T 0239/95 (Herpes simplex viral proteins/AMERICAN CYANAMID CO.) 06-03-2001

Summary of Facts and Submissions

I. The appeal by the appellant (opponent) lies against the decision of the opposition division maintaining European patent No. 0 101 655 (application No. 83 401 476.3) in amended form.

II. The patent with the title "Production of Herpes Simplex viral proteins" was granted on the basis of 20 claims for all designated Contracting States except AT and 19 claims for AT. The relevant claims as granted for all designated Contracting States except AT are as follows:

"1. A DNA sequence coding for a polypeptide comprising the amino acid sequence of a Herpes Simplex virus type 1. or type 2 gD glycoprotein wherein the DNA sequence for the type 1 gD glycoprotein polypeptide comprises:

GGG GGG ACT GCC GCC AGG TTG GGG GCC GTG ATT TTG TTT GTC GTC ATA GTG GGC CTC CAT GGG GTC CGC GGC AAA TAT GCC TTG GCG GAT GCC TCT CTC AAG ATG GCC GAC CCC AAT CGC TTT CGC GGC AAA GAC CTT CCG GTC CTG GAC CAG CTG ACC GAC CCT CCG GGG GTC CGG CGC GTG TAC CAC ATC CAG GCG GGC CTA CCG GAC CCG TTC CAG CCC CCC AGC CTC CCG ATC ACG GTT TAC TAC GCC GTG TTG GAG CGC GCC TGC CGC AGC GTG CTC CTA AAC GCA CCG TCG GAG GCG CCC CAG ATT GTC CGC GGG GCC TCC GAA GAC GTC CGG AAA CAA CCC TAC AAC CTG ACC ATC GCT TGG TTT CGG ATG GGA GGC AAC TGT GCT ATC CCC ATC ACG GTC ACG GAG TAC ACC GAA TGC TCC TAC AAC AAG TCT CTG GGG GCC TGT CCC ATC CGA ACG CAG CCC CGC TGG AAC TAC TAT GAC AGC TTC AGC GCC GTC AGC GAG GAT AAC CTG GGG TTC CTG ATG CAC GCC CCC GCG TTT GAG ACC GCC GGC ACG TAC CTG CGG CTC GTG AAG ATA AAC GAC TGG ACG GAG ATT ACA CAG TTT ATC CTG GAG CAC CGA GCC AAG GGC TCC TGT AAG TAC GCC CTC CCG CTG CGC ATC CCC CCG TCA GCC TGC CTC TCC CCC CAG GCC TAC CAG CAG GGG GTG ACG GTG GAC AGC ATC GGG ATG CTG CCC CGC TTC ATC CCC GAG AAC CAG CGC ACC GTC GCC GTA TAC AGC TTG AAG ATC GCC GGG TGG CAC GGG CCC AAG GCC CCA TAC ACG AGC ACC CTG CTG CCC CCG GAG CTG TCC GAG ACC CCC AAC GCC ACG CAG CCA GAA CTC GCC CCG GAA GAC CCC GAG GAT TCG GCC CTC TTG GAG GAC CCC GTG GGG ACG GTG GCG CCG CAA ATC CCA CCA AAC TGG CAC ATC CCG TCG ATC CAG GAC GCC GCG ACG CCT TAC CAT CCC CCG GCC ACC CCG AAC AAC ATG GGC CTG ATC GCC GGC GCG GTC GGC GGC AGT CTC CTG GCA GCC CTG GTC ATT TGC GGA ATT GTG TAC TGG ATG CAC CGC CGC ACT CGG AAA GCC CCA AAG CGC ATA CGC CTC CCC CAC ATC CGG GAA GAC GAC CAG CCG TCC TCG CAC CAG CCC TTG TTT TAC

and the DNA sequence for type 2 gD glycoprotein polypeptide comprises:

