R 0004/15 - Late paid fee is refunded

Key points

• In this petition for review case, the three-member Enlarged Board finds that the fee for the petition for review was paid out of time (too late), that the petition for review is deemed not to have been filed, and that the paid amount is to be refunded. 
• Note that the Board in the final decision T 1533/13 (the remittal after inadmissibel G 1/14) follows this.
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EPO R 0004/15 -  link

Conclusions

10. From the above, the Enlarged Board concludes that the fee for petition for review was paid out of time.

11. It therefore unanimously decides that the petition for review is deemed not to have been filed.

12. In the absence of a petition for review, there is no legal basis for paying the fee involved, which must therefore be reimbursed.

T 1581/12 - Only limits, thus disclosed

Key points

• The pending claim is based on two SEQ ID NOs from lists, and an amino acid length taken from a list of lengths. Does this involve added subject-matter under the two lists principle?
• The Board finds it does not. " The case law referred to by appellant II is exclusively concerned with a combination of specific members from two, fully independent lists. []  However, the present situation, with a list with amino acid sequences and a list with fragment lengths, is different. " "The disclosure of an amino acid sequence, although inherently, makes available all possible fragments of this sequence, []. [] The board does not see that the list of fragment lengths is actually independent from the list of amino acid sequences disclosed in the parent application. The combination of the value "20 or more consecutive amino acids" with the amino acid sequences SEQ ID NOs 4, 6, therefore only limits the original disclosure in the parent application. This limitation does not provide any new information and does not create new subject-matter." 

EPO T 1581/12 - link

6. With reference to the case law of the Boards of Appeal concerning a selection from two lists, appellant II has argued that there is no basis in the parent application for a combination of the sequences SEQ ID NO 4, 6 and a length of "20 or more consecutive amino acids" for fragments derived from these amino acid sequences and comprising an epitope (cf. point XI supra).

[Argument of appellant II: (point XI: )In the parent application, sequences SEQ ID NO 4, 6 were disclosed as members of a list of several hundreds of sequences. Likewise, the fragment length indicated in claim 1 was disclosed in the parent application within a list of a plethora of lengths to be selected "depending on the particular sequence". Nothing in the parent application could be seen as a basis for singling out the combination of claim 1. Claim 1 required a further selection of those fragments having a functional feature (epitope; accessible to the immune system). All this was not in line with the case law established by the Boards of Appeal with regard to the selection of combinations from two or more lists (see, inter alia, T 583/09 and T 2134/10, supra). Indeed, this was the reason given in T 583/09 (supra) for not allowing a combination of a specific SEQ ID NO with a fragment length, independently whether or not the fragment was characterized by a functional feature. In the present case the question whether the list of SEQ ID NOs and the list of fragment lengths were independent was irrelevant because the combination present in claim 1 resulted from a selection that was neither disclosed nor derivable from the parent application.] 

7. The case law referred to by appellant II is exclusively concerned with a combination of specific members from two, fully independent lists. In these decisions the competent boards come to the conclusion that, in the absence of a clear pointer to such a combination, it is not possible to associate one member of one list with another member of the other list. Such combination is considered to create new subject-matter. However, the present situation, with a list with amino acid sequences and a list with fragment lengths, is different. The disclosure of an amino acid sequence, although inherently, makes available all possible fragments of this sequence, starting from the shortest peptide with only two consecutive residues up to a peptide having the full-length of the amino acid sequence minus one residue. As stated by appellant I (cf. point X supra), the longer fragments always comprise all shorter fragments, and the full-length sequence comprises all possible fragments. Indeed, the values of the fragment length disclosed in the parent application would be understood by a skilled person to apply to each and every member of the list of disclosed amino acid sequences (SEQ ID NOs), wherein the upper length of these fragments varies "depending on the particular sequence" (cf. page 6, first full paragraph of the parent application). The board does not see that the list of fragment lengths is actually independent from the list of amino acid sequences disclosed in the parent application. The combination of the value "20 or more consecutive amino acids" with the amino acid sequences SEQ ID NOs 4, 6, therefore only limits the orignal disclosure in the parent application. This limitation does not provide any new information and does not create new subject-matter.

