T 1024/01 (Isolation of nucleic acid/AKZO) 06-04-2004

I. The appeal lies from the interlocutory decision of the opposition division issued on 30 July 2001, whereby the European patent No. 0 389 063 (European patent application No. 90 200 678) with the title "Process for isolating nucleic acid" was maintained in amended form.

II. In its decision the opposition division held that, having regard to the prior art documents cited by the opponents, the subject-matter of claims 1 to 10 of the second auxiliary request filed during the oral proceedings was novel within the meaning of Article 54 EPC, and not obvious to the skilled person (Article 56 EPC). Thus, the patent was maintained on the basis of the second auxiliary request and the description amended accordingly.

III. Claim 1 of the second auxiliary request read:

"1. A process for isolating nucleic acid from a nucleic acid-containing complex biological starting material, characterized by mixing the complex biological starting material, a chaotropic substance and a nucleic acid binding solid phase comprising silica or a derivative thereof, separating the solid phase with the nucleic acid bound thereto from the liquid, whereafter thus obtained solid phase-nucleic acid complexes are washed and, if required, the nucleic acid is eluted from said complexes, wherein the starting biological material is selected from: whole blood, blood serum, buffy coat, urine, feces, liquor cerebrospinales, sperm, saliva, tissue, cell culture, foods products, vaccines, milk infected with a virus or a bacterium, vegetable material, gram-positive bacteria yeast, mould, body fluid and biological material possibly infected with virusses or bacteria."

Claims 2 to 10 concerned different embodiments of the process according to claim 1.

IV. Opponent 01 and opponent 02 lodged an appeal against the decision of the opposition division, filed a statement of grounds of appeal and requested that the decision be set aside and the patent revoked. The respondent (patent proprietor) requested that the appeals be dismissed. Opponent 02 and the respondent requested oral proceedings in the event that the board did not intend to grant their respective requests. Opponent 01 withdrew its appeal in a letter dated 5 April 2004.

V. The parties were summoned to oral proceedings. In a communication pursuant to Article 11(1) of the Rules of Procedure of the Boards of Appeal sent with the summons, the board expressed its provisional opinion on procedural matters arising from the submissions of the parties, as well as on substantive matters in connection with Articles 123(2) and 56. EPC.

VI. Oral proceedings took place on 6 April 2004 in the absence of the appellant (opponent 02), who had informed the board that it would not attend. In response to issues relating to Article 123(2) EPC raised by the board in its communication and during the oral proceedings, the respondent filed an amended main request that replaced the main request previously on file. Claim 1 of the amended main request differed from the corresponding claim in the set of claims allowed by the opposition division (see section III above) in that the terms "tissue, cell culture", "milk infected bacteria yeast, mould, body fluid" and "virusses" were replaced by "tissues and cell cultures", "milk infected bacteria, yeasts, moulds, body fluids" and "viruses", respectively.

VII. The documents referred to in the present decision are the following:

(S1): US 4 483 920;

(S5): Kristensen, T. et al., Nucleic Acids Research, July 1987, Vol. 15(14), pages 5507 to 5516;

(S7): BIO 101 Inc., 1986, Instructions sheet for the Geneclean kit;

(S8): WO 87/06621;

(S9): Manser, T. and Gefter, M.L., April 1984, Proc. Natl. Acad. Sci. USA, Vol. 81, pages 2470 to 2474.

VIII. The submissions made in writing by the appellant, as far as they are relevant to this decision, may be summarised as follows:

Claim 1 insofar as it related to "vegetable material, gram-positive bacteria, yeasts and moulds" as starting materials, did not meet the requirement of industrial applicability (Article 57 EPC) and/or solve the problem of isolating nucleic acid from complex, untreated biological materials, because such materials would require pre-treatment.

In giving weight and importance just to the examples in document (S1) while neglecting or downgrading to a "speculative part" the teaching given in the generic disclosure of (S1), the opposition division made an erroneous assessment both from a legal and a technical standpoint. The actual teaching of document (S1) focused on a direct immobilization of RNA from cells, ie from a non-purified, complex material. The examples given in (S1) were directed to demonstrate partial aspects of the general method taught in (S1). The choice in Example 4 of one of the filter materials (nitrocellulose) indicated in the generic disclosure and demonstrated in Example 1 to be suitable to immobilize RNA, did not disprove the usefulness of the other one, ie of glass fibres.

Both (S8) and (S9) disclosed the technical problem of achieving a purification of nucleic acids directly from complex materials without requiring a prior purification, and the solution thereto consisting in the taught "principle of immobilization" by using a chaotrope and a solid binding support. Document (S8), while indicating nitrocellulose as a preferred filter material, still indicated to the skilled man the existence of other possibilities, thus suggesting to him the possibility of broadening the "spectrum" of filters still usable in the disclosed method.

While no more citable against novelty, document (S5) remained a particularly relevant reference against the inventive step by teaching the usefulness of a glass support in binding non pre-purified nucleic acid directly from mixtures thereof with further components. Also document (S7) suggested to the skilled man the possibility of using glass for isolating nucleic acids from mixtures with proteins in the presence of a chaotrope (under the Heading "Removing RNA and proteins").

The skilled man not only could have, but also would have used, or at least would have made an attempt to use, glass in the method of (S8) or (S9), as an alternative to nitrocellulose with a good expectation of success based on the disclosure given in (S1), (S5) or (S7).

IX. The respondent's submissions in writing and at oral proceedings may be summarized as follows:

Document (S1) solely disclosed the use of nitrocellulose filters in relation to the binding of mRNA directly from dissolved cells. The authors of (S1) did not contemplate the use of any other filter materials or the binding of other nucleic acids.

In document (S5) nucleic acid was isolated from a phage suspension by subjecting the suspension to a precipitation with acetic acid, and applying the precipitate to a glass fibre filter. Although the procedure was identified as simple and rapid, it was not a one-step procedure as in the present invention.

Starting from document (S8) as the closest prior art, the problem to be solved by the invention was to provide a non-selective process for isolation of nucleic acids without pre-treatment of the biological material. By "non-selective" it was meant that essentially all kinds of nucleic acid (ssDNA, dsDNA, mRNA, tRNA and rRNA) present in the starting material could be isolated by the process according to the invention. The claimed processes did not require a previous purification or isolation treatment of the starting material by which the target nucleic acid was isolated from its accompanying components (and thereby purified). Cell permeabilization as required for some of the starting materials mentioned in claim 1 (eg vegetable material) was not considered a pre-treatment in the context of the invention.

X. The appellant requested in writing that the decision under appeal be set aside and the patent revoked.

XI. The respondent requested that the decision under appeal be set aside and the patent maintained on the basis of the main request filed during the oral proceedings or on the basis of one of auxiliary requests 1 to 3 filed on 5 March 2004.