T 98/09 – Singled Out

Claim 1 of the opposed patent read :

Compositions for controlling pests of plants, which compositions comprise compounds of the general formula (I)

in which

X represents =CH– or =N–,

E represents NO2 or CN,

R represents heteroatylmethyl having up to 6 ring atoms and N, O, S as heteroatoms, which are optionally substituted by alkyl having 1 to 4 carbon atoms, alkoxy having 1 to 4 carbon atoms, alkylthio having 1 to 4 carbon atoms, haloalkyl having 1 to 4 carbon atoms and 1 to 5 halogen atoms, where the halogen atoms are identical or different, hydroxyl; halogen; cyano; nitro; amino; monoalkyl- and dialkylamino having 1 to 4 carbon atoms per alkyl group,

A represents hydrogen or C1-4-alkyl,

Z represents C1-4-alkyl or -NH(C1-4-alkyl) or

A and Z together with the atoms to which they are attached form a saturated or unsaturated 5- to 7-membered heterocyclic ring which may contain a further one or two identical or different heteroatoms and/or hetero groups, possible heteroatoms being oxygen or nitrogen and possible hetero groups being N-alkyl, where the alkyl of the N-alkyl group contains 1 to 4 carbon atoms,

in a mixture with the azole derivative of the formula

in a synergistically effective ratio.

The Opposition Division revoked the patent.

Before the Board, the patent proprietor filed a new main request, claim 1 of which read:

Use of compositions comprising a compound selected from group I

in a mixture with an azole derivative of the formula

for controlling pests of plants, wherein the relative weights of the active compounds in the mixture are such that there is a synergism with respect to the pests of plants.

Claim 1 of the first auxiliary request was further limited to “controlling wheat pests and fungal attacks on vegetables, wine and fruit”.

In claim 1 of the second auxiliary request the list of compounds of group I in claim 1 of the main request was limited to imidacloprid:

The Board found these claims to violate A 123(2):

*** Translation of the German original ***

Main request

[2.1] Originally filed claim 1 is directed at compositions comprising compounds of general formula (I) in mixture with fungicidal active compounds. In claim 1 of the main request, the component of formula (I) has been limited so as to be chosen from a list of six specific compounds. The second compound has been limited to a single compound, cyproconazol (II-4) […].

In the claims as originally filed there was no reference to specific compounds. Therefore, it has to be checked whether the combination of components according to claim 1 of the main request can be derived directly and unambiguously from the application as originally filed.

According to the first paragraph of the description, the invention concerns compositions for controlling pests of plants comprising a combination of certain agonists or antagonists of the nicotinergic acetylcholine receptors of insects with fungicides, as well as their use for controlling pests of plants.

From page 2, line 16, to page 5, line 3, the insecticidal active compound is defined by general formulas (I), (Ia) and (Ib). This is followed by a list of single compounds (page 5, lines 5 to 10), i.e. the six insecticides that have now been incorporated into claim 1 […].

The compositions to be used as fungicides are mentioned in a lists of 47 individual compounds or groups of compounds (pages 6 to 23). Cyproconazol appears among them, on page 6, line 12. This is the only place in the original application where cyproconazol is mentioned.

Therefore, in the present case, in order to arrive at the subject-matter of claim 1, all alternatives with the exception of one have been deleted from the list of possible fungicides. So cyproconazol has been picked from a voluminous list of alternatives without there being any indication in the original application that this compound is preferred in any way. Simultaneously, the compounds of group (I) have been limited to a list of six specific insecticides. As the definition of the fungicide component is not a list any more, [the subject-matter] has been fixed to six individual combinations of active compounds (i.e. cyproconazol in mixture with the respective listed insecticides), which had not been disclosed in this individualised manner.

As a consequence, the originally filed description cannot provide any support of claim 1 of the main request.

Contrary to the opinion of the [patent proprietor], even a deletion from a list can correspond to an inadmissible extension, [in particular] if the picking of a single active compound leads to a selection of combinations which are logically (denkgesetzlich) comprised by the original application but which have not been specifically disclosed. According to the established case law of the Boards of appeal such a selection is an inadmisisble extension and, therefore, to be considered to be a violation of A 123(2) (see, e.g. T 727/00 [1.1.4], T 686/99 [4.3]).

Auxiliary request 1

[2.2] The reasons under [2.1] also apply to claim 1 of auxiliary request 1 because this claim contains all the features of the main request that are relevant for the above argumentation […].

Auxiliary request 2

[2.3.1] In claim 1 of auxiliary request 2 the insecticide was further limited to the compound imidacloprid […]. Thus the composition to be used is determined to be a mixture of imidacloprid and cyproconazol.

In addition to the passages of the originally filed description already discussed, the [patent proprietor] has referred to the examples as providing support of this combination of active compounds.

On page 30, lines 20 to 22 of the description, the following is disclosed:

“In the examples that follow, imidacloprid is employed as active compound of the formula (I). The fungicidal active compounds also used are stated in the examples.”

In examples A to F that follow mixtures of imidacloprid with different fungicidal active compounds are used. However, none of these mixtures contains cyproconazol. Therefore, the specific combination of imidacloprid and cyproconazol is not directly and unambiguously disclosed in the examples.

The Board agrees with the [patent proprietor] that in the exemplary embodiments imidacloprid is the only insecticidal active compound. However, this compound was only disclosed in the context of specific fungicidal active compounds. Therefore, only the explicitly mentioned combinations are directly and unambiguously disclosed in the examples. There is no hint in the original application according to which the component imidacloprid is to be picked from the specific context of the examples and to be considered to be preferred in a more general context. Thus the argument of the [patent proprietor] according to which the combination of imidacloprid with all fungicides mentioned in the application has been disclosed in the original application cannot be endorsed.

As already mentioned under point [2.1], the general part of the original description discloses imidacloprid within a list of six equivalent (gleichwertig) members, and cyproconazol as a member of a quite voluminous list. In the present case, therefore, there have been deletions of all but one components in two lists. This leads to a selection of a concrete combination consisting of imidacloprid and cyproconazol, which had not been disclosed originally in this individualised manner.

[2.3.2] The decisions cited by the [patent proprietor] are to be commented as follows:

In decision T 1253/07 [2.3], the limitations of claim 1 of the main request were considered to be admissible because , in view of the examples the skilled person would have directly and unambiguously correlated the subgroup of safeners of formula (III) to the herbicide 3-2. By contrast, the present examples do not provide any support for the combination of imidacloprid and cyproconazol, as already explained under point [2.3.1] above.

In the case underlying decision T 783/09, one paragraph of the application as filed disclosed two DPP-IV-inhibitors “LAF 237” and “DPP728” to be particularly preferred in combination of 22 anti-diabetic compounds. Under the particular circumstances of the case the competent Board has come to the conclusion that this resulted in a direct and unambiguous individualised disclosure of each combination of each single anti-diabetic compounds mentioned and “LAF237” and “DPP728”, respectively (see point [5] of the reasons). This situation is not comparable with the present situation, be it only because in the relevant paragraph of page 5 of the present application as filed, imidacloprid is disclosed in a list of six equivalent members.

Therefore, the Board comes to the conclusion that the case law cited by the [patent proprietor] is not relevant for the present case. […]

The appeal is dismissed.

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