T 1598/13 (Lipase containing detergent compositions/P&G) 08-01-2016

Main request - Admissibility of the request

1. The set of claims at issue was only filed (as seventh auxiliary request) under cover of the appellant's statement of grounds of appeal, as one of three new claims requests.

1.1 The board does not consider that filing three auxiliary claims requests in addition to the ones that had already been pending in the opposition proceedings is a priori excessive and objectionable in the present case. The board accepts that the filing of these amended sets of claims, including the one at issue, can be considered to represent a legitimate attempt to react to and overcome objections under Article 123 EPC discussed at the first instance oral proceedings and dealt with in detail in the decision under appeal. This was also not disputed by the respondents.

1.2 The board thus decided to admit the main claim request at issue into the proceedings despite its late filing (Article 12(4) RPBA).

Main request - Allowability of the amendments

2. The requirements of Article 123(2) EPC

2.1 Claim 1 at issue (supra) differs from claim 1 as granted in that the definition of the lipase component 1 was amended to read "a lipase which is a polypeptide having the amino acid sequence 1 - 269 of SEQ. ID. No: 2 of US 5869438 with the mutations T231R and N233R with reference to the said SEQ. ID. No: 2".

The respondents considered that this amendment was objectionable under Article 123(2) EPC.

2.2 The board notes that this specification of the lipase finds basis in the application as filed on page 3, last paragraph, and page 4, first paragraph. These relevant passages of the description read as follows (emphasis added):

"The preferred lipases suitable for use in the present invention are described in [document D4] with reference to a lipase that is the wild-type lipase derived from Humicola Lanuginosa strain DSM 4109 (reference lipase). The reference lipase is also referred to as Lipolase (registered trade name of Novozymes). It is described in ... and has the amino acid sequence shown in positions 1 - 269 of SEQ ID No 2 of US 5869438.

The most preferred first wash lipase for use in the present invention is available under the tradename LIPEX (registered tradename of Novozymes), a variant of the Humicola lanuginosa (Thermomyces lanuginosus) lipase (Lipolase registered tradename of Novozymes) with the mutations T231R and N233R."

2.3 The first of the paragraphs cited supra refers to preferred lipase enzymes for use in the patent in suit. The reference common to all of these preferred lipases is the "wild-type lipase derived from Humicola Lanuginosa" with the "amino acid sequence shown in positions 1 - 269 of SEQ ID No 2 of US 5869438", also referred to as "Lipolase".

2.3.1 For the board, the wording "derived from" implies that the enzyme is defined by the amino acid sequence indicated, but leaves it open whether the enzyme was actually expressed by H. lanuginosa or another host organism.

2.3.2 At the oral proceedings, the appellant argued that the Lipolase enzyme could be produced by different host organisms. Since this was not disputed by the respondents, the board takes the view that the reference to Lipolase does not imply further implicit enzyme properties which would depend on the host organism that actually expressed the enzyme, as argued by the respondents.

2.3.3 The board thus holds that within the context of the application the reference lipase ("Lipolase") is not characterised by mandatory features other than the amino acid sequence "shown in positions 1 - 269 of SEQ ID No 2 of US 5869438".

2.4 Hence, the board holds that that the person skilled in the art the following would gather the following from the second paragraph quoted under 2.2, supra:

(a) A "variant" of Lipolase is the most preferred first wash enzyme. Based on the considerations under 2.3.3, supra, this variant of Lipolase is not defined by parameters other than

- the amino acid sequence "shown at 1 to 269 of SEQ ID No 2" described in the cited US patent,

- but modified by the two specific mutations T231R and N233R.

(b) One such variant of Lipolase is commercially available under the tradename LIPEX.

2.5 The respondents argued that the mutations T231R and N233R were, according to the application as filed, only disclosed in connection with and, hence, inextricably linked to the commercial product LIPEX, which had further implicit properties like a specific glycosylation pattern and/or could also comprise further mutations besides T231R and N233R, and that the definition of the lipase in claim 1 at issue thus resulted from an intermediate generalisation.

