T 15/10 – Fishy

Patents are fun, not least because of the surprising things that may be claimed.

Claims 1 and 14 of the only request on file read:

1. A method of testing an avian for its predisposition for fishy taint in eggs comprising analyzing the nucleic acid of a sample comprising the gene encoding FMO3 or a corresponding mRNA for a nucleotide polymorphism which is linked to said predisposition, wherein a difference from the wild-type FMO3 sequence is indicative of fishy taint, said difference being the presence of a serine codon in a position corresponding to position 329 of chicken FMO3 as shown in SEQ ID NO: 25 or in a homologous position of other avian FMO3 (poly)peptides.

14. A method for selecting an avian or part of an avian, including their semen or eggs, comprising the steps of:
(a) testing for a predisposition for fishy taint in eggs comprising the steps of the method of anyone of claims 1 to 13;
(b) selecting the avian based on the information derived from said testing; and
(c) optionally, using said information for further breeding considerations.

Board 3.3.08 had to deal with an A 53(b) objection:

[2] The [opponent] has raised an objection under A 53(b) in its letter 24 September 2013 sent in reply to the Board’s communication pursuant Rule 15(1) RPBA. The objection is raised against claim 14, which the [opponent] argued to be directed to an essentially biological process for the production of animals.

[3] This objection has not been mentioned in the statement setting out the grounds of appeal, but the Board notes that the opposition was originally filed inter alia on the ground that the subject-matter of the patent was not patentable under A 53(b) […].

[4] The [opponent] has explained that it decided to raise the objection in view of the conclusion reached by the Enlarged Board of Appeal (EBA) in consolidated decisions G 2/07 and G 1/08 (see supra) with regard to the term “essentially biological” within the meaning of A 53(b). These decisions have been issued on 9 December 2010, ie. after the date of filing of the statement of grounds.

[5] Using the discretionary power conferred to it by Article 12(4) RPBA the Board, considering that this explanation justifies the late raising of the objection under A 53(b) in the appeal procedure, decides to admit the objection.

[6] The [opponent] argues that it applies the conclusion reached by the EBA in decisions G 2/07 and G 1/08 (with regard to processes for the production in plants) to processes for the production of animals. It considers that the process of claim 14 qualified as a non-microbiological process for the production of animals that is excluded from patentability for being “essential biological” because it contains a step of crossing the whole genomes of animals and a step of selecting of animals.

[7] The first question to be answered by the Board, before embarking on any further interpretation of the teaching of decisions G 2/07 and G 1/08, is whether claim 14 is actually directed to a process for the production of animals including a step of crossing the whole genomes of animals and a step of selecting of animals.

[8] Claim 14, which is expressis verbis directed to a method for selecting an avian (or part of an avian), comprises two compulsory steps (a) and (b) which can be supplemented by a third step (c). Step (a) refers to testing the avian or part thereof for predisposition for fishy taint in eggs. It is carried out using the method of claim 1 or claims dependent thereon. Step (b) concerns selecting the avian based on the conclusions drawn from the results of step (a) and step (c) concerns the use of these conclusions for further breeding considerations which may be breeding management considerations such as the propagation, culling and feeding of animals […] or the exclusion of animals with a predisposition to produce eggs with fishy smell from breeding programs […].

[9] This analysis clearly shows that claim 14 is not at all directed to a method of production of animals, let alone to a method comprising a step of crossing the whole genomes of animals. It features a method which provides information useful to manage animals depending on their predisposition to produce eggs with fishy odour or to pass on to the offspring specific alleles or variants of a gene responsible for developing such a phenotype […].

[10] The [opponent’s] argument is therefore not convincing and, consequently, claim 14 meets the requirements of A 53(b).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.