T 371/10 – Allow For Shrinking

All the parties appealed against the maintenance of the opposed patent in amended form.

The Board found the main and first auxiliary requests not to comply with A 123(2) and then dealt with the second auxiliary request, claim 2 of which read, in English translation: 

(NB: part (A) of claim 1 as granted comprised four alternatives (A1) to (A4), wherein (A2) covered “compounds of formula (A2)

and their esters and salts” ; in part (B), the changes with respect to claim 1 as granted are made apparent below)

Use of herbicide combinations for controlling harmful plants in rice crops, characterised in that the herbicide combination in question has a synergistically active content of

(A) a broad-spectrum herbicide from the group of the compounds consisting of (A2) glyphosate and its alkali metal salts or salts with amines and sulfosate, and

(B)  one or more a herbicides from the group of the compounds which consists of

(B1) foliar-acting and soil-acting herbicides which are effective selectively in rice against monocotyledonous and dicotyledonous harmful plants (residual action) from the group consisting of molinate, thiobencarb, quinclorac, propanil, pendimethalin, bispyribac-Na, LGC 40863, butachlor, pretilachlor, metolachlor, acetochlor, clomazone, oxadiargyl, sulfentrazone, MY 100, anilofos, cafenstrole (CH 900), mefenacet, fentrazamid, thiazopyr, oxadiazon, esprocarb, pyributicarb, azimsulfuron, azoles of the type of 1 -(3-chloro- 4,5,6,7-tetrahydropyrazolo-[l,5-a]pyridin-2-yl)-5-methylpropargylamino)-4-pyrazolylcarbonitrile thenylchlor, pyriminobac-methyl (KIH 6127), fluthiamide, mesotrione and nicosulfuron and

(B2) herbicides which are effective selectively in rice against dicotyledonous harmful plants and/or sedges from the group consisting of 2,4-D, MCPA, bensulfuron-methyl, ethoxysulfuron, metsulfuron, acifluorfen, cinosulfuron, pyrazosulfuron, imazosulfuron, cyclosulfamuron, chlorsulfuron, bromobutide, carfentrazone, bentazone, benfuresate, chlorimuron, dithiopyr, triclopyr and tritosulfuron and

(B3) foliar-acting herbicides which are effective selectively in rice against monocotyledonous harmful plants, from the group consisting of quizalofop-P, quizalofop, fenoxaprop-P, fenoxaprop, fluazifop-P, fluazifop, haloxyfop, haloxyfop-P, propaquizafop, clodinafop and cyhalofop or

(B4) foliar- and soil-acting herbicides which are effective selectively in rice against monocotyledonous harmful plants from the group consisting of sethoxydim, cycloxydim, clethodim and clefoxidim

and that the rice crops are tolerant to the herbicides (A) and (B) contained in the combination, if appropriate in the presence of safeners.

The opponents objected that this claim violated A 123(2):

*** Translation of the German original ***

[3.2] The [opponents] have objected that the combinations of claims 2 and 3, which have been obtained by deleting [compounds] from lists, go beyond the disclosure of the application as filed.

In claim 2, several compounds of the groups (A) and (B) have been deleted. However, these deletions do not lead to a limitation to individual herbicide combinations that have not been explicitly disclosed (“singling out”) but result in – admittedly limited – generic residual subject-matter. As such shrinking (Schrumpfung) of the scope of the claim does not result in a new teaching, is not objectionable. The fact that in claim 2 now only one herbicide (B) is required only corresponds to the abandonment of part of the claimed subject-matter and does not generate a new subgroup that has not been originally disclosed (see T 615/95 [6]).

The same holds true for claim 3 of this auxiliary request.

[3.3] Therefore, the claims of the second auxiliary request comply with the requirements of A 123(2).

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