2.6 The board holds however, that the person skilled in the art unambiguously derives from the description of the application as filed that all lipases characterised by the same specific primary amino acid sequence as Lipolase, i.e. the "amino acid sequence of positions 1 - 269 of SEQ. ID. No: 2 of US 5 869 438", but modified only by mutations T231R and N233R, are lipases preferred for being used according to the invention.

In view of this finding, and considering that the term "LIPEX" does not appear in the claims according to the request at issue, the documents filed by the parties in support of the controversial view on the possible meaning to be given to "LIPEX" need not be dealt with here.

2.7 For the board, the replacement of the lipase definition of claim 1 as granted by the more limiting and precise features incorporated into claim 1 and defining the lipase in terms of the specific amino acid sequence indicated does not, therefore, generate subject-matter which is not disclosed in the application as filed. A detergent composition comprising such a lipase and encapsulated perfume particles as defined in claim 1 also forms part of the direct and unambiguous disclosure of the application as filed.

2.8 Merely for the sake of completeness the board acknowledges the undisputed fact that the SEQ ID referred to in claim 1 is given in columns 49 and 50 of document US 5 869 438 A and notes that the de facto incorporation by reference of the SEQ ID is unambiguous and was not objected to by the respondents.

2.9 Claims 2 to 9 are identical to granted claims 2 to 9 and were not objected to as such under Article 123(2) EPC.

2.10 In the board's judgement, the claims according to the appellant's main request are thus not objectionable under Article 123(2) EPC.

3. The requirements of Article 123(3) EPC

The board is also satisfied that, compared to claim 1 as granted, the protection conferred by claim 1 at issue is not extended. Since the respondents did not raise objections under Article 123(3) EPC with regard to the claim request at issue, detailed reasons need not be given here.

4. The requirement of clarity - Article 84 EPC

4.1 Respondent I objected to the clarity of the wording "with the mutations T231R and N233R" used in claim 1 at issue, comparing it to the wording "comprises the mutations T231R and N233R" present in claim 1 as granted. It argued that it would not be unambiguously clear whether in the context of claim 1 at issue "with" meant "comprising" or "having only".

4.2 In this connection it referred to page 4, first paragraph, of the application as filed, where it was stated that the most preferred enzyme LIPEX was a variant of Lipolase with the mutations T231R and N233R, and that the person skilled in the art would understand this to mean that LIPEX comprised only those two mutations as compared to the reference lipase.

4.3 The board holds that for the skilled person, the wording used in claim 1 (emphasis added) "a lipase which is a polypeptide having the amino acid sequence ... with the mutations T231R and N233R" unambiguously expresses that said amino acid sequence 1 - 269 must be present and must contain only the two specific mutations T231R and N233R, further mutations at other positions of said sequence thus being excluded.

4.4 For the sake of completeness, the board notes that this reading of claim 1 is fully in line with the passage bridging pages 3 and 4 of the application as filed, where it is expressly indicated that preferred lipases for use according to the invention are described in D4. D4 describes variants of the very same reference lipase as the patent in suit, including the variant comprising only the two mutations T321R and N233R, (D4: page 4, first entry in table).

Whether or not commercial "LIPEX" products contain or contained variants with other or more mutations is thus not of relevance in the assessment of the clarity of claim 1 at issue.

4.5 Hence, in the board's judgement, no lack of clarity arises from the amendments made to the claims as granted. The claims according to the main request at issue are thus not objectionable under Article 84 EPC.

Remittal

5. The appealed decision of the opposition division dealt exclusively with the requirements of Articles 123(2) and 84 EPC.

5.1 The respondents did not call into question the board's intention to remit the case to the opposition division if one of the pending requests were found to meet the requirements of Articles 123 and 84 EPC.

5.2 Under the given circumstances, the board finds it appropriate to remit the case to the opposition division pursuant to Article 111(1) EPC, for consideration of the other issues raised in the first instance proceedings, in accordance with the appellant's request to this end.