T 1581/12 - Described but novel

Key points

• The Board applies established case law that an assembled nucleic acid sequence, without annotations, does not take away novelty of a particular sequence contained in it, even though the claimed sequence is disclosed " as an integral part of the complete"  published sequence.

EPO T 1581/12 - link

Article 54 EPC

20. As stated in point 17 supra, document D1 provides the print outs of the files 1997-11-17-NM_shotgun.dbs and 1997-12-15-NM.dbs, accessible through the FTP server of the Sanger Institute. Whilst the NM_shotgun.dbs file contains nucleic acid sequence data from Neisseria meningitis serogroup A obtained by shotgun sequencing, the NM.dbs file contains the assembled nucleic acid sequence resulting from these shotgun sequence data. However, in none of these files, the nucleic acid sequences or subsequences thereof are indexed or annotated, they are fully uncharacterized without any identification of possible structural features, such as transcription start and stop codons, SD sequences, etc. Although it is not disputed that the nucleic acid sequence data of the NM_shotgun.dbs file contains the sequence "Contig295", which itself comprises the complementary nucleic acid sequence of SEQ ID NO 5, neither of these two sequences are identified as such in this file. They are disclosed only as an integral part of the complete nucleic acid sequence data provided by this file.

21. In line with the established case law of the Boards of Appeal concerning this type of disclosures (cf. inter alia, T 301/87, OJ EPO 1990, page 335, points 5.7 and 6 of the Reasons; T 18/09 of 21 October 2009, points 10-15 of the Reasons; T 1451/09 of 4 February 2011, points 4-8 of the Reasons), the board does not consider document D1 to disclose the sequence SEQ ID NO 5 as an isolated nucleic acid sequence made available as such to the public. There is thus no reason for the board to deviate from the findings of the opposition division as regards this issue (cf. pages 19 and 20, points 3 and 4 of the decision under appeal). The main request fulfils the requirements of Article 54 EPC.