ATG GGG CGT TTG ACC TCC GGC GTC GGG ACG GCG GCC CTG CTA GTT GTC GCG GTG GGA CTC CGC GTC GTC TGC GCC AAA TAC GCC TTA GCA GAC CCC TCG CTT AAG ATG GCC GAT CCC AAT CGA TTT CGC GGG AAG AAC CTT CCG GTT TTG GAC CAG CTG ACC GAC CCC CCC GGG GTG AAG CGT GTT TAC CAC ATT CAG CCG AGC CTG GAG GAC CCG TTC CAG CCC CCC AGC ATC CCG ATC ACT GTG TAC TAC GCA GTG CTG GAA CGT GCC TGC CGC AGC GTG CTC CTA CAT GCC CCA TCG GAG GCC CCC CAG ATC GTG CGC GGG GCT TCG GAC GAG GCC CGA AAG CAC ACG TAC AAC CTG ACC ATC GCC TGG TAT CGC ATG GGA GAC AAT TGC GCT ATC CCC ATC ACG GTT ATG GAA TAC ACC GAG TGC CCC TAC AAC AAG TCG TTG GGG GTC TGC CCC ATC CGA ACG CAG CCC CGC TGG AGC TAC TAT GAC AGC TTT AGC GCC GTC AGC GAG GAT AAC CTG GGA TTC CTG ATG CAC GCC CCC GCC TTC GAG ACC GCG GGT ACG TAC CTG CGG CTA GTG AAG ATA AAC GAC TGG ACG GAG ATC ACA CAA TTT ATC CTG GAG CAC CGG GCC CGC GCC TCC TGC AAG TAC GCT CTC CCC CTG CGC ATC CCC CCG GCA GCG TGC CTC ACC TCG AAG GCC TAC CAA CAG GGC GTG ACG GTC GAC AGC ATC GGG ATG TTA CCC CGC TTT ATC CCC GAA AAC CAG CGC ACC GTC GCC CTA TAC AGC TTA AAA ATC GCC GGG TGG CAC GGC CCC AAG CCC CCG TAC ACC AGC ACC CTG CTG CCG CCG GAC CTG TCC GAC ACC ACC AAC GCC ACG CAA CCC GAA CTC GTT CCG GAA GAC CCC GAG GAC TCG GCC CTC TTA GAG GAT CCC GCC GGG ACG GTG TCT TCG CAG ATC CCC CCA AAC TGG CAC ATC CCG TCG ATC CAG GAC GTC GCG CCG CAC CAC GCC CCC GCC GCC CCC AGC AAC CCG GGC CTG ATC ATC GGC GCG CTG GCC GGC AGT ACC CTG GCG GCG CTG GTC ATC GGC GGT ATT GCG TTT TGG GTA CGC CGC CGC GCT CAG ATG GCC CCC AAG CGC CTA CGT CTC CCC CAC ATC CGG GAT GAC GAC GCG CCC CCC TCG CAC CAG CCA TTG TTT TAC

or a subsequence of type 1 or type 2 DNA sequence, which subsequence codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein."

Claims 2 to 6 were claims to a recombinant vector comprising the sequences or subsequences according to claim 1. Claim 7 is a claim to specific recombinant vectors carried by various deposited microorganisms.

Claims 10 to 11 were claims to unicelleular organisms containing the sequences or subsequences according to claim 1.

Claim 12 was a claim directed to various deposited bacteria.

Claim 13 was directed to a process for producing a microcellular organism having a DNA sequence corresponding to the sequences or subsequences according to claim 1.

Claim 14 was directed to a nonglycosylated polypeptide of Herpes Simplex virus type 1 or type 2 gD glycoprotein as listed or a subsequence of the type 1 or type 2gD polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus glycoprotein.

Claim 15 was directed to a nonglycosylated polypeptide of Herpes Simplex virus gD glycoprotein produced by a deposited strain according to Claim 12.

Claims 17 and 18 were directed to processes for producing the nonglycosylated polypeptides of claim 14.

Claims 19 and 20 read:

"19. A process for identifying and/or isolating a DNA sequence that codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, which comprises carrying out hybridisation on the DNA sequence under investigation using, as a hybridisation probe, a DNA sequence or subsequence according to claim 1, or a fragment thereof, or mRNA or cDNA derivable therefrom, and identifying and/or isolating those DNA sequences that hybridise with the probe."

"20. A DNA sequence that hybridizes with a DNA sequence or subsequence as claimed in claim 1, or a fragment thereof, and that codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein."

Claims 1 to 19 for the Contracting State AT were drafted as corresponding process claims.

