T 1032/16 (Onions with high soluble solids content and low pungency/NUNHEMS) 04-03-2020

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. An amended version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) came into force on 1 January 2020. The transitional provisions are set out in Article 25 RPBA 2020. Pursuant to paragraph 3 of Article 25 RPBA 2020, where the summons to oral proceedings has been notified before the date of the entry into force of the RPBA 2020, Article 13, paragraph 2, of the revised version shall not apply. Instead, Article 13 of the Rules of Procedure of the Boards of Appeal in the version valid until the date of the entry into force shall continue to apply. In the present case, the parties were notified of the summons to oral proceedings before 1 January 2020. Therefore, Article 13(1) and (3) RPBA 2007 apply to the present case.

Main request

3. This claim request was auxiliary request 1 in the proceedings before the opposition division and was considered to meet the requirements of the EPC (see decision under appeal, point 4.4.2).

Claim construction - claim 1

4. Claim 1, a product-by-process claim, is directed to a long-day onion plant producing bulbs which combine the properties "pyruvate of less than 5.5 µMol/g FW" and "SSC of at least 7.5%" at harvest, wherein the onion plant "is obtained by crossing a plant of which seeds were deposited under Accession No. PTA-9053, PTA-9054 or PTA-5 9055 with another onion plant" (see section IV. above for the complete wording of the claim).

5. The process feature "is obtained by (...)" defines the claimed onion only in as far as it imparts identifiable and unambiguous technical features to the product (see Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, II.A.7.1). The parties agreed that a technical feature imparted to the claimed onion plant by the process feature of claim 1 was the presence in its genome of a fraction of the genome of the plants of which seeds were deposited. However, the parties disagreed on whether additional identifiable phenotypic characteristics were conferred on the long-day onion plant by the process of claim 1.

6. The board notes that the claim does not specify that the genome of the plants for which seeds were deposited causes the claimed SSC or pungency traits or any other trait. The respondent's argument that selection for "pyruvate of less than 5.5 µMol/g FW" or "low pungency" and for "SSC of at least 7.5%" or "high SSC" brings along the plants' genes responsible for a lower pungency upon storage is not accepted by the board. In the board's view, the feature that the claimed plants are obtainable by crossing a deposited onion plant with another onion plant is not a limitation to the immediate progeny of such a cross, but includes all plants having such a cross in their ancestry. Thus, the process feature is not construed as imparting any particular genotype to the claimed plants. Lower pungency upon storage is thus not a feature of the claimed onion plants. The board concludes that no additional identifiable phenotypic or genotypic characteristics are conferred on the long-day onion plant by the process of claim 1.

Inventive step (Article 56 EPC) - claim 1

Closest prior art

7. In the decision under appeal, document D1 was taken as representing the closest prior art for the claimed onion plants. This view was maintained by the appellant in the appeal and was not contested by the respondent. The board sees no reason to differ.

8. Document D1 discloses onion (Allium cepa) plants requiring 14 or more contiguous hours of daylight to initiate bulb formation, i.e. long-day onions, which produce bulbs having a pyruvic acid development (PAD) measurement of less than 5.5 myMol/g FW at harvest and whose bulbs can be stored without an increase of PAD measurements of more than 15% compared to the PAD measurement at the time of harvest (see paragraphs [0021], [0022], [0023] and [0053]). It is undisputed that document D1 does not explicitly disclose any SSC values.

9. However, document D1 does disclose hybrid plants whose parents were the long day onion plants WYL 77-5128B and WYL 77-5168B (see paragraph [0081]). WYL 77-5128B and WYL 77-5168 are long-day Spanish onion breeding lines, combining all the desired features of typical long-day Spanish onions with the additional feature of low pungency (see paragraphs [0087] and [0089]). Seeds of these inbred lines were deposited in accordance with the Budapest Treaty (see paragraphs [0088], [0089] and [00168] of document D1). The board concludes that the hybrid plants disclosed in paragraph [0081] are made available by document D1. The person skilled in the field of plant breeding is furthermore aware that a cross between these two inbred lines of document D1 always yields the same hybrid plant (see also document D10, paragraph bridging pages 1 and 2).

10. Document D8A, the certificate of plant variety protection for onion EX 077116000, discloses that EX 077116000 is a hybrid onion developed by crossing WYL 77-5128A (female parent) with WYL 77-5168B (male parent)(see page 3, first paragraph). The document also discloses that WYL 77-5128A is the isogenic sterile version of long day Spanish onion inbred WYL 77-5128B with (see page 4, second paragraph). Being isogenic, WYL 77-5128A and WYL 77-5128B are genetically identical, except for the male sterility (see document D9, page 1, last paragraph).

11. The respondent argued that lines WYL 77-5128A and WYL 77-5128B are either not isogenic or that the male sterile genotype affects the SSC phenotype.

