T 206/08 - Active, Passive, All The Same ?

This appeal is from the decision of the Opposition Division to revoke the opposed patent.

The Board found the main and first auxiliary requests on file to lack sufficiency of disclosure under A 83.

Claim 1 of the second auxiliary request on file read:

1. A detergent composition comprising from 0.005% to 0.1% pure enzyme by weight of total composition of a protease and from 0.00024% to 0.048% pure enzyme by weight of total composition of:

(a) an α-amylase characterized by having a specific activity at least 25% higher than the specific activity of Termamyl® at a temperature range of 25°C to 55°C and at a pH value in the range of 8 to 10, measured by the Phadebas® α- amylase activity assay comprising diluting said α-amylase in 50 mM Britton-Robinson buffer, adding 1 ml of this α-amylase solution to 5 ml 50 mM Britton-Robinson buffer containing one Phadebas® tablet suspended therein and measuring the absorbance at 620 nm after 10 or 15 minutes of incubation (testing time) in the range of 0.2 to 2.0 absorbance units; and

(b) the α-amylase according to (a) comprising the amino sequence shown in SEQ ID No. 1 or an α- amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.1 or;

(c) the α-amylase according (a) comprising the amino sequence shown in SEQ ID No.2 or an α- amylase being at least 80% identical with the amino acid sequence shown in SEQ ID No.2 or;

(d) the α-amylase according (a) comprising the following amino sequence in the N-terminal: His-His-Asn-Gly-Thr-Asn-Gly-Thr-Met-Met-Gln- Tyr-Phe-Glu-Trp-Tyr-Leu-Pro-Asn-Asp (SEQ ID No.3) or an α-amylase being at least 80% identical with the amino acid sequence shown (SEQ ID No.3) in the N-terminal

wherein the α-amylase is obtained from an alkalophilic Bacillus species and/or

is obtained from any of the strains NCIB 12289, NCIB 12512, NCIB 12513 and DSM 935.

The opponents argued that the expression “obtained from” did not comply with the requirements of A 123(2). The Board does not agree:

[5.1] In the [opponents’] opinion the wording “obtained from”, present twice in the final part of claim 1 of the second auxiliary request (for specifying the microorganisms from which the α-amylases (AAs) must be obtained […]), is not supported in the patent application as originally filed, because the meaning of this wording is possibly technically encompassed but not directly and unambiguously disclosed by the passages in the original description that define the AAs of the invention as “obtainable from” the relevant microorganisms. Nor would the expression “produced by” present in the […] originally filed description […] correspond to “obtained from”.

The Board notes that the [opponents] have provided no supporting evidence for the allegation that the expressions “produced by” and “obtained from” would be generally acknowledged to possess clearly distinct meanings.

It appears instead to the Board that the expression “produced by” is used in the referred passage […]

“In the context of the present invention, the term “obtainable from” is intended not only to indicate an amylase produced by a Bacillus strain but also an amylase encoded by a DNA sequence isolated from such a Bacillus strain and produced in an host organism transformed with said DNA sequence.”

to express substantially the same meaning normally given to “obtained from”, i.e. just to indicate that the enzyme has been synthesized by the specified microorganism(s).

Hence the Board concludes that the wording “obtained from” introduced in claim 1 does not violate A 123(2) already because it corresponds to the expression “produced by” of the above-cited passage of the original patent application.

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