8. Likewise, the requirement that the claimed fragments comprise an epitope does not create new subject-matter but also amounts to a limitation concerning the preferred fragments disclosed in the parent application (cf. page 6, first full paragraph, last sentence of the parent application). Indeed, the term "epitope" is understood in the here relevant technical field to define the ability of a peptide, polypeptide or protein to raise antibodies. There is no requirement in the claims that these epitopes have to be protective, neutralizing or that they must have any other property. It is also known in the art that peptides of 8-10 residues may already comprise a linear epitope and that even shorter peptides, when associated with appropriate carrier proteins (haptens), may also have this ability. Therefore, fragments of "20 or more consecutive amino acids from SEQ ID NO 4 and 6" may certainly comprise an epitope and no additional selection is required which would result in the combination of subject-matter not disclosed in the parent application.

9. Contrary to the present case, the protein fragments claimed in the case underlying the decision T 583/09 were always defined by a functional feature ("wherein the fragment has the ability to: i) bind to hyaluronic acid; or ii) bind to extracellular matrix") (cf. T 583/09, supra, page 3, lines 1-4 and page 10, point 4 of the Reasons). In that case this board, in a different composition, considered that there was no disclosure in the application as filed linking fragments of each one of the disclosed lengths with said functional feature. In the present case, no such functional feature is required for the claimed fragments and, therefore, the situations underlying both cases are different.

10. If at all, the present case seems to have some similarity to the case underlying decision T 2134/10 (supra). In that case this board, in a different composition, acknowledged a basis in the application as filed for a combination of a specific amino acid sequence with a particular fragment length, wherein the fragments also comprised an antigenic epitope. This combination was considered not to be a combination of features belonging to different lists. A similar decision was taken for a combination of a specific amino acid sequence with a particular degree of identity. The board considered such a combination to be only "a limitation ... among all the degrees specified" (cf. T 2134/10, supra, page 13, point 11 of the Reasons).

11. Thus, the main request fulfils the requirements of Article 76(1) EPC.

T 1265/13 - Omitting feature, not searched

Key points

• In this examination appeal the Main Request was directed to amended claim wherein a feature of claim 1 as filed was omitted. The Main Request is not admitted under (current) Rule 137(5) EPC by the Board, because it is directed to unsearched subject-matter. Moreover, claims of the request address a different technical problem as claim 1 filed, in view of the now omitted feature.

EPO T 1265/13 -  link

Reasons for the Decision

1. Main and first to fourth auxiliary requests

1.1 [] According to the international search report drawn up by the EPO, the search was carried out for the invention defined by the subject-matter of claims 1, 2, 8-41 and 54 as originally filed, all of which - and in particular independent claims 1, 9, 23, 25, 27, 34 and 38 - contained the feature "at least one radio frequency transponder device", which feature at the date of filing of the application was held to be essential for the performance of the invention.

1.2 In the amendments to independent claim 1 of the main and first to fourth auxiliary requests at issue, the above feature, however, was deliberately omitted, with the consequence that the new invention not originally claimed is now defined by subject-matter which was not covered by the search.

1.3 According to Rule 137(4) EPC as in force before 1 April 2010, amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept (see also T 708/00, Reasons 8, and T 2459/12, Reasons 4.2).

1.4 In the present case, this requirement is not satisfied because, as explained at page 13, lines 8 to 11 of the application as filed, the biological sample storage device which comprises a radio frequency transponder device is supposed to receive, store and/or transmit data to a system for processing sample data, while the subject-matter of claim 1 of the main and first to fourth auxiliary requests - which does not comprise the required radio frequency transponder device - cannot receive, store and transmit data, and so does not form a single general inventive concept with the invention originally disclosed and searched.