III. The Opposition Division came to the conclusion that the patent with a somewhat amended set of claims restricted to HSVgD type 1 put forward as main request at the end of the oral proceedings before it fulfilled the requirements of the EPC.

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

(A1) Benett A.M. et al., J. Gen. Virology Vol. 73, pages 2963-2967 (1992);

(A2) Ludwig H. et al., The Herpes Virus, B. Roizmann Editions, Vol. 2, pages 385-428 (1983);

(A3) Watson R.J. et al., Science, Vol. 218, pages 381-384 (1982);

(A4) Weis J.H. et al., Nature, Vol. 302, pages 72-74 (1983);

(A5) Lee, G. T-Y. et al., J. of Virology, Vol. 43, pages 41-49 (1982);

(A8) Wagner M.J. et al., Proc. Natl. Acad. Sci. USA, Vol. 78, No. 3, pages 1441-1445 (1981);

(A9) Villa-Komaroff L. et al., Proc. Natl. Acad. Sci. USA, Vol. 75, No. 8, pages 3727-3731 (1978);

(A25) Rose J.K. et al., Proc. Natl. Acad. Sci. USA, Vol. 78, No. 11, pages 6670-6674 (1981);

(EC) Declaration of Dr R.J Eisenberg and Dr G.H. Cohen dated 13 February 1996 (filed by the respondent);

(EC14) McGeoch D.J.et al., J. Mol. Biol., Vol. 181, pages 1-13 (1985);

(D30) Declaration of Prof. R.W. Old dated 27 May 1993 submitted in the matter of EP-B-182,442 (Biogen HBV patent, appeal case T 0296/93);

(D33) Declaration of Prof. W. Fiers dated 3 October 1993 (filed by the appellant).

V. The board issued a communication pursuant to Article 11(2) of the Rules of Procedure of the Boards of Appeal expressing its provisional opinion. The respondent filed on 6 February 2001 a new main request, of which claims 1, 7, 12, 19 and 20 for all designated Contracting States except AT read as follows (the amendments over the corresponding granted claims are shown in bold and by way of deletions):

"1. DNA sequence [coding]<> for a polypeptide comprising the amino acid sequence of a Herpes Simplex virus type 1 [or type 2] gD glycoprotein wherein the DNA sequence for type 1 gD glycoprotein polypeptide comprises:

GGG GGG ACT GCC GCC AGG TTG GGG GCC GTG ATT TTG TTT GTC GTC ATA GTG GGC CTC CAT GGG GTC CGC GGC AAA TAT GCC TTG GCG GAT GCC TCT CTC AAG ATG GCC GAC CCC AAT CGC TTT CGC GGC AAA GAC CTT CCG GTC CTG GAC CAG CTG ACC GAC CCT CCG GGG GTC CGG CGC GTG TAC CAC ATC CAG GCG GGC CTA CCG GAC CCG TTC CAG CCC CCC AGC CTC CCG ATC ACG GTT TAC TAC GCC GTG TTG GAG CGC GCC TGC CGC AGC GTG CTC CTA AAC GCA CCG TCG GAG GCG CCC CAG ATT GTC CGC GGG GCC TCC GAA GAC GTC CGG AAA CAA CCC TAC AAC CTG ACC ATC GCT TGG TTT CGG ATG GGA GGC AAC TGT GCT ATC CCC ATC ACG GTC ACG GAG TAC ACC GAA TGC TCC TAC AAC AAG TCT CTG GGG GCC TGT CCC ATC CGA ACG CAG CCC CGC TGG AAC TAC TAT GAC AGC TTC AGC GCC GTC AGC GAG GAT AAC CTG GGG TTC CTG ATG CAC GCC CCC GCG TTT GAG ACC GCC GGC ACG TAC CTG CGG CTC GTG AAG ATA AAC GAC TGG ACG GAG ATT ACA CAG TTT ATC CTG GAG CAC CGA GCC AAG GGC TCC TGT AAG TAC GCC CTC CCG CTG CGC ATC CCC CCG TCA GCC TGC CTC TCC CCC CAG GCC TAC CAG CAG GGG GTG ACG GTG GAC AGC ATC GGG ATG CTG CCC CGC TTC ATC CCC GAG AAC CAG CGC ACC GTC GCC GTA TAC AGC TTG AAG ATC GCC GGG TGG CAC GGG CCC AAG GCC CCA TAC ACG AGC ACC CTG CTG CCC CCG GAG CTG TCC GAG ACC CCC AAC GCC ACG CAG CCA GAA CTC GCC CCG GAA GAC CCC GAG GAT TCG GCC CTC TTG GAG GAC CCC GTG GGG ACG GTG GCG CCG CAA ATC CCA CCA AAC TGG CAC ATC CCG TCG ATC CAG GAC GCC GCG ACG CCT TAC CAT CCC CCG GCC ACC CCG AAC AAC ATG GGC CTG ATC GCC GGC GCG GTC GGC GGC AGT CTC CTG GCA GCC CTG GTC ATT TGC GGA ATT GTG TAC TGG ATG CAC CGC CGC ACT CGG AAA GCC CCA AAG CGC ATA CGC CTC CCC CAC ATC CGG GAA GAC GAC CAG CCG TCC TCG CAC CAG CCC TTG TTT TAC

