T 849/10 – Natural Selection

This is an appeal by an opponent whose opposition had been rejected.

Claim 1 of the patent as granted read:

1. A cleaning composition comprising a surfactant and a proteinic substrate based oxygenase, selected from the group consisting of:

1.13.11.11 TRYPTOPHAN 2,3-DIOXYGENASE

1.13.11.20 CYSTEINE DIOXYGENASE

1.13.11.26 PEPTIDE-TRYPTOPHAN 2,3-DIOXYGENASE

1.13.11.29 STIZOLOBATE SYNTHASE

1.13.11.30 STIZOLOBINATE SYNTHASE

1.13.12.1 ARGININE 2-MONOOXYGENASE

1.13.12.2 LYSINE 2-MONOOXYGENASE

1.13.12.3 TRYPTOPHAN 2-MONOOXYGENASE

1.13.12.9 PHENYLALANINE 2-MONOOXYGENASE

1.13.12.10 LYSINE 6-MONOOXYGENASE

1.13.99.3 TRYPTOPHAN 2’-DIOXYGENASE

1.14.11.1 gamma-BUTYROBETAINE DIOXYGENASE

1.14.11.2 PROCOLLAGEN-PROUN,2-OXOGLUTARATE 4- DIOXYGENASE

1.14.11.4 PROCOLLAGEN-LYSINE,2-OXOGLUTARATE 5- DIOXYGENASE

1.14.11.7 PROCOLLAGEN-PROLIN.2-OXOGLUTARATE 3- DIOXYGENASE

1.14.11.8 TRIMETHYLLYSINE,2-OXOGLUTARATE DIOXYGENASE

1.14.11.16 PEPTIDE-ASPARTATE ß-DIOXYGENASE

1.14.16.1 PHENYLALANINE 4-MONOOXYGENASE

1.14.16.2 TYROSINE 3-MONOOXYGENASE

1.14.16.4 TRYPTOPHAN 5-MONOOXYGENASE

1.14.17.3 PEPTIDYLGLYCINE MONOOXYGENASE.

The opponent inter alia argued that this claim was not novel.

The Board disagreed:

[2.1] The [opponent] argued that the patent-in-suit together with D8 and D9 covered a total of 119 oxygenases, which amounts to a major part of the total of approximately 300 enzymes of EC 1.13 and 1.14. Since the [opponent] did not regard this to be a “narrow” selection, the criteria for a selection invention would allegedly not be met.

NB: D8 and D9 were parallel applications filed on the same day as the application on which the impugned patent is based.

[2.2] The Board cannot accept [opponent’s] arguments. Given the fact that D8 and D9 have the same filing date as the patent-in-suit and therefore do not represent state of the art according to A 54(2) EPC 1973 or A 54(3), these documents cannot be used for any novelty objection.

[2.3] Furthermore, the patent-in-suit does not define a sub-range of a broader numerical range, but a selection of individual (classes of) enzymes mentioned distinct from the ones used in D7. Thus, for the present case the criteria for selection inventions cannot be applied.

[2.4] Finally, the [opponent] has not credibly shown, that any of the documents cited in the course of the appeal procedure discloses an enzyme encompassed by the list of Claim 1 as part of a cleaning composition.

[2.5] As Claims 17-22 describe the use of enzymes identical to the ones used in Claim 1, similar considerations apply for these claims too.

[2.6] Therefore novelty of the claimed subject-matter of the main request is given.

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