EP 3 525 585 B1 relates to a method for controlling Septoria tritici resistant to succinate dehydrogenase inhibitor fungicides on cereal plants, comprising treating the plants, their seed or the soil with a fungicidally effective amount of pydiflumetofen.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
One of the topics at stake was added matter. We will only deal with this one.
Claim 1 as granted reads:
“1. A method for controlling Septoria tritici on cereals, comprising treating the plants, their seed or the soil with a fungicidally effective amount of pydiflumetofen, wherein the Septoria tritici is resistant to SDHI fungicides due to a T268I amino acid exchange in SDH subunit B, or a H152R, T79N, N86S, V166M or W80S amino acid exchange in SDH subunit C”. The underlined part was added to claim 1 as filed.
The paragraph bridging pages 1 and 2 of the original description reads:
Monitoring data published at the FRAC webpage indicated the finding of isolates of Septoria tritici with a moderate sensitivity loss, first with the mutations C- T79N (France) and C-W80S (UK) in 2012, followed by C-N86S (Germany) in 2013, B-N225T (Ireland) and C-T79N (Germany) in 2014. In 2015 isolates with C-V166M, B-T268I, C-N86S and C- T79N were detected in UK, France and/or Ireland. Additionally, isolates with a stronger resistance response were detected in Ireland and UK in 2015, which carry the C-H152R (FRAC webpage; Dooley H., Shaw M.W., Mehenni-Ciz J., Spink J. and Kildea S. (2016). Detection of Zymoseptoria tritici SDHI-insensitive field isolates carrying the SdhC- H152R and SDHD-R47W substitutions. Pest Management Science DOI 10.1002/ps.4269).
The first sentence after the paragraph bridging pages 1 and 2 as filed reads:
Surprisingly, we have found that the application of pydiflumetofen show an unexpected fungicidal action towards Septoria tritici, being resistant against SDHI fungicides.
The opponent’s point of view
The opponent objected that the addition of the above six alternative mutations to claim 1 of the main request added subject-matter.
The opponent submitted that the paragraph bridging pages 1 and 2 of the application as filed could not represent any basis for the six mutations added in claim 1 of the application as filed since it belonged to a part of the description discussing the prior art. It relied on T 1652/06 to support its submission.
The board’s decision
For the board, the first sentence after the paragraph bridging pages 1 and 2 of the application as filed, on page 2, lines 10 and 11, defines the invention and refers to resistance against SDHI fungicides. This resistance against SDHI fungicides cannot but be the resistance defined in the paragraph bridging pages 1 and 2, something which is not inconsistent with the conclusion drawn in T 1652/06.
Contrary to the situation in T 1652/06, in the case at hand there is, a specific link in the application as filed between the resistance against SDHI fungicides mentioned in the context of the invention and the six specific mutations mentioned when discussing the prior art.
The board acknowledged that the paragraph bridging pages 1 and 2 of the application as filed discloses a list of eight mutations in Septoria tritici and only six out of these eight mutations have been added to claim 1 as filed.
The board added that, a single selection of six out of the eight mutations in the paragraph bridging pages 1 and 2 of the application as filed does not, however, add subject-matter.
Comments
Even if it could be admitted that there is a link between the paragraph bridging pages 1 and 2 and the next one, it is indisputable that this paragraph describes the prior art. This is a first problem with the present decision.
Further to T 1652/06, referred to by the opponent, other decisions came to the conclusion that features belonging to the prior art cannot be the basis for amendments to the claims by such an addition of features belonging to the prior art.
In T 2241/15, Reasons 4.4, second paragraph, the board held that the “identification of a drawback in the prior art is not a direct and unambiguous disclosure of subject-matter of the invention not having that drawback”, In view of T 2241/15 alone, the present decision is thus difficult to follow.
In T 582/08, Reasons 2.1.1, last paragraph and 2.1.2, the board held that the prior art cannot be regarded as a basis for introducing an feature, even if this addition of this feature might be obvious to the skilled person.
The biggest problem with this decision is when the board held, without any form of explanation, that “a single selection of six out of the eight mutations in the paragraph bridging pages 1 and 2 of the application as filed does not, however, add subject-matter.
That one selection in a list does not represent added matter is accepted case law. However, according to the case law of the boards, without a pointer towards a particular combination, the corresponding selection of features does not result directly and unambiguously for the person skilled in the art from the content of the application as filed. See Case Law of the Boards of Appeal, 10th edition 2022, II.E.1.6.1.
A multiple selection from one list or a selection from a plurality of lists cannot be defined as the most preferred embodiment in order to become allowable. See for instance T 1306/12, Reasons 2.3 and 2.4.
In T 2363/10, Reasons 6.6, the board held that the selection of features disclosed in six out of one hundred and forty three bullet points represents a particular selection which is however not disclosed as such. The skilled person has no hint or incentive to choose exactly such a combination of features.
A similar conclusion was arrived at in T 2206/13.
Had all eight mutations been taken over in the claim, there would not be any added matter. There are no reasons to be found in the application as filed to explain why those six mutations should be specifically chosen, and the board has not given any. This could, in principle, be a reason to file a petition for review.
One possible conclusion is, that the proprietor found an open ear at the board, and the board was deaf to the arguments of the opponent.
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