[and the DNA sequence for type 2 gD glycoprotein polypeptide comprises:]

ATG GGG CGT TTG ACC TCC GGC GTC GGG ACG GCG GCC CTG CTA GTT GTC GCG GTG GGA CTC CGC GTC GTC TGC [GCC AAA TAC GCC TTA GCA GAC CCC TCG CTT AAG ATG GCC GAT CCC AAT CGA TTT CGC GGG AAG AAC CTT CCG GTT TTG GAC CAG CTG ACC GAC CCC CCC GGG GTG AAG CGT GTT TAC CAC ATT CAG CCG AGC CTG GAG GAC CCG TTC CAG CCC CCC AGC ATC CCG ATC ACT GTG TAC TAC GCA GTG CTG GAA CGT GCC TGC CGC AGC GTG CTC CTA CAT GCC CCA TCG GAG GCC CCC CAG ATC GTG CGC GGG GCT TCG GAC GAG GCC CGA AAG CAC ACG TAC AAC CTG ACC ATC GCC TGG TAT CGC ATG GGA GAC AAT TGC GCT ATC CCC ATC ACG GTT ATG GAA TAC ACC GAG TGC CCC TAC AAC AAG TCG TTG GGG GTC TGC CCC ATC CGA ACG CAG CCC CGC TGG AGC TAC TAT GAC AGC TTT AGC GCC GTC AGC GAG GAT AAC CTG GGA TTC CTG ATG CAC GCC CCC GCC TTC GAG ACC GCG GGT ACG TAC CTG CGG CTA GTG AAG ATA AAC GAC TGG ACG GAG ATC ACA CAA TTT ATC CTG GAG CAC CGG GCC CGC GCC TCC TGC AAG TAC GCT CTC CCC CTG CGC ATC CCC CCG GCA GCG TGC CTC ACC TCG AAG GCC TAC CAA CAG GGC GTG ACG GTC GAC AGC ATC GGG ATG TTA CCC CGC TTT ATC CCC GAA AAC CAG CGC ACC GTC GCC CTA TAC AGC TTA AAA ATC GCC GGG TGG CAC GGC CCC AAG CCC CCG TAC ACC AGC ACC CTG CTG CCG CCG GAC CTG TCC GAC ACC ACC AAC GCC ACG CAA CCC GAA CTC GTT CCG GAA GAC CCC GAG GAC TCG GCC CTC TTA GAG GAT CCC GCC GGG ACG GTG TCT TCG CAG ATC CCC CCA AAC TGG CAC ATC CCG TCG ATC CAG GAC GTC GCG CCG CAC CAC GCC CCC GCC GCC CCC AGC AAC CCG GGC CTG ATC ATC GGC GCG CTG GCC GGC AGT ACC CTG GCG GCG CTG GTC ATC GGC GGT ATT GCG TTT TGG GTA CGC CGC CGC GCT CAG ATG GCC CCC AAG CGC CTA CGT CTC CCC CAC ATC CGG GAT GAC GAC GCG CCC CCC TCG CAC CAG CCA TTG TTT TAC]

or a subsequence of type 1 [or type 2] DNA sequence, which subsequence codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, with the proviso that the promoter is not the native promoter of Herpes Simplex virus gD glycoprotein.