1.5 The appellant argued that the passage at page 12, line 29 to page 13, line 15 described a biological sample device comprising only a sample plate and a lid, with the consequence that the radio frequency transponder device was not indispensable for the function of the invention, since the presence of a radio frequency transponder device had no bearing on the ability of the device to dry store biological samples.

For the board, this argument is irrelevant since the dry storage of biological samples relates to the problem of how to improve storage of biological material and is a different invention from the one originally defined in the searched claims, the purpose of which included the functions of receiving, storing and transmitting data with the goal of creating an inventory system.

1.6 It follows that the five requests, which in their independent claim 1 omit the feature "at least one radio frequency transponder device", are contrary to the requirements of Rule 137(4) EPC as in force before 1 April 2010, with the consequence that they are not allowable.

T 1741/12 - Unsearched feature added

Key points

• The Board decides to not admit a request, under Article 12(4) RPBA, inter alia because it contains an added feature taken from the description, which may  not have been searched.  " An auxiliary request which incorporate[s] a probably unsearched feature taken from the description [is not to be] admitted, using the board's discretionary power under Article 12(4) RPBA" 
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EPO T 1741/12 - link

5. Sixth auxiliary request - admissibility

5.1 The sixth auxiliary request essentially corresponds to the fourth auxiliary request as filed with the statement of grounds of appeal.

5.2 Claim 1 (see point IX above) incorporates the feature "checking that ... the heads will not collide with each other". This feature has hitherto never been claimed.

5.3 In accordance with Article 12(4) RPBA, the board has the discretion to not admit requests which could have been presented before the first instance (here, the opposition division). In the board's view, the sixth auxiliary request, since it incorporates entirely new matter taken from the description, could, and indeed should, have been presented before the opposition division and not for the first time in appeal proceedings. The board points out that the primary purpose of opposition appeal proceedings is to examine the correctness of the decision (cf. G 9/91, OJ EPO 1993, 408, 419, reasons, 18) rather than provide an opportunity to amend the claims by introducing new features from the description, requiring entirely new issues to be examined.

5.4 The board further notes that at the oral proceedings before the opposition division, the proprietor expressly declined the opportunity to present another request (cf. point 17 of the minutes).

5.5 The board also points out that, as the features added are taken from the description, it is unclear whether they have been the subject of the search. As a consequence, even in the hypothetical case that the subject-matter of claim 1 were not obvious having regard to the prior art on file, the board would not be in a position to maintain the patent in amended form on the basis of this request, but would have to remit the case to the opposition division for further prosecution (see also the respondent's reply to the statement of grounds of appeal dated 14 February 2013, point 7.1.2). This situation is analogous to that dealt with in decision T 881/09, point 4 of the reasons, where it was decided that an auxiliary request which incorporated a probably unsearched feature taken from the description be not admitted, using the board's discretionary power under Article 12(4) RPBA.

5.6 At the oral proceedings, the appellant argued that the request should be admitted as it was simple to understand, had been filed at the earliest opportunity in the appeal procedure, i.e. with the statement of grounds of appeal (i.e. by way of the fourth auxiliary request), and was specifically focused on the multiple head aspect. The appellant also alleged that the request had not been filed during the opposition procedure as this had taken an unexpected turn when the opposition found the requests on file to lack inventive step.

5.7 The board however considers that the proprietor should have been prepared for the eventuality that its request(s) on file would be refused by the opposition division due to lack of inventive step with respect to the combination of E1 and E2, as this had been raised in the notice of opposition. Further, none of the other reasons alter the fact that the board would be forced to remit the case to the opposition division if the request were to be admitted.

5.8 In the letter dated 30 September 2016, the appellant stated that a reason for filing the sixth auxiliary request was to respond to the board's observations regarding the need for claim 1 to be functionally limited to an adequately defined technical process [to be considered as a non-intellectual activity]. However, leaving aside the fact that the request was essentially filed before the board had made observations (i.e. as the fourth auxiliary request filed with the statement of grounds of appeal), whether or not claim 1 is limited to an adequately defined technical process is not the issue here and therefore alone not a justification for admitting the request.

