fruit of the species Lycopersicon esculentum characterized by an untreated skin, which permits said dehydration of the fruit so as to obtain wrinkling of the skin, said dehydration being generally unaccompanied by microbial spoilage."


Reasons for the Decision
Procedural issues
[] Ratio decidendi
5. In its second interlocutory decision dated 31 May 2012 referring questions of law relating to the interpretation of Article 53(b) EPC to the Enlarged Board of Appeal (OJ EPO 2013, 42; see section XII, above), the board, in a different composition from the present one, held that the appellant's main request filed with letter of 7 September 2011 was not allowable. It decided that claim 1 complied with the requirements of Article 123(3) EPC, but claim 2 did not (see points 5 to 8 of the reasons for the decision). The board further held that both claims of auxiliary request I (filed during the oral proceedings on 8 November 2011, see section XI above) complied with the requirements of Rule 80 and Articles 84 and 123(2) and (3) EPC. The board was furthermore of the view that the exclusion of plant varieties in Article 53(b) EPC did not apply to the subject-matter of the claims of auxiliary request I.



6. The appellant's main request and auxiliary request I are the same as those considered by the board in its second interlocutory decision, supra. The ratio decidendi of this decision therefore applies to these requests. Moreover, according to Article 8(2) RPBA, each new member of a board of appeal is bound to the same extent as the other members by an interim decision which has been taken by the board as composed previously.
7. It follows that the main request is not allowable, that the claims of auxiliary request I fulfil the requirements of Rule 80 and Articles 84 and 123(2) and (3) EPC and that the subject-matter of the claims of auxiliary request I is not excluded from patentability in view of the exclusion of plant varieties in Article 53(b) EPC.
Auxiliary request I
Article 53(b) EPC - process exclusion
8. The ruling in decision G 2/12 of the Enlarged Board of Appeal (OJ EPO 2016, A27, see section XVII above) has clarified that the process exclusion contained in Article 53(b) EPC has no negative impact on the allowability of product claims as contained in the appellant's auxiliary request I. The respondent has not submitted any arguments that the ruling in decision G 2/12 does not apply to the subject-matter claimed. In a communication (see section XVI) the board announced that it had none either.
9. Accordingly, the board decides that the subject-matter of the claims of auxiliary request I is not excluded from patentability pursuant to Article 53(b) EPC.
Sufficiency of disclosure (Article 100(b) EPC in connection with Article 83 EPC)
10. In examples 1 and 2 the patent in suit discloses a particular parental line of the species Lycopersicon esculentum and of the species L. hirsutum which were interspecifically crossed as well as a further breeding programme for the resulting plants leading to the successful identification of plants carrying tomato fruits with the characteristics as claimed.
11. It is established case law of the boards of appeal that a successful objection of lack of sufficiency of disclosure presupposes that there are serious doubts, substantiated by verifiable facts, that the skilled person, using common general knowledge, was unable to carry out the invention. The burden of proof in this respect is upon the opponent (see Case Law of the Boards of Appeal of the EPO, 7th Edition 2013, II.C.8).
12. The respondent has argued that the interspecific cross disclosed in the patent in suit involved meiosis which randomly determined the genetic make-up of the resulting plants and further generations. As such this event was not repeatable exactly without undue burden. It was furthermore argued that the parental L. esculentum line BL1630 was a proprietary line not deposited in accordance with Rule 31 EPC. More significantly, none of the lines with the desired phenotype resulting from the breeding process of the patent in suit was deposited either.
13. The board agrees with the respondent that, due to the fact that meiosis is a random process, an exact repetition of the crosses described in the examples 1 and 2 may not be possible for the skilled person. However, the board considers that for acknowledgement of sufficiency of disclosure such an exact repeatability is not required in the case at hand. In fact, there is no apparent necessity either to reproduce exactly the same tomatoes as disclosed in the examples of the patent in suit or to start a breeding programme from the exactly the same parental lines as those described.