12. This line of argument is based on Table 2 of document D9 which reports an average SSC of 7.38% for WYL 77-5128A and of 7.01% for WYL 77-5128B. However, document D3 discloses that "four replications of five-bulb samples or two replications of ten-bulb samples are adequate to detect a 1 myM difference in enzymatically developed pyruvic acid and a 1% difference in SSC" (see page 544, right hand column, last paragraph). Thus, bearing in mind the accuracy with which SSC percentages can be determined, the values reported in Table 2 of document D9 do not establish that lines WYL 77-5128A and WYL 77-5128B are not isogenic or that the male sterile genotype affects the SSC phenotype. Indeed, that the SSCs values determined for one and the same variety are not necessarily identical is also evident from the test results reported in Annex A of document D10 (see point 14. below). Thus, the respondent's line of argument is not found persuasive.

13. In view of the above considerations, the board is persuaded that plants of variety EX 077116000 are representative of the hybrid plants disclosed in paragraph [0081] of document D1.

14. Document D10 confirms that the hybrid identified as EX 07716000 in document D8A is the same as the hybrid EX16000 (see paragraph bridging pages 1 and 2) while according to document D5, the hybrid EX16000 is also referred to as XP16000 (see page 2, sixth paragraph). From Annex B of document D10 it is evident that XP16000 is furthermore referred to as EverMild.

15. According to document D5 it was general practice to determine the refractive index as a measure of soluble solid content (SSC) and to report the result as %, % sucrose or as degrees brix. There is no difference in the values as such, and "the feature "SSC at harvest of at least 7%" as used in EP 2 244 554 [the opposed patent] is the same as "SSC at harvest of at least 7 brix" (see page 1, point 1).

16. Annex A of document D10 reports results of pungency and brix (=SSC) testing of numerous onion bulbs of EverMild (=EX16000) obtained from 11 different farms operated by commercial onion producers (see page 2, last paragraph). In tests carried out at harvest on onion bulbs grown on different fields on a farm in Oregon, the mean pungency was 3.8 and the mean brix (=SSC) was 7.8% with a standard deviation (SD) of 0.4 (see Annex A, LF Test No: LF2012-1951) and 3.6 and 7.6% with a SD of 0.4, respectively (see Annex A, LF Test No: LF2012-1649). Furthermore, in tests carried out at harvest on EverMild onion bulbs grown on a farm in Hermiston, the mean pungency was 4.5 and the mean brix was 7.9% with a SD of 0.2 (see Annex A, LF Test No: LF2011-566). These SSC values fall within the scope of claim 1 of the main request.

17. Relying on document D7, the respondent submitted that EX 077116000, a hybrid produced by crossing WYL 77-5128A with WYL 77-5168B has an average SSC % of 6.3 (see page 5, points 20) and 21)), which fell outside of the range specified in the claim.

18. Document D7, a report drawn up by the inventor of the opposed patent, is silent about the number of onion bulbs tested. Bearing in mind the accuracy of SSC tests, see point 12. above, the board is not persuaded that document D7 establishes that the hybrid of document D1 has a SSC below 7.5%. In the board's view, the results reported in document D10, see point 14. above, obtained in measurements carried out on numerous bulbs from different locations in an independent analysis by an external laboratory, the National Onion Lab, see point 14. above, are more persuasive than the results provided in document D7.

19. That the pungency results of Annex A of document D10 were obtained using the pungency analysis method of document D11 has no bearing on the board's conclusion with respect to the SSC levels disclosed in Annex A of document D10 because pungency and SSC are different traits.

20. The board concludes from the above that the SSC results reported for hybrid EX16000 in Annex A of document D10 are evidence that the bulbs produced by onion hybrids of document D1 possess SSC values that fall within the scope of claim 1 of the main request and thus establish that an SSC of at least 7.5% at harvest is an inherent property of the onion plants disclosed in document D1.

21. That the plants of document D1 have a PAD measurement of less than 5.5 myM/g FW, i.e. "low pungency", is already explicitly disclosed in document D1 (see points 8. and 9. above) and is confirmed by e.g. document D5 and document D8A.

22. Document D5 reports on field trials carried out by the National Onion Labs analysing the SSC and pungency of onion bulbs grown from the hybrid, EX16000, obtained from the two lines WYL 77-5128B and WYL 77-5168B deposited in document D1 (see point 4 of document D5). The results of these analyses are summarised in Annex 2 of document D5. The average pyruvate content was less than 5.5 myM/g fresh weight for all locations (see document D5, page 3, first full paragraph).

23. The board agrees with the appellant that it is evident from page 1, point 1 of document D5 that pungency levels were determined at harvest. The board also agrees with the appellant that should the measurements have been carried out later, then the pungency values at harvest would have been even lower because the pungency of the onion plants of document D1 increases during storage, see e.g. paragraph [0053] of document D1.

24. Finally, document D8A confirms that the EX07716000 variety "is a hybrid long day onion which combines all of the desired features of a typical long day Spanish hybrid onion with low pungency", see page 10, first paragraph.

25. From the above, the board concludes that the hybrid plant having as parents the long day onion plants WYL 77-5128B and WYL 77-5168B disclosed in paragraph [0081] of document D1 is an onion plant having a mean pyruvate level at harvest of less than 5.5 µMol/g FW, wherein said bulbs have a mean SSC at harvest of at least 7.5%.

26. In the board's judgement, the hybrid onion plants disclosed in paragraph [0081] of document D1 represent the closest prior art for the subject-matter of claim 1.