7. A recombinant vector selected from the group consisting of the recombinant vector pEH51 which is carried by the Escherichia coli having ATCC accession No. 39,159, recombinant vector pEH82 which is carried by the Escherichia coli having ATCC accession No. 39,160, recombinant vector pEH4-2 which is carried by the Escherichia coli having NRRL accession No. B-15471, [recombinant vector pHV5 which is carried by the Escherichia coli having NRRL accession No. B-15449, recombinant vector pHV6 which is carried by the Escherichia coli having NRRL accession No. B-15450] and recombinant vector pEH90-10am which is carried by the Escherichia coli having NRRL accession No. B-15451.

12. An Escherichia coli bacterium selected from the group consisting of Escherichia coli having ATCC accession No. 39,159, Escherichia coli having ATCC accession No. 39,160, [ Escherichia coli having NRRL accession No. B-15449, Escherichia coli having NRRL accession No. B-15450] Escherichia coli having NRRL accession No. B-15451 and Escherichia coli having NRRL accession No. B-15471.

19. A process for identifying and/or isolating a DNA sequence that codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, which comprises carrying out hybridisation on the DNA sequence under investigation using, as hybridisation probe, a DNA sequence or subsequence according to claim 1, or fragment thereof,[ or mRNA ] or cDNA derivable therefrom, and identifying and/or isolating those DNA sequences that hybridise with the probe.

20. A DNA [ sequence]<< molecule in substantially isolated form comprising

(i) a first DNA sequence obtainable from a type 1 or type 2 Herpes Simplex virus, which first sequence>> [that] hybridizes with a DNA sequence or subsequence as claimed in claim 1, or <> a fragment thereof, << and which first DNA sequence >> [and that] codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, << and

(ii) a promoter,

the first DNA sequence as defined in (i) being operably linked to the promoter, with the proviso that the promoter is not the native promoter of Herpes Simplex virus gD glycoprotein.">>

VI. During oral proceedings held on 6 March 2001, the respondent submitted auxiliary claim requests 1 to 4 (the amendments over the corresponding granted claims are shown in bold and by way of deletions):

Auxiliary request 1

Claims 1 to 18 as in the main request filed on 6 February 2001; claims 19 and 20 as follows:

19. A process for identifying and/or isolating a DNA sequence <> [that] codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, which comprises[ carrying out hybridisation on the DNA sequence under investigation] using, as [hybridisation]<> probe, a DNA sequence [or subsequence] according to claim 1, [or fragment thereof, or mRNA] or cDNA derivable therefrom, [and] identifying and/or isolating those DNA sequences that hybridise with the probe, <>

20. A DNA [sequence]<< molecule in substantially isolated form comprising

(i) a first DNA sequence obtainable from a type 1 or type 2 Herpes Simplex virus, wherein the sequence as defined in claim 1 can be used as a probe to identify the first DNA sequence as containing gD sequences>> [that hybridizes with a DNA sequence or subsequence as claimed in claim 1, or a fragment thereof], << and which first DNA sequence >> [and that] codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, <

(ii) a promoter,

the first DNA sequence as defined in (i) being operably linked to the promoter, with the proviso that the promoter is not the native promoter of Herpes Simplex virus gD glycoprotein.">>

Auxiliary request 2

Claims 1 to 18 as in the main request filed on 6 February 2001; claims 19 and 20 as follows:

19. A process for identifying and/or isolating a DNA sequence << obtainable from a type 1 or type 2 Herpes Simplex virus, which sequence>>[ that ] codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, which comprises[carrying out hybridisation on the DNA sequence under investigation]using, as [ybridisation] <> probe, <>[ a DNA] sequence<< shown in Figure>> 3 [or subsequence according to claim 1, or fragment thereof, or mRNA] or cDNA derivable therefrom, [and] identifying and/or isolating those DNA sequences that hybridise with the probe, <>

20. A DNA [sequence]<< molecule in substantially isolated form comprising>>

(i) a first DNA sequence obtainable from a type 1 or type 2 Herpes Simplex virus, wherein the coding sequence as shown in Figure 3 can be used as a probe to identify the first DNA sequence as containing gD sequences [that hybridizes with a DNA sequence or subsequence as claimed in claim 1, or a fragment thereof], << and which first DNA sequence>>[and that] codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, << and