5.9 For these reasons, the board decided not to admit the sixth auxiliary request (Article 12(4) RPBA).

T 1285/13 - Article 57

Key points 

• "The examining division decided that the requests before it not only lacked an inventive step but also industrial applicability. The examining division decided that the indication of achievable objectives given in the application did not go beyond speculation and vague general statements. Therefore, no defined industrial application was considered to be disclosed. 
• The Board states that " the issue of Article 57 EPC is closely related to the question whether or not the technical problem underlying the invention has been credibly solved. As shown in points 13 to 23 above, the board is convinced that the priority application plausibly discloses a role for miR-1 in the regulation of physiological processes." . The Board therefore finds that the claim meets the requirement of Article 57 EPC.

T 1285/13 -  link

V. Claim 1 of the main request reads as follows:

"1. An isolated nucleic acid molecule having a length of from 18 to 25 nucleotides comprising a nucleotide sequence which has an identity of at least 90% to a sequence shown in SEQ ID NO 58 (miR-1) or a complement thereof."

Reasons for the Decision

Article 57 EPC
30. The examining division decided that the requests before it not only lacked an inventive step but also industrial applicability. The examining division decided that the indication of achievable objectives given in the application did not go beyond speculation and vague general statements. Therefore, no defined industrial application was considered to be disclosed.

T 1118/12 - Patient group and inherent disclosure

Key points

• "It is undisputed that the compound and the treated disorder disclosed in document D4 fall under the definitions in present claim 1, and that the patients disclosed in document D4 are immune-compromised. The question is whether they also have nasal carriage of S. aureus." "It was known from document D11 that hemodialysis patients showed a mean nasal carriage rate of 51.5% (range from 30.1% to 84.4%)." 
• "In the board's judgement, the skilled person would not have considered that the nasal carriage rates disclosed in document D11 would necessarily also apply to the later study disclosed in document D4. This is so, firstly, because document D11 also discloses that the range of carriage rates reported is large, that older studies tended to find higher carriage rates and that changes in S. aureus nasal carriage may have occurred over the years ([]). Secondly, because the skilled person would have also known that it could not be excluded that the patients of document D4 were treated topically to eliminate nasal carriage ()."
• The Board finds the claim novel over D4.
• The Board recalls that G 2/88 held that "under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example)" (note that the claim is a second medical use claim).
  

EPO T 1118/12 - link

Claim 1 of auxiliary request 1A reads:
"1. A vaccine comprising a glycoconjugate of a Type 5 polysaccharide antigen of S. aureus and an immunocarrier, and a glycoconjugate of a Type 8 polysaccharide antigen of S. aureus and an immunocarrier, for use in protecting an immune-compromised individual from staphylococcal bacterial infection, wherein said immune-compromised individual has nasal carriage of S. aureus."

Reasons for the Decision

Introduction

1. The present invention relates to the use of staphylococcal glycoconjugate vaccines in preventing Staphylococcus aureus (S. aureus) infection in immune-compromised individuals who have nasal carriage of S. aureus. S. aureus causes a wide spectrum of human diseases, the most important of which is bacteremia, i.e. an invasion of the bloodstream by S. aureus. Before the priority date of the application it was considered that nasal carriage of S. aureus played a key role in the epidemiology and pathogenesis of infection (see document D11, a review article published in the year 1997, page 505, left hand column, first paragraph). Indeed, document D11 also discloses that the nasal carriage-positive patient group has a 6.3-fold higher risk of bacteremia (see page 512, left hand column, second paragraph). According to document D11 (see page 505, right hand column, first paragraph), "Approximately 20% of individuals almost always carry one type of [S. aureus] strain" (so-called "persistent carriers"). Roughly 60% of the population harbors S. aureus intermittently while 20% of the population never carries S. aureus (so-called "non-carriers")".