14. The relevant question in the context of sufficiency of disclosure is rather whether or not the patent in suit provides the skilled person with sufficient guidance and knowledge to produce tomatoes like those that are the subject-matter of the claims. In the present circumstances the board has no reason to doubt that the patent in suit demonstrates that appropriate crossing and selection steps (initially based on high sugar content) starting from appropriate parental lines eventually lead to the identification of tomatoes in accordance with the claims. This has not been contested by the respondent either. Accordingly, there is in the present case also no necessity for a deposit pursuant to Rule 31 EPC of either the parental lines or the resultant plants which fall under the terms of the claims.
15. The board furthermore does not see how the reference by the respondent to a decision of the German Bundesgerichtshof from 27 March 1969 (X ZB 15/67 "Rote Taube") could change the board's view on sufficiency of disclosure in relation to the claimed invention. In fact, in the board's view, in the passages cited by the respondent, the court gives reasons why the requirement of repeatability must be fulfilled for the products of breeding processes (see the whole of point 18 of the cited decision). The board agrees with the court in principle and notes that also under the EPC sufficiency of disclosure is a requirement for the grant of a patent. In the present case, however, unlike in the patent application to which the decision of the Bundesgerichtshof, supra, referred, the board has come to the conclusion that the patent in suit discloses sufficient technical detail for carrying out the invention as claimed (see point 13).
16. In view of the above consideration the board concludes that the respondent has not successfully established that the disclosure in the patent is insufficient for a skilled person to carry out the claimed invention.
Novelty (Article 54 EPC)
17. In the impugned decision the opposition division held that the subject-matter of the claims of the main request now before the board (which was then pending as auxiliary request II) lacked novelty (Article 54 EPC 1973). However, it held that the subject-matter of the claims of auxiliary request II now before the board (which was then pending as auxiliary request IIIb) was novel.
18. The subject-matter of both claim 1 and claim 2 of auxiliary request I is a (naturally) dehydrated tomato fruit of the species L. esculentum.
19. Although the respondent has not submitted arguments specifically designed to attack the novelty of the claims of auxiliary request I during the appeal proceedings, the board notes that the disclosures in documents D1, D2, D5 and D8 have been referred to in the course of the opposition and appeal proceedings in the context of novelty.
Novelty with respect to the disclosures in documents D1 and D2
20. Document D1 discloses a breeding process for controlling starch synthesis in tomatoes with the aim of improving the value of industry tomatoes and the taste of fresh market tomatoes (see page 1, lines 7 to 11). Document D2 discloses a method for breeding tomatoes with superior taste characteristics by increasing the soluble solids (sugars) content. Both documents disclose breeding processes which are, at least in part, identical to the breeding processes described in examples 1 and 2 of the patent in suit. Both documents also disclose tomato plants with the same identification numbers as plants recited in the patent (i.e. the F2 plant F2-82 in the case of document D1 and the F3 plant 203-10 in the case of document D2). However, and in keeping with the aim of the disclosed breeding processes, neither of the two documents discloses explicitly the decisive process steps and observations of the patent in suit, i.e. that the plants were grown, that the fruit was allowed to remain on the vine after a normal ripe harvest stage and that the fruit showed the characteristic of natural dehydration as evidenced by wrinkling of the fruit skin.
21. The respondent has argued that tomatoes having all features according to claims 1 and 2 were implicitly disclosed in documents D1 and D2. With reference to document D5, which disclosed that typically 3% of the tomatoes on a tomato plant turn ripe every day (see document D5, page 1148, right hand column, under the heading "Phenotyping") and in view of the fact that for an optimal harvest a person skilled in the art would choose a time when most tomatoes had ripened, the respondent argued that, thus, such a harvest inevitably included tomatoes which were well past the point of being ripe and consequently were dehydrated.
22. Documents D1 and D2 disclose tomato research projects aiming at developing tomatoes with advantageous characteristics, i.e. controlled starch synthesis and superior taste, respectively, which is substantially different from the aim pursued by the patent in suit, namely to develop tomatoes with the ability to naturally dehydrate. There is no evidence before the board that the skilled person, in the context of the research projects described in documents D1 and D2, would have left tomatoes on the vine beyond a normal ripe harvest stage or would have applied the harvesting scheme disclosed in document D5, i.e. that the skilled person would have waited to harvest until most if not all of the tomatoes on an individual vine had ripened. In the latter context in particular, the board notes that the scheme disclosed in document D5 and referred to by the respondent is applied "under field conditions" and is in fact not the scheme which was used for the actual assays described in document D5, i.e. the tomatoes of the introgression lines were harvested when 95-100% of the tomatoes of the M82 plants (controls) were red (see D5, page 1148, right-hand column, 3rd paragraph), whereby IL 4-4 plants showed significantly late ripening (see D5, page 1152, left-hand column, 1st paragraph).