(ii) a promoter,

the first DNA sequence as defined in (i) being operably linked to the promoter, with the proviso that the promoter is not the native promoter of Herpes Simplex virus gD glycoprotein.">>

Auxiliary request 3

Claims 1 to 18 as in the main request filed on 6 February 2001; claim 20 deleted; claim 19 as follows:

19. A process for identifying and/or isolating a DNA sequence <>[that] codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein, which comprises [carrying out hybridisation on the DNA sequence under investigation] using, as[hybridisation] a probe, a DNA sequence [or subsequence] according to claim 1, [or fragment thereof, or mRNA] or cDNA derivable therefrom, [and] identifying and/or isolating those DNA sequences that hybridise with the probe, <>

Auxiliary request 4

Claims 1 to 6, 8 to 11, 13 to 18 as in the main request filed on 6 February 2001; claims 19 and 20 deleted; claims 7 and 12 as follows:

7. A recombinant vector selected from the group consisting of the recombinant vector pEH51 which is carried by the Escherichia coli having ATCC accession No. 39,159 <> recombinant vector pEH82 which is carried by the Escherichia coli having ATCC accession No. 39,160 [recombinant vector ppEH4-2 which is carried by the Escherichia coli having NRRL accession No. B-15471, recombinant vector pHV5 which is carried by the Escherichia coli having NRRL accession No. B-15449, recombinant vector pHV6 which is carried by the Escherichia coli having NRRL accession No. B-15450 and recombinant vector pEH90-10am which is carried by the Escherichia coli having NRRL accession No. B-15451.]

12. An Escherichia coli bacterium selected from the group consisting of Escherichia coli having ATCC accession No. 39,159 <> Escherichia coli having ATCC accession No. 39,160. [Escherichia coli having NRRL accession No. B-15449, Escherichia coli having NRRL accession No. B-15450 Escherichia coli having NRRL accession No. B-15451 and Escherichia coli having NRRL accession No. B-15471.]

VII. The submissions by the appellant can be summarized as follows:

Main request Article 123(2) EPC Claims 1, 19 and 20

a) There was no basis in the application as filed for the expressions "codes on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein" and for the expression "a DNA sequence in substantially isolated form" (i.e. not within a recombinant vector) in claims 1 and 20 of this request.

b) There was no specific disclosure in the application as filed for the expression "using, as hybridisation probe, a DNA sequence or subsequence according to claim 1, or fragment thereof, or cDNA derivable therefrom" and "that hybridize with the probe" in claim 19 and "hybridizes with a DNA sequence or subsequence as claimed in claim 1, or with a fragment thereof" in claim 20.

Article 84 EPC Claims 19 and 20

c) The expression in claims 19 and 20 "cDNA derivable therefrom" lacked clarity since a cDNA could only be derived from a mRNA upon reverse transcription, not from a DNA.

d) Claims 19 and 20 lacked clarity because the hybridization conditions were not defined.

Auxiliary request 1 Articles 84 and 123 (2) EPC Claims 1, 19 and 20

a1) The same objections as under the main request were raised (see Section VI a)).

b1) There was no specific disclosure in the application as filed for the expressions "using, as a probe, a DNA sequence according to claim 1, or cDNA derivable therefrom" and "that hybridize with the probe" in claim 19 and "wherein the sequence as defined in claim 1 can be used as a probe" in claim 20.

Auxiliary request 2 Articles 84 and 123 (2) EPC Claims 1, 19 and 20

a2) The same objections as under the main request were raised (see Section VI a)).

b2) There was no specific disclosure in the application as filed for the expressions "using, as a probe, the coding sequence shown in Figure 3 or cDNA derivable therefrom" and "that hybridize with the probe" in claim 19 and "wherein the coding sequence as shown in Figure 3 can be used as a probe" in claim 20.

Article 84 EPC

c2) The same objections as under the main request were raised (see Section VI c) and d)).

