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.
Comments
4 replies on “T 1503/23-Features from the prior art do not represent added matter?-A partial selection from a list does not represent added matter?”
Hello Thomas,
regarding the selection of 6 out of eight equal alternatives and T 2363/10:
Did not T 1506/13 teach that a deletion/limitation (of a generic list of 25 to a list of 3) can be allowable if it fulfils two conditions:
1) the deletion must not result in singling out any hitherto not specifically mentioned individual embodiment or group of embodiments, but maintains the remaining subject-matter as generic list differing from the original group only by its smaller size.
2) the deletion does not lead to a particular combination of a specific meaning which was not disclosed originally, i.e. it does not generate another invention, or in other words it merely restricts the required protection but does not provide any technical contribution to the originally disclosed subject-matter. (r. 4.2)
As far as I can tell from a very quick read of T 2363/10 the selection of six out of 143 bulletpoints and their combination with claim 1 resulted in “a particular selection which is however not disclosed as such” (r. 6.6). I.e. in T 2363/10 the proposed amendment did not meet the requirement of point 2) above.
In the present case, it appears to me at a first glance that the restriction merely results in a limited protection, and not in a particular combination of a specific meaning which was not disclosed originally.
Happy to hear your opinion on T 1506/13 as applied to the present situation. Do you consider that the fact that the relevant features were taken from a paragraph not directly relating to the sought after invention, but rather to the contribution of the prior art changes the take-away from T 1506/13?
@ Lukas Traub,
Thanks for a very interesting comment.
I had a look at T 1506/13 and at T 1374/07 which preceded T 1506/13.
In the passage bridging pages 1 and 2, I noted that
– The mutations C- T79N, C-W80S, C-N86S, B-N225T, C-V166M, B-T268I, C-N86S were associated with a moderate sensitivity loss,
– The mutations C-H152R and D-R47W were associated with stronger resistance response.
In claim 1 as granted, the following mutations were singled out: B-T268I C-H152R, C-T79N, C-N86S, C-V166M or C-W80S.
Not taken over in the list were B-N225T of the first list, and D-R47W of the second list.
I am not at all acquainted with the domain in suit, but from a strictly formal point of view, in the first list all C mutations with a moderate sensitivity loss were taken over in the claim, but only one of the two B mutations was taken over. I see here a first problem, as a selection has been made among the B mutations, which does not appear to be explained anywhere.
From the second list as selection has been made and only the C mutation has been taken over. Whilst I could be acceptable to add a C-mutation from the second list to the first list, it remains that the C mutation at stake, stems from a different list of mutations with a stronger resistance response.
What introduces added matter is that a mutation from a second list has been added to the first list, i.e. two lists have been mixed without a pointer from one list to the other. I am not in a position to decide whether the fact that the C mutation from the second list can be added to the C mutations from the first list as they have different effects.
Selecting only one of the B mutations in the first list is a first problem, be it only from a strictly formal point of view. This problem is compounded with the fact that there seems to have been a selection in a second list, without a pointer. My position could change, should the C mutation in the second list can be considered as a a pointer.
My reasoning is purely formal. No problems of added matter would be present if all 8 mutations in the two lists would have been taken over in the claim.
If the proprietor selected only 6 out of the 8 mutations he must have had his reasons, but those are not, at least for me, appaent and explainable.
As I can see the case, neither T 1506/13 nor T 1374/07 are applicable in the present case as to me the second condition of T 1506/13 is not fulfilled as two domains of different sensitivity are mixed. It is comparable to a selection in a preferred range with the selection in a more preferred range.
My reply to your question is thus the twofold:
– T 1506/13 does not appear applicable in the present case
– Even if T 1506/13 would have been applicable, the fact that the mutations at stake were defined in the prior art section of the patent would invariably have led to added matter. This is even the more so in view of the selection carried out.
It is the rather apodictic comment of the board 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” which made me react and single out T 1503/23. There is not the slightest hint of an explanation in this sentence.
@ Daniel X. Thomas
Thanks for your very interesting reply. After reading your argument, I am inclined to agree that the board should have spend additional reasoning as to why this selection does not add matter.
After my initial read I was under the impression that the board treated all 8 mutations as equal alternatives. Your comment made me realize that the mutations disclosed have to be analyzed in a more differentiated manner. I agree with the lists you identified and agree that the SdhC-H152R and SdhD-R47W are not equal mutations to the first list. This finding is further amplified by a quick glance at the cited prior art (DOI 10.1002/ps.4269).
There appears to be no specific pointer to a combination of the two lists, except that they both show varying resistance to fungicides (pydiflumetofen).
It appears to me that the board treated the selection of C-H152R from an individualized list of 2 not as an selection at all, hence coming to the conclusion that a combination of selections from a moderate resistance list and a high resistance list do not add matter.
In any case, I further agree with you in that I would have welcomed a more in-depth added matter analysis by the board deciding on T 1503/23.
@ Lukas Traub,
I am not a chemist/biologist, but my experience is, when it comes to added matter, it can be useful to prima facie have a very formal approach. This approach can always be revised taking into account specificities of the domain. When it is my domain of competence, not chemistry/biology, it is, in general, not necessary to take into account specificities of the domain.
This how I have proceeded in the present case, and I am pleased to see that, as specialist of the domain, you could agree with my views.
Should the patent be subject of litigation, I am not sure that it might survive. It will at least be necessary for a court to explain why the selection of 6 mutations over 8 disclosed, does not end up with added matter.