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Case Law of the Boards of Appeal

 
 
5.2.1 Selection from a broad range

The principles applied by the boards of appeal as part of their established case law on the novelty of selection inventions were developed in particular in T 198/84 (OJ 1985, 209). They are summarised briefly in T 279/89, according to which a selection of a sub-range of numerical values from a broader range is new when each of the following criteria is satisfied:

(a) the selected sub-range should be narrow;

(b) the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples;

(c) the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

The three postulates for the novelty of a selected sub-range are based on the premise that novelty is an absolute concept. It is therefore not sufficient merely for the wording of the definition of an invention to be different. What has to be established in the examination as to novelty is whether the state of the art is such as to make the subject-matter of the invention available to the skilled person in a technical teaching (T 198/84, OJ 1985, 209; see also T 12/81, OJ 1982, 296; T 181/82, OJ 1984, 401; T 17/85, OJ 1986, 406).

With reference to the third criterion, the board in T 198/84 was of the opinion that this view of novelty really entailed more than just a formal delimitation vis-à-vis the state of the art. There would be delimitation only in respect of the wording of the definition of the invention, but not in respect of its content, if the selection were arbitrary, i.e. if the selected range only had the same properties and capabilities as the whole range, so that what had been selected was only an arbitrary specimen from the prior art. This was not the case if the effect of the selection, e.g. a substantial improvement in yield, occurred in all probability only within the selected range, but not over the whole known range (purposive selection).

To prevent misunderstanding, the board emphasised, following T 12/81 (OJ 1982, 296), that a sub-range singled out of a larger range was new not by virtue of a newly discovered effect occurring within it, but had to be new per se. An effect of this kind was not therefore a prerequisite for novelty; in view of the technical disparity, however, it permitted the inference that what was involved was not an arbitrarily chosen specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

In T 17/85 (OJ 1986, 406) the novelty of the claimed range was denied because the preferred numerical range in a citation in part anticipated the range claimed in the application. A claimed range could not be regarded as novel, at least in cases where the values in the examples given in the citation lay just outside the claimed range and taught the skilled person that it was possible to use the whole of this range.

In deciding the question of the novelty of an invention, the board in T 247/91 emphasised that consideration had to be given not only to the examples but also to whether the disclosure of a prior art document as a whole was such as to make available to the skilled person as a technical teaching the subject-matter for which protection was sought. The board stated that it was accepted by the appellant (patent proprietor) that a skilled reader of the cited document had no reason to exclude the range of 85 to 115°C claimed in the patent in suit when carrying out the invention disclosed in the citation. The teaching of the cited document was clearly not limited to the use of the exemplified temperatures, but extended to the whole described temperature range of 80 to 170°C which had been made available to the skilled person as a technical teaching. The subject-matter of the patent in suit lacked novelty.

In T 406/94 the board found that the percentage range cited in the prior art, although numerically close to the claimed range, could not be adduced to anticipate the subject-matter claimed, because the percentage cited in the prior art was based on different starting materials.

In T 209/94, although the temperature ranges of pyrolysing steps to be carried out for preparing fibres overlapped ("greater than about 1600°C" according to the invention and "from 900 to 1800" according to the prior art document), the functional limitation of the pyrolysing step established by the statement introduced into claims 1 and 2 of the application at issue - "for a period of time sufficient to reduce oxygen and/or nitrogen content of the fibres to below about 0.5% by weight" - distinguished the claimed process from the process according to the prior art document. Indeed, the board concluded from the latter document that the presence of nitrogen (and boron) in the fibres in certain amounts was essential for their temperature stability. Since this improved thermal stability of the fibres was the very object of the invention disclosed in the prior art, fibres which would not have met this requirement could not have been considered to be within the teaching of this document. This meant, by implication, that fibres having a nitrogen and/or oxygen content which was too low to produce the desired thermal stability were not within the scope of the invention disclosed in the prior art: the lowest value disclosed in the prior art document was 3.89%, whereas according to the application at issue the maximum amount permitted was 0.5%.

In T 610/96 the patentee (respondent) claimed a magnetoresistive material comprising magnetic and non­magnetic metallic thin film layers. The board found that the claimed ranges defining the composition of these layers must be considered as a narrow selection of the generic disclosure of prior art document D10, which did not overlap with the sub­ranges preferred in D10 and which further selected a specific non­magnetic layer among a group of possible layers. This selection was also sufficiently far removed from the specific examples of D10. Furthermore, the claimed material showed different characteristics of the magnetoresistance change, so that the specific sub­range was not simply an arbitrary part of the generic disclosure of D10, but was of a different nature and therefore novel. The criteria for selection inventions set out in T 279/89 were thus satisfied. Moreover, since a passage of D10 might be seen as a statement dissuading the skilled person from applying the concept of D10 in the sub­range of the contested patent, the person skilled in the art would not seriously contemplate applying the teaching of D10 in this range (see T 26/85, OJ 1990, 22).

In T 230/07 the board noted that novelty and inventive step are two distinct requirements for the patentability of an invention and therefore different criteria should apply for their assessment. So, the presence or absence of a technical effect within a sub-range of numerical values was not to be taken into account in the assessment of novelty. To establish novelty of a sub-range of numerical values from a broader range, the selected sub-range should be narrow and sufficiently far removed from the known broader range illustrated by means of examples. A sub-range is not rendered novel by virtue of a newly discovered effect occurring within it.

In T 1130/09, the "selection invention" principle had been applied in the contested decision for the purpose of assessing novelty, regard being had to the three criteria developed in T 198/84 (see OJ 1985, 209). The board observed that this principle was applicable where a narrow sub-range was selected from a broader range. The passage on page 9, lines 5 to 7, of document (2) disclosed that the dimensions of the structures were measured in nanometres or micrometres. Therefore, as had already been established in the contested decision, the range specifically claimed was a narrow selection which, in the absence of examples in document (2), had to be considered far removed from the central embodiments in that document.

The board thus held that the first two of the criteria defined in T 198/84 were met. The third - that a technical effect of the narrower sub-range claimed had to be demonstrated - could not, however, be considered for the purpose assessing novelty, because novelty and inventive step were two distinct requirements for patentability. A technical effect within the more narrowly claimed range did not confer novelty on a numerical range which was already novel per se, but merely confirmed its already established novelty. Whether or not there was a technical effect nevertheless remained a matter of inventive step (see T 1233/05; T 230/07). The board therefore held that, in relation to the structure dimensions, document (2) did not disclose the now claimed range of 10 nm to 100 mym and that the subject-matter of the original claim 1 was novel over document (2) within the meaning of Art. 54 EPC.