23. The board cannot conclude from the above that documents D1 and D2 implicitly disclose dehydrated tomatoes because the skilled person reproducing their teaching would inevitably produce such dehydrated tomatoes. The board accordingly cannot come to the conclusion that the tomato fruits disclosed in documents D1 and D2 are detrimental to the novelty of the subject-matter of the claims.
Novelty with respect to the disclosures in documents D5 and D8
24. Document D5 discloses a population of 50 introgression lines (ILs) originating from a cross between the green-fruited species L. pennellii and the cultivated tomato line cv M82. Each of the lines contains a single homozygous L. pennellii chromosome segment, defined by restriction fragment length polymorphism (RFLP), and together the lines provide complete coverage of the genome and a set of lines nearly isogenic to M82. At least 23 quantitative trait loci (QTL) for total soluble solids content and 18 for fruit mass were revealed. For finer mapping of a QTL affecting fruit mass, the introgressed segment was recombined into smaller fragments that allowed the identification of three linked loci. At least 16 QTL for plant weight, 22 for percentage green fruit weight, 11 for total yield and 14 for total soluble solids yield were identified (see abstract). Similarly, document D8 discloses results of QTL-mapping for a battery of agronomic traits of interest of a set of near isogenic lines (NILs) developed from studies in which L. pimpenellifolium and L. hirsutum were used as donor parents (see Introduction).
25. The respondent has emphasised in particular the disclosure of the line IL 4-4 in document D5 (see e.g. Figure 1 on page 1152) and of the line NIL TA517 in document D8 (see e.g. Figure 1 on page 172). Both lines comprise a substantial part of chromosome 4 of the donor species, replacing the corresponding part in the recipient genome. It was demonstrated in post-published document D18 that the gene responsible for the phenotype of the tomatoes as subject-matter of the claims is the cwp (cuticular water permeability) gene which is located on the parts of chromosome 4 present in these introgression lines. Documents D5 and D8 describe qualitative, quantitative and phenotypic observations for several agronomically important traits. The board notes however that neither document discloses observations regarding dehydration of the produced fruit or the nature of its skin, in particular not for the lines particularly referred to by the respondent. The respondent has not argued so either.
26. However, with the colour photographs contained in documents D6 and D9/D9a, depicting tomato fruit produced on plants grown from the IL 4-4 introgression line of document D5 or from the NIL TA517 plants of document D8 respectively, the respondent successfully convinced the opposition division that these tomatoes have a wrinkled skin, show no signs of microbial spoilage and that the wrinkled tomatoes shown in the photographs were dehydrated. The opposition division concluded therefrom that the IL 4-4 plants disclosed in document D5 (together with document D6) and the NIL TA517 plants of document D8 (with document D9) fell under the scope of claims 1 and 2 of auxiliary request II then on file. During the appeal proceedings the respondent has filed further colour photographs, i.e. documents D17, D19 and DX3, of tomato fruits produced on these lines.
27. In document D11, a declaration by Dr Schaffer, the sole inventor of the patent in suit, explains that the tomatoes of lines IL 4-4 and TA517 as described in documents D5 and D8 respectively "do not show the phenotype of natural dehydration" of the tomato fruits as claimed. They may show wrinkling of the skin, but this was of a kind different from that observed in the patent in suit. In fact, tomatoes of these lines were later described as having "reticulated epidermis" or "melon-like skin", due to a suberisation of the fissured epidermis (see document D11, point 6).
28. Similarly as for the disclosure in documents D1 and D2, the respondent has argued that document D5 and D8 inevitably disclosed dehydrated IL 4-4 and TA517 tomatoes respectively, because of the nature of tomato ripening and the usual manner of harvesting as disclosed in document D5 (see point 21, above).