Technical problem

27. The claimed onion plant differs from the hybrid onion plant disclosed in document D1 solely in that it is defined as being obtainable by crossing a plant of which seeds were deposited under Accession No. PTA-9053, PTA-9054 or PTA-5 9055 with another onion plant. Contrary to the respondent's position, the claimed onion plant does not differ from the onion plant of document D1 by a significant higher SSC value and significant lower pungency value, see point 25. above. It was however uncontested that the genetics of the claimed onion plant differs from that of the hybrid onion plant of document D1, albeit in an unknown manner, see point 5. above.

28. With respect to the technical effect of this difference, the respondent submitted that it resulted in plants whose pungency decreased during storage, in contrast to the plants disclosed in document D1, whose pungency increased during storage. This difference resulted in the claimed onion bulbs having an improved storability.

29. The respondent's line of argument is based on a claim construction according to which the claimed plants have a set of genes also contained in one of the deposited seeds which cause a decrease of pungency during storage. For the reasons set out in point 6. above, this argument does not succeed.

30. Therefore, the board agrees with the appellant that the problem to be solved by the claimed subject-matter can be formulated as the provision of a further long-day onion plant producing bulbs having low pungency and high SSC.

Obviousness of the claimed solution

31. The question to be answered in assessing obviousness is whether the skilled person seeking to solve the above formulated technical problem and starting from the hybrid plants disclosed in document D1 would have arrived at the claimed plants without inventive effort.

32. Document D1 discloses that high solids and storability are correlated, see paragraph [0006], and already establishes that combining traits of long-day onion plants (bulb formation after 14 hours of light, high storability, high SSC) with the low pungency trait of short-day onion plants in a single onion plant/bulb requires no more than standard plant breeding techniques (see e.g. Examples and point 25. above).

33. In the board's judgement, the skilled person faced with the problem formulated above would have bred known long-day and short-day onion plants and select for the desired traits of "low pungency" and "high SSC" by employing routine methodology with a reasonable expectation of obtaining onions having both of these traits.

34. The respondent's counter-arguments are not found persuasive as they ignore that document D1 already discloses an onion plant having a mean pyruvate level at harvest of less than 5.5 µMol/g FW, wherein said bulbs have a mean SSC at harvest of at least 7.5% and because they are furthermore based on the assumption that the skilled person was faced with the problem of providing long-day onion plants which were improved with respect to storability.

35. The board concludes from the above that the subject-matter of claim 1 was obvious for the skilled person before the relevant date of the patent. The main request does not meet the requirements of Article 56 EPC.

Auxiliary requests 1 to 4

Admittance (Article 13(1) RPBA 2007)

36. Auxiliary requests 1 to 4 were filed in response to the board's communication and were meant to address the board's concerns with respect to added subject-matter of claim 2 of the main request.

37. The appellant objected to the admittance of auxiliary requests 1 to 3 into the appeal proceedings, because they addressed objections that had been raised in the statement of grounds of appeal and were thus filed late in the proceedings without justification and because they were not clearly allowable and introduced new problems.

38. Pursuant to Article 13(1) RPBA 2007, an amendment to a party's case after the filing of the statement of grounds of appeal or reply may be admitted and considered at the board's discretion. That discretion "shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy".

39. Indeed, the board's argumentation in the communication pursuant to Article 15(1) RPBA with respect to added subject-matter of claim 2 of the main request (see section V. above) corresponded to an objection made in the statement of grounds of appeal (see section III.). This objection could thus have been addressed sooner, i.e. in response to said statement of grounds of appeal. No persuasive explanation for not filing auxiliary requests 1 to 4 earlier was provided. These requests are thus considered to be filed late.

40. Moreover, claim 1 of auxiliary requests 1 and 2 is identical to claim 1 of the main request and cannot, therefore, overcome the deficiencies of the main request.

41. Claim 2 of auxiliary request 3 has been amended to include the feature "under cool temperatures", which is disclosed in the description of the patent. Considering this amendment would have required a discussion of the clarity requirement of Article 84 EPC because "cool temperature" is a relative term without a defined meaning. Thus, also this request was not clearly allowable.

42. Finally, in claim 1 of auxiliary request 4 the mean pyruvate level at harvest had been amended to read "less than 3.75 µMol/g fresh weight (FW)".

43. Since a mean pyruvate level at harvest of less than 3.75 µMol/g fresh weight (FW) is already disclosed in document D1, see claim 6, also the subject-matter of claim 1 of auxiliary request 4 does not prima facie overcome the deficiencies of the main request.

44. Thus, admission of auxiliary requests 1 to 4 into the appeal proceedings would not have served the interests of procedural economy.

45. In view of the above considerations, the board, exercising its discretion pursuant to Article 13(1) RPBA, decided not to admit auxiliary requests 1 to 4 into the appeal proceedings.

Conclusion

46. The sole claim request in the appeal proceedings does not meet the requirements of Article 56 EPC. Accordingly, the patent cannot be maintained in amended form on the basis of this request and, in the absence of another, allowable claim request, the patent has to be revoked.