Auxiliary request 1A (sole request)

Novelty (Article 54 EPC)

2. Claim 1 of auxiliary request 1A is directed to a vaccine comprising glycoconjugates of capsular polysaccharide antigens of S. aureus, for use in protecting an immune-compromised individual from staphylococcal bacterial infection, "wherein said immune-compromised individual has nasal carriage of S. aureus" (see section II above for the complete wording of claim 1).

3. The examining division decided that the disclosure in document D4 anticipated the claimed subject-matter.

4. Document D4, an abstract published in April 2001, discloses the results of a clinical trial involving 1800 hemodialysis patients. In a double-blind, randomised, placebo-controlled trial, the efficacy of a bivalent S. aureus glycoconjugate vaccine that included capsular polysaccharide (CP) type 5 and 8 conjugated to a non-toxic recombinant exoprotein A from Pseudomonas aeruginosa, termed Nabi**(®) StaphVAX**(®), was evaluated. Ten months post-vaccination, 26 S. aureus bacteremias had occurred in the placebo group and 11 in the vaccinated group. This corresponded to a 57% reduction in the occurrence of bacteremia. Document D4 concludes "that StaphVAX**(®) was well tolerated, and can significantly reduce the incidence of S. aureus bacteremia in this at-risk population through approximately 10 months post-vaccination." Document D4 is silent about nasal carriage of S. aureus.

5. It is undisputed that the compound and the treated disorder disclosed in document D4 fall under the definitions in present claim 1, and that the patients disclosed in document D4 are immune-compromised. The question is whether they also have nasal carriage of S. aureus.

6. The reasoning of the examining division in holding that document D4 also disclosed the feature "wherein said immune-compromised individual has nasal carriage of S. aureus" can be summarised as follows: It was known from document D11 that hemodialysis patients showed a mean nasal carriage rate of 51.5% (range from 30.1% to 84.4%). Therefore, at least one third of the hemodialysis patients vaccinated according to document D4 carried S. aureus in their nasal cavity. Since the group of vaccinated patients was so large it was beyond reasonable doubt that at least one patient carrying S. aureus in his or her nasal cavity had been vaccinated. The examining division concluded that "thus, a patient group or individual patients defined by being immune-compromised having nasal carriage of Staphylococcal bacteria was/were inherently vaccinated in the prior art."

7. The Enlarged Board of Appeal, when considering, in its decision G 2/88 (OJ EPO 1990, 93, corr. 469), claims directed to a new use of a known compound, commented on the interpretation of Article 54(2) EPC as follows (see reasons, point 10): "Article 54(2) EPC defines the state of the art as comprising "everything made available to the public by means of a written or oral description, by use, or in any other way." (...) the question of what has been made available to the public is one of fact in each case. (...) In the case of a "written description" which is open for inspection, what is made available in particular is the information content of the written description. (...) In each such case, however, a line must be drawn between what is in fact made available, and what remains hidden or otherwise has not been made available" (emphasis added).

Furthermore, it stated in point 10.1 that "under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example) (...)". [Note: However, see G 1/92]

8. For determining the information content - or disclosure - of a document, the boards have established certain principles to be observed. Thus, the information content of a document is what the skilled person derives directly and unambiguously, using common general knowledge, from the document as a whole, including features which for the skilled person are implicit in what is explicitly disclosed. In this context "implicit disclosure" means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws. In particular, the term "implicit disclosure" should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition 2013, sections I.C.3.1 and I.C.3.3).

9. Given the examining division's reasoning that in view of the disclosure of document D11 "a patient group or individual patients defined by being immune-compromised having nasal carriage of Staphylococcal bacteria was/were inherently vaccinated in the prior art" (see point 6 above), the question to be addressed in the light of the observations in points 7 and 8 above is, whether or not the skilled person would have directly and unambiguously derived this disclosure from document D4 when reading it with his common general knowledge about nasal carriage rates taught in document D11.

10. The board notes that the nasal carrier rates disclosed in document D11 were determined on the basis of reports of eight different studies on nasal carriage carried out between 1975 and 1991, while the study disclosed in document D4 was carried out in the year 2000.