Auxiliary request 3 Article 123(2) EPC Claims 1 and 19

a3) The same objections as under the main request were raised (see Section VI a)).

b3) There was no specific disclosure in the application as filed for the expression in claim 19 "using, as a probe, a DNA sequence according to claim 1, or cDNA derivable therefrom" and "that hybridize with the probe".

Article 84 EPC Claims 1 and 19

c3) The same objections as under the main request were raised ((see Section VI c) and d)).

Auxiliary request 4 Article 83 EPC

- Since the respondent argued in the context of the inventive step that at the priority date of the patent in suit the skilled person had to exercise inventive skill to overcome all the problems that arose when attempting to express fusion proteins comprising only portions of gD related polypeptides, the same had to be true when he/she was faced with establishing whether or not a given DNA sequence would have satisfied the requirements of antigenicity and immunogenicity stated in claim 1 or with expressing full-length fused or unfused gD proteins or glycosylated products.

- It would be an undue burden for the skilled person to determine whether any DNA subsequence covered by claim 1 coded on expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein. The immunological reagents available to the skilled person at the priority date of the patent in suit were a few monoclonal antibodies directed against the gD-1 glycoprotein and one polyclonal against HSV-1:

these antibodies did not cover the entire range of antigenic determinants susceptible of being expressed in the light of claim 1.

- The patent in suit was merely concerned with the expression in E. coli of fusion proteins comprising only portions of gD related polypeptides (cro-gD-like fusion proteins or cro-gD-like ß-galactosidase "sandwich" fusion proteins). There was no disclosure in the patent in suit as to how full-length fused, unfused or glycosylated gD proteins could be obtained. As regards expression in E. coli of unfused full-length gD protein, document (A25) reported that the signal sequence for a vesicular stomatitis virus (VSV) glycoprotein was toxic to E. coli.

Inventive step

- Document (A5) represented the closest prior art because it located the gD gene within a 2.8 kb SacI-SacI DNA fragment, which was used to produce plasmid pRB309. The SacI-SacI DNA insert was hybridized selectively to a mRNA which was shown in vitro to produce a gD polypeptide.

- The claimed subject-matter was within the reach of the skilled person following any of routes A to C below:

A. Sequencing the 2.8 kb long SacI-SacI DNA fragment of document (A5). Sequencing DNAs, even with high GC content was within the competence of the skilled person in 1982 (see documents (A6), (A7) and (A8)). Having obtained sequence information to locate the gD coding region precisely, a number of expression strategies were available to the skilled person for inserting portions coding for gD into a suitable expression system.

B. Dissecting the SacI-SacI DNA fragment of document (A5) with restriction endonucleases and inserting them into the PstI site of pBR322 as done in document (A14) for Hepatitis B virus (HBV) DNA (shotgun cloning of DNA fragments of HBV into the ß-lactamase gene of pBR322).

C. Obtaining cDNAs or fragments thereof encoding gD from mRNAs of HSV infected cells (see document (A5)) and proceeding as done in document (A9) for the proinsulin gene, namely the cDNAs are inserted in the ß-lactamase gene of pBR322 as in Route B, in the expectation to obtain fusions proteins. This route avoided possible problems due to introns.

VIII. The submissions and evidence provided by the respondent can be summarized as follows:

Main request Article 123(2) EPC Claims 1, 19 and 20

- Chapters 5.2 to 5.4 on pages 19 to 25 of the application as filed dealt with expression vectors comprising DNAs encoding HSV gD glycoprotein and the identification of the gene products. This represented a basis for the expressions "which codes upon expression for a polypeptide having at least one immunological and antigenic determinant of a Herpes Simplex virus gD glycoprotein".

- There was also a basis in the application as filed for the expressions in claims 1 and 20 "a DNA sequence in substantially isolated form" (i.e. not within a recombinant vector) on page 16, lines 25 to 29, page 19, line 32 ("Once isolated, the gD gene") and Example 6 on page 33, lines 26 ("the gD-1 gene fragment was isolated") of the application as filed.

- The passage on page 18, line 18 to page 19, line 6 in the application as filed taught in generic terms the use of mRNA or cDNA as a probe to identify by hybridization those fragments containing gD DNA sequences. Moreover, the passage on page 10, lines 2 to 7 taught that HSV gD-1 and HSV gD-2 shared common epitopes. This fact of necessity implied that HSV gD-1 DNA had to hybridize with HSV gD-2 DNA.

