T 510/10 – Distinct

This appeal was filed against the revocation of the opposed patent by the Opposition Division.

One of the questions discussed by the Board was the validity of the claim to priority for Claim 1 of the main request, which read:

1. A granule comprising an enzyme core, a hydrated barrier salt coated over the enzyme core, and one or more coating layers coated over the hydrated barrier material, wherein the barrier salt is magnesium sulfate heptahydrate, zinc sulfate heptahydrate, magnesium nitrate hexahydrate or magnesium acetate tetrahydrate, the barrier salt having moderate or high water activity.

The patent proprietor argued that this subject-matter was found in claims 1, 3, and 7 of the U.S. priority document. The claims contained in this document read (my emphasis):

1. A granule comprising an enzyme core and a barrier material, wherein the barrier material comprises a stably hydrated material.

2. The granule of claim 1, wherein the stably hydrated material is a stably hydrated salt.

3. The granule of claim 1, wherein the stably hydrated salt is selected from the group consisting of magnesium sulfate heptahydrate, zinc sulfate heptahydrate, copper sulfate pentahydrate, sodium phosphate dibasic heptahydrate, magnesium nitrate hexahydrate, sodium borate decahydrate, sodium citrate dihydrate and magnesium acetate tetrahydrate.

4. The granule of claim 1, wherein the barrier material is part of the enzyme core.

5. The granule of claim 1, wherein the barrier material is coated over the enzyme core.

6. The granule of claim 1, further comprising a layer of material between the enzyme core and the barrier material.

7. The granule of claim 1, further comprising a layer of material over the barrier layer and enzyme core.

The Board did not find the priority claim to be valid:

[1.1] Claim 1 of the main request refers to a granule comprising an enzyme core, a hydrated barrier salt coated over the enzyme core and a further coating applied over the hydrated barrier material. According to the Appellant this teaching can be found in the priority document in Claims 1, 3, 7.

[1.2] The Board cannot share this view. Claim 1 of the priority document discloses a granule comprising an enzyme core and a hydrated barrier material. Claim 3, lists salts to be used as barrier material and Claim 7, which exclusively refers to Claim 1, reports on an additional “layer of material over the barrier layer and enzyme core”.

[1.3] The wording of these claims does not necessarily mean that the barrier material forms a layer on the surface of the core which is then coated with the additional layer, as the wording used in Claim 7 also covers barrier layers in the enzyme core (priority document, page 3, fourth paragraph), i.e. that in such an embodiment the hydrate barrier salt is not coated over the core.

[1.4] Although a coating of the barrier material over the enzyme core is disclosed in Claim 5, this claim exclusively refers to Claim 1, as does Claim 7. Since Claims 5 and 7 describe two distinct embodiments, the combination of features cannot be considered to be disclosed.

[1.5] When considering the description of the priority document the situation does not change. The fourth paragraph on page 3 of the priority document defines that the barrier material may be dispersed throughout the core, may be a layer in the core or be coated onto the core. The second paragraph on page 4 states that the invention can comprise one or more coating layers, i.e. that one of more coating layers are optional.

[1.6] Thus, in order to arrive at the combination of features of Claim 1 of the main request a number of selections within the description of the priority document has to be made. The specific combination of features of Claim 1 has therefore not been disclosed in the priority document.

[1.7] This reasoning applies also to the auxiliary requests 1-4. In addition the fourth auxiliary request refers to a protein core, whereas in the priority document only an enzyme core is described.

[1.8] Therefore, none of these requests validly claims the priority date.

I think that in this particular case there was little (if any) hope for the priority claim to be considered valid. Be that as it may, this case confirms what I often say to my American colleagues, i.e. that if they are aiming at patent protection in Europe, they should use multiple dependent claims in their priority documents and in their PCT applications. These multiple dependencies can easily be removed before the USPTO - and other offices that do not accept them - at a later stage, but they may prove quite useful before the EPO. I know it is not easy for American patent drafters to overcome their habits, but doing so may really improve their situation in Europe.

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