T 0933/18 - (II) Poisonous priority

Key points

•  The appellants [opponents] argued that the method of claim 1 lacked novelty over the disclosure of the parent application (document D3) and document D5a.
• "because the method of claim 1 of the patent was not entitled to priority contrary to the disclosure of Example 3 of the parent application, the latter anticipated the claimed method due to a "poisonous priority"."
• It is however contested, whether or not decision G 1/15, [] applies to the present case at all,
• claim 1 as granted relates to a method for preparing a biosensor. This method comprises as an embodiment the use of GLD or variants thereof that lack any galactose, glucose, mannose and arabinose since the content of these sugars is defined as "10 myg or less per myg of protein", which includes 0 myg/myg GLD, i.e. a "sugar-free" GLD.
• I understand that the values for these sugars are not given in the example and that this feature is added compared to the priority document.
• " [if] the disclosure of a sugar-free GLD in Example 3 of the parent application (D3) falls necessarily within the subject-matter of claim 1, then this applies likewise to the sugar-free GLD of Example 3 of the patent application too. Moreover, since both Examples 3 are identical to Example 2 of the priority document (D4/D4a), claim 1's embodiment of a sugar-free GLD is present in the priority document too."
• "In light of these considerations, the embodiment of claim 1 using a sugar-free GLD for the preparation of a biosensor must be regarded as an "OR" claim as defined in G 1/15 (Reasons 5.2.1), since sugar-free GLD is an implicitly disclosed feature in Examples 2 and 3 of the priority document and the patent application, respectively. Consequently, this embodiment of claim 1 is entitled to partial priority (see decision G 1/15, Reasons 6.4). Therefore, the parent application (D3) cannot anticipate the claimed method."
• "A skilled person reading Example 2 of the priority application (and Examples 3 in the parent application and the patent application) [...] immediately understands that the GLD recombinantly produced in E. coli is sugar-free (i.e. not glycosylated) although this is not explicitly mentioned. The production of sugar-free GLD in E. coli is thus the clear and unambiguous consequence of the explicit disclosure of this working example in view of E. coli's generally known inability to produce glycosylated proteins. It is established case law that such a feature is implicit[ly disclosed]".
• This implies that the feature could be added to the example without violating Article 123(2) EPC.
• "It is uncontested that proteins recombinantly produced in E. coli are not glycosylated ("sugar-free", i.e. lack any galactose, glucose, mannose and arabinose residues as referred to in claim 1), because E. coli does not contain the enzymes required for glycosylation, i.e. for adding sugar residues to a protein. This belongs to the common general knowledge of the skilled person. Furthermore, the absence or presence of sugar residues on a protein are a structural feature of this protein."
  
  
• The decision also contains an extensive analysis of novelty over D5a, which is found to be a non-enabling document, and of inventive step over D5a. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t180933eu1.html

Novelty

26. The appellants argued that the method of claim 1 lacked novelty over the disclosure of the parent application (document D3) and document D5a.

27. The board does not agree with the appellants for the following reasons.

28. As regards the parent application (D3), appellant I submitted that because the method of claim 1 of the patent was not entitled to priority contrary to the disclosure of Example 3 of the parent application, the latter anticipated the claimed method due to a "poisonous priority".

29. It is uncontested that the disclosure of Example 2 of the priority document (D4/D4a) is identical to Examples 3 of the parent application and the patent application.

30. It is however contested, whether or not decision G 1/15, published in OJ 2017, 82 applies to the present case at all, and if G 1/15 applies, whether claim 1 as granted belongs to the so called "AND" or "OR" claim category (see G 1/15, Reasons 5.2.1).

31. Appellant I contested that G 1/15 applied to the present case because the glycosylation level of the GLD enzyme disclosed in Example 2 of the priority document and in Examples 3 of the parent application and the patent application was an "intrinsic" feature of GLD and not an "implicit" one. Since intrinsic features were not assessed in decision G 1/15, let alone their impact on the concept of a "poisonous priority", G 1/15 was irrelevant for the present case.

31.1 The board does not agree for the following reasons.

31.2 The case law has established that an intrinsic/inherent feature of a product normally relates to a technical effect caused by an interaction with specifically selected outside conditions, i.e. a certain use of the product (see decision G 2/88, published in OJ 1990, 93, Reasons 10.2), while structural features of a product are normally implicit to that product (see opinion G 1/92, published in OJ 1993, 277, Reasons 3).

31.3 Example 2 of the priority document discloses the transformation of an E. coli strain with a recombinant vector encoding a GLD gene for the production of an active GLD enzyme (see document D4a, page 42, lines 6 to 21). It is uncontested that proteins recombinantly produced in E. coli are not glycosylated ("sugar-free", i.e. lack any galactose, glucose, mannose and arabinose residues as referred to in claim 1), because E. coli does not contain the enzymes required for glycosylation, i.e. for adding sugar residues to a protein. This belongs to the common general knowledge of the skilled person. Furthermore, the absence or presence of sugar residues on a protein are a structural feature of this protein.

31.4 A skilled person reading Example 2 of the priority application (and Examples 3 in the parent application and the patent application) therefore immediately understands that the GLD recombinantly produced in E. coli is sugar-free (i.e. not glycosylated) although this is not explicitly mentioned. The production of sugar-free GLD in E. coli is thus the clear and unambiguous consequence of the explicit disclosure of this working example in view of E. coli's generally known inability to produce glycosylated proteins. It is established case law that such a feature is implicit (see Case Law, I.C.4.3, T 666/89, Reasons 6). Appellant I's arguments are therefore not convincing.

31.5 This means that G 1/15 applies to the present case. For this reason the second question of law submitted by appellant I during the oral proceedings (see item XI, page 12 above) which refers to an intrinsic feature is of no relevance for deciding the "poisonous priority" issue of the present case and is therefore rejected.

32. As regards the "AND" or "OR" claim category as defined in G 1/15 (Reasons 5.2.1), claim 1 as granted relates to a method for preparing a biosensor. This method comprises as an embodiment the use of GLD or variants thereof that lack any galactose, glucose, mannose and arabinose since the content of these sugars is defined as "10 myg or less per myg of protein", which includes 0 myg/myg GLD, i.e. a "sugar-free" GLD.

32.1 As set out above, it is uncontested that Example 2 of the priority document is identical with Examples 3 of the patent application and the parent application.

32.2 If therefore as asserted by appellant I, the disclosure of a sugar-free GLD in Example 3 of the parent application (D3) falls necessarily within the subject-matter of claim 1, then this applies likewise to the sugar-free GLD of Example 3 of the patent application too. Moreover, since both Examples 3 are identical to Example 2 of the priority document (D4/D4a), claim 1's embodiment of a sugar-free GLD is present in the priority document too.

32.3 This finding answers the first question of law submitted by appellant I (see item XI, page 12 above), and moreover corresponds to the practise under Article 88 EPC established by the case law. The request for a referral of this first question of law to the Enlarged Board of Appeal is therefore rejected too.

32.4 In light of these considerations, the embodiment of claim 1 using a sugar-free GLD for the preparation of a biosensor must be regarded as an "OR" claim as defined in G 1/15 (Reasons 5.2.1), since sugar-free GLD is an implicitly disclosed feature in Examples 2 and 3 of the priority document and the patent application, respectively. Consequently, this embodiment of claim 1 is entitled to partial priority (see decision G 1/15, Reasons 6.4). Therefore, the parent application (D3) cannot anticipate the claimed method.