11. In the board's judgement, the skilled person would not have considered that the nasal carriage rates disclosed in document D11 would necessarily also apply to the later study disclosed in document D4. This is so, firstly, because document D11 also discloses that the range of carriage rates reported is large, that older studies tended to find higher carriage rates and that changes in S. aureus nasal carriage may have occurred over the years (see paragraph bridging pages 505 and 506). Secondly, because the skilled person would have also known that it could not be excluded that the patients of document D4 were treated topically to eliminate nasal carriage (see e.g. document D11, page 505, right hand column, first paragraph).

12. Hence, the board concludes from points 8 to 11 above that the skilled person would not have derived directly and unambiguously, using common general knowledge, from document D4 as a whole, the disclosure that nasal carriage-positive patients were vaccinated.

13. Lastly, also in view of the boards' established case law that the use of the same compound in the treatment of the same disease for a particular group of subjects can nevertheless represent a novel therapeutic application, provided it is carried out on a new group of subjects which has a distinct physiological or pathological status (see e.g. T 19/86, OJ EPO 1989, 24, reasons, point 8; and T 893/90, reasons, point 4.2), the board comes to the conclusion that the claimed subject-matter is novel. The patient group concerned is distinguished from the patient group of document D4 by both its physiological (nasal carriage) and pathological (higher risk of bacteremia) status.

14. In view of the observations in points 8 to 13 above the board thus concludes that the subject-matter of claims 1 to 10 is not anticipated by the disclosure of document D4.

15. Similar considerations likewise apply to document D9.

16. Therefore the board decides that auxiliary request 1A fulfils the requirements of Article 54 EPC.

T 0792/12 - Interruption by the Board

Key points

• " The fact, as here, that a Board is not convinced by the representative's arguments on a certain matter, and even interrupts the representative to clarify how the representative sees that a certain argument is at all relevant to the claim in question, or to the matter of novelty or inventive step which is being discussed, does not imply that a Board is not listening or is intent on sticking by its provisional opinion.
  In the present case a significant portion of the representative's submissions particularly with respect to the main request, were a simple repetition of the numerous written submissions prior to oral proceedings, and indeed often a repetition of what had been presented already orally but a few minutes earlier. "

EPO T 0792/12 - link

2. Procedural issues

2.1 The appellant's contention in the course of the discussion on the main request, that the Board seemed intent on sticking by its preliminary opinion, seemed not to want to listen to the arguments of the appellant and appeared to lack impartiality in the case by not being convinced by its arguments and interrupting on several occasions, is rejected.

2.2 In accordance with Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), the Chairman of the Board presides over the oral proceedings and ensures their fair, orderly and efficient conduct. When the Chairman sees a need to interject in a party's submissions to ensure that the proceedings are efficiently conducted, in particular to avoid a party repeating arguments, this is done. A Board is not required to passively listen to repetition. In the same way, a Chairman, or indeed any member of the Board, may interrupt when it is felt necessary to ask questions which the Board for example finds important for reaching its decision. The appellant's insistence that the Board not make any interruption during its pleadings, which it considered to indicate a lack of impartiality, is a misconception by that party of what constitutes a fair hearing.

2.3 The fact, as here, that a Board is not convinced by the representative's arguments on a certain matter, and even interrupts the representative to clarify how the representative sees that a certain argument is at all relevant to the claim in question, or to the matter of novelty or inventive step which is being discussed, does not imply that a Board is not listening or is intent on sticking by its provisional opinion. In the present case a significant portion of the representative's submissions particularly with respect to the main request, were a simple repetition of the numerous written submissions prior to oral proceedings, and indeed often a repetition of what had been presented already orally but a few minutes earlier. It is here of relevance to note that, when interrupted on one last occasion so as to limit further repetition, the representative of the appellant himself argued that during his submissions he had in fact made two new points not mentioned in writing (a general reference to T56/87 and a reference to Article 69 EPC - see above, both duly noted and commented upon in the course of the debate by the Board). The objections of the appellant are, at least for these reasons, unfounded.