29. It was not disputed by the appellant that the total body of evidence referred to in point 21 above, along with the declaration (document DX2) submitted by the respondent, depict the phenotype of plants and tomatoes grown from the IL 4-4 line as disclosed in document D5 and from the TA517 line as disclosed in document D8 (see document D11), that these tomatoes are capable of dehydration (see document D11 and D18) and that these lines are the lines disclosed in documents D5 and D8.
30. However, what needs to be established in view of the respondent's argument is whether or not the skilled person, by proceeding as disclosed in documents D5 and D8, would have inevitably obtained the dehydrated tomatoes as claimed. This question is not answered by the body of evidence available to the board, i.e. the evidence does not establish that documents D5 and D8 implicitly disclose that the tomatoes grown should be left on the vine until they would naturally dehydrate and show all the characteristics of the tomatoes specified in claims 1 and 2. In particular there is no evidence that the skilled person would have used a harvesting scheme as applied in field conditions (see point 22 above) or that the skilled person would for other reasons have left the tomatoes on the vine to become dehydrated.
31. Accordingly, the board cannot come to the conclusion that the tomato fruits disclosed in documents D5 and D8 are detrimental to the novelty of the subject-matter of the claims.
Inventive step (Article 56 EPC)
Closest prior art and technical problem
32. The bush tomato, Solanum centrale, also known as the desert tomato, is a small wild shrub mainly grown in Australia with grey to green leaves. The tomato fruits turn from green to yellow when ripe and dry on the plant to resemble a raisin (see e.g. documents D3 and D10).
33. The appellant has acknowledged that these bush tomatoes have the phenotype of natural fruit dehydration characteristic for the tomatoes which are the subject-matter of claims 1 and 2. Tomatoes of the bush tomato plant are thus considered to represent the closest prior art.
34. The subject-matter of claims 1 and 2 therefore differs from dried bush tomatoes in that the claimed tomatoes belong to the species L. esculentum instead of the wild S. centrale.
35. Based on these differences the respondent has argued that the problem to be solved was the introduction of the natural dehydration feature in L. esculentum and that for solving this problem the disclosures in document D5 and D8 (see point 24 above) provided ample suggestion that new phenotypes could be created by interspecific crosses of tomato species.
Obviousness
36. For the evaluation of the obviousness of the claimed subject-matter the question to be answered is whether or not the skilled person would have been motivated to insert the trait of natural dehydration known from the wild bush tomato into the agronomically relevant tomato L. esculentum.
37. The appellant has argued in this respect that, irrespective of whether or not the cultivated tomato is taxonomically ranked as Lycopersicon or Solanum, it was known to the skilled person that sexual hybridisation of the bush tomato S. centrale cross with the cultivated tomato (see document D35, page 61, 3rd paragraph) was unlikely to be successful.
38. The board notes furthermore that the respondent has not identified in the prior art either a hint for the skilled person that the natural fruit dehydration phenotype as known in the bush tomato could be established in the cultivated L. esculentum tomatoes, or an incentive to attempt to establish such a phenotype by means of interspecific crosses similar to those disclosed in documents D5 and D8 or crosses of L. esculentum with Solanum centrale. The board has not identified such a hint or incentive either.
39. The board therefore considers that the respondent, also in this respect, has not made a sufficient case for the board to conclude that it would have been obvious for the skilled person to embark on crosses between the bush tomato and the cultivated tomato to establish the tomatoes defined in claims 1 and 2.
40. In view of the above considerations the board concludes that the subject-matter of claims 1 and 2 involves an inventive step.
Original request of the respondent for reimbursement of the appeal fee
41. In its statement of grounds of appeal, the opponent (formerly appellant II, now respondent) requested reimbursement of the appeal fee on the ground that the opposition division had committed a substantial procedural violation by admitting the patent proprietor's auxiliary request IIIb into the proceedings (see section III).
42. With a letter dated 28 June 2012, the respondent has withdrawn its appeal. Consequently, this request is no longer pending.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division with the order to maintain the patent on the basis of the claims of auxiliary request I as filed during the oral proceedings on 8 November 2011 before the board of appeal and a description to be adapted thereto.

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