Interpretative Spotlight: “Plurality”

The opposed patent was directed at a method of simultaneously monitoring the expression of a multiplicity of genes. Step (b) of this method consisted in

“providing a plurality of different probes for analysis of each of the RNA transcripts that are to be monitored; said probes being immobilized as an array on a surface of a substrate in known locations at a density greater than 60 different probes per cm²; said array probes including match and control probes; the array comprising more than 100 different probes, each probe attached to the surface through a single covalent bond”.

The Opposition Division found claim 1 as granted to violate A 123(2) and maintained the patent on the bases of the first auxiliary request. In claim 1 as maintained step (b) read:

“providing a plurality of different probes for analysis of each of the RNA transcripts that are to be monitored; said probes being immobilized as an array on a surface of a substrate in known locations at a density greater than 60 different probes per cm²; said array probes including control probes and a plurality of match probes; the array comprising more than 100 different probes, each probe attached to the surface through a single covalent bond;” (my emphasis)

Both the patent proprietor and the opponend filed appeals.

Claim 1 of the main request before the Board comprised a step (b) that read:

“providing a plurality of different probes for analysis of each of the RNA transcripts that are to be monitored; said probes being immobilized as an array on a surface of a substrate in known locations at a density greater than 60 different probes per cm²; said array probes including control probes and, for each of the RNA transcripts that are to be monitored, a plurality of match probes; the array comprising more than 100 different probes, each probe attached to the surface through a single covalent bond;” (my emphasis)

The Board found this request not to comply with the requirements of A 123(2):

[6] The passages of the application as filed cited by appellant I as providing a basis for the amendment introduced into part(b) of claim 1 of the Main Request refer to a “large numbers of probes” (cf. page 21, lines 1-3, 15, 19-20 and page 22, lines 9-10), to a very specific number of probes (cf. page 5, lines 15-17 and page 22, lines 6-8) or to probes in general without further definition (cf. page 34, lines 18-19, page 36, lines 10-11, page 37, lines 15-16 and page 38, lines 5-7, 11-12). None of these references contains the term “plurality” which is found only in the context of a computer-implemented method of monitoring expression of genes which is different from the method of claim 1 (cf. page 10, lines 21-30 and claims 65 and 73 of the application as filed).

[7] The board agrees with [the patent proprietor] that the expression “a plurality” means “more than one” or “at least two” and thereby, it excludes a minimal embodiment containing only a single match probe; an embodiment considered by the OD to be embraced by the granted claims and to lack a formal basis in the application as filed […]. However, the Main Request embraces embodiments that make use of a limited low number of match probes, such as “at least two” or “more than one”, i.e. two, three, etc. Neither the references to “a large number of probes” nor those to a specific number of probes (“more than 10”, “most preferably more than 1000”, “at least 10”, etc.) provide a basis for embodiments comprising these limited low number of probes. Likewise, the references founds in the application as filed to probes in general have to be read in the light of these other references (“a large number of probes”, “more than 10”, etc.). The expression “a plurality” cannot be directly and unambiguously derived from these references to probes in general.

[8] [The patent prorietor] has also referred to the expression “a multiplicity of probes” found in the application as filed in the context of methods for selecting and optimizing a set of probes. Although these methods are different from that of claim 1, [the patent prorietor] argues that it is directly derivable from the whole disclosure of the application as filed that these selected and optimized “multiplicity of probes” are to be used in the method of claim 1. Thus, the selected and optimized “multiplicity of probes” by the former methods are in a way equivalent to, and provide a basis for, the “plurality of probes” in the method of claim 1 […].

[9] The board cannot follow this argument. It is arguable whether all, some or only a few probes of these “multiplicity of probes” selected and optimized by the methods disclosed in the application as filed are, always and exclusively, to be used in the method of claim 1. In the absence of a clear disclosure linking, in a straightforward manner, these selection and optimizing methods with that of claim 1, the use of these “multiplicity of probes” indicated by [the patent proprietor] may well be obvious to the skilled person. However, according to the case law, obviousness is not a criterium for assessing whether subject-matter is supported by the application as filed. It is also not a question of reading the disclosure of the application as filed with a mind willing to understand but only of assessing whether the subject-matter is directly and unambiguously derivable from the application as filed, either explicitly or implicitly (cf. “Case Law of the Boards of Appeal”, 6^th edition, III.A.7.1, page 347). In the board’s view, this is not so in the present case.

[10] Therefore, the Main Request is considered not to fulfil the requirements of A 123(2).

Should you wish to download the whole decision (T 1509/09), click here.

The file wrapper can be found here.