- Therefore, the expressions:

"using, as hybridisation probe, a DNA sequence or subsequence according to claim 1, or fragment thereof, or cDNA derivable therefrom" and "that hybridize with the probe" in claim 19 and "hybridizes with a DNA sequence or subsequence as claimed in claim 1, or with a fragment thereof" in claim 20 were directly and unambiguously derivable or at least implied by the text in the application as filed.

Auxiliary request 1 Article 123(2) EPC Claims 1, 19 and 20

- The same submissions were made as in relation to the main request for the basis in the application as filed for the expressions:

"using, as a probe, a DNA sequence according to claim 1, or cDNA derivable therefrom" in claim 19 and "wherein the sequence as defined in claim 1 can be used as a probe" in claim 20 of Auxiliary request 1;

Auxiliary request 2 Article 123(2) EPC Claims 1, 19 and 20

- A DNA probe could be produced using the information from Figure 3 representing the nucleotide sequence of the gD-1 gene stated in claim 1 and the predicted amino acid sequence of the protein. In Chapter 7.2.2 (pages 70 and 71 of the application as filed) information from the Figures was indeed used for making a gD-1 DNA probe to be used for isolating a gD-2 DNA. Therefore, the expressions: "using, as a probe, the coding sequence shown in Figure 3 or cDNA derivable therefrom" and "that hybridize with the probe" in claim 19 and "wherein the coding sequence as shown in Figure 3 can be used as a probe" in claim 20 were directly and unambiguously derivable or at least implied by the text in the application as filed.

Auxiliary request 3 Article 123(2) EPC Claims 1 and 19

- The arguments put forward in relation to the main request for the basis in the application as filed for the expressions in claim 19 "using, as a probe, a DNA sequence according to claim 1, or cDNA derivable therefrom" and "that hybridize with the probe" equally applied for these claims in this request.

Auxiliary request 4 Article 83 EPC

- The patent in suit (see pages 10 to 11, Chapter 5.4:

"Identification of the gene product" and Section 6.4.1) disclosed in an enabling manner how to determine whether or not a particular DNA sequence coded on expression for a polypeptide having at least one immunological and antigenic determinant of a HSV gD1 glycoprotein. One could use polyclonal antibodies against HSV (see page 25, line 11) to detect the expression products. Immunogenicity of the expressed proteins could be evaluated by determining test animal antisera titres.

- As regards the unfused gD proteins, claim 1 at issue did not require the production of unfused proteins. The patent in suit disclosed how to express full-length, unfused and glycosylated proteins.

Article 56 EPC

- None of Routes A to C rendered the claimed subject-matter obvious, having regard to the following facts:

Route A

- Sequencing a completely unknown 2.8 kb fragment was not routine at the priority date (GC problem). Prof. Fiers (see document (D33)) was too highly qualified to be considered as a man of average skill.

- Identifying the gD coding region was not straightforward.

- Genetic engineering was still in its infancy at the earliest priority date of the patent in suit.

- Dr Old's declaration is diametrically opposed to an earlier affidavit by him (document (D30); Biogen HBV patent, appeal case T 0296/93).

Route B

- None of the clones of document (A14) expressed HBeAg. HBcAg was merely detected by radioimmunoassays but not confirmed. The authors warned that their experiments were not suited to obtaining expression.

- The potential presence of introns would have dissuaded the skilled person.

Route C

- No monoclonal antibodies recognizing an unglycosylated fragment of gD were available. Only one of the seven anti-gD monoclonal antibodies used in (A5) recognized unglycosylated gD.

- The authors of document (A9) already knew the sequence of their gene which was only 329 bp long, compared with 1,182 bp (gD1). They thus had advantages when solving their problem that the skilled person following route C would not have had faced with the problem to be solved here.

- It was not straightforward to synthesise a long cDNA.

IX. The appellant (opponent) requested that the decision under appeal be set aside and that the European patent No. 0 101 655 be revoked.

The respondent (patentee) requested that the decision under appeal be set aside that the patent be maintained on the basis of the claims of the main request filed 6. February 2001 or of auxiliary request 1, 2, 3 or 4, all submitted at the oral proceedings on 6 March 2001.