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Case Law of the Boards of Appeal

 
 
2.1.9 Selection from generic disclosure

A generic disclosure implicitly encompassing two or more alternative embodiments cannot generally give rise to a right of priority in respect of one specific embodiment that is neither explicitly nor implicitly disclosed (T 61/85 and T 30/01).

In case T 77/97 two dependent claims 4 and 5 of a European application related to individual compounds which were part of the group defined by the generic formula of claim 1. Claim 3 of the priority document defined by means of a generic formula a group of four chemical compounds, including those according to claims 4 and 5 of the subsequent European application. The board acknowledged that the priority document contained sufficient information for a skilled person to obtain without difficulty the four chemical compounds according to the generic formula of claim 3. However, this could not automatically lead to the recognition of the priority for claims 4 and 5 of the subsequent application. It was not sufficient to establish that the compounds concerned fell within the scope of the claims of the previous application, and that they could be prepared without difficulty in accordance with the information contained in this application (T 409/90, OJ 1993, 40; see under point 2.1.3 above). The expression "the same invention" as used in Art. 87(1) EPC 1973 had to be interpreted in conformity with the requirements of Art. 88(2) to (4) EPC 1973. The applicant had claimed the right of priority not only in respect of the element which distinguished all the compounds claimed in all the claims of the European application from the prior art, but also in respect of the specific combination of individual substituents which precisely defined the actual chemical compounds. It was therefore necessary to examine whether these elements, this set of features, had been revealed precisely by the documents of the prior application, as required by Art. 88(4) EPC 1973. Although there was no doubt that the priority document described a very narrow group as being preferred, it did not, however, distinguish between the four compounds of this group, and neither did it specify that the formula of claim 3 had to be considered as an "abridged" formulation of a list or table indicating four individual chemical compounds. As a consequence, claims 4 and 5 could not be granted the claimed priority right (see also T 295/87).

The invention at issue in T 30/01 concerned an apparatus for optical imaging and measurement. The board rejected the appellant's argument relating to an implicit disclosure in the priority document of two possible implementations of the teaching of the document, noting that its description unmistakeably indicated the provision of the light steering means "in the sample arm". This precise disclosure deprived of support the appellant's construction of the disclosure as implicitly disclosing the provision of the light steering means in and outside the probe as two complementary alternative implementations - let alone as disclosing any specific one of these two alternatives by way of "implicit disclosure" by reference to common general knowledge (T 823/96, T 744/99 and T 818/00). The board also pointed out that the appellant's contention was at variance with the criterion consistently applied by the boards of appeal that a generic disclosure implicitly encompassing two or more alternative embodiments can generally not give rise to a right of priority in respect of a specific one of the embodiments that is neither explicitly nor implicitly disclosed (T 61/85) the latter criterion being a particular form of the "disclosure test" laid down in G 2/98 (OJ 2001, 413) and constituting the logical corollary of the established principle - confirmed in opinion G 2/98 (see also T 744/99) - that no right to priority can be acknowledged for an invention that is regarded as novel over the disclosure of the corresponding priority document.

T 788/01, T 899/04, T 70/05 and T 971/08 also saw the boards apply the principle that a generic disclosure cannot provide priority for a specific embodiment not disclosed in the priority document.

In T 903/05 the claims of the patent related to the use of a telomerase peptide consisting of the sequence of SEQ ID NOs: 2, 3, 4, 9 or 10 for the manufacture of a medicament for the treatment or prophylaxis of cancer, the treatment or prophylaxis comprising generating a T cell response. The priority document disclosed more generally the use of telomerase peptides for use in a method of treatment or prophylaxis of cancer, in which a T cell response is generated. Among the preferred peptides were those of SEQ ID NOs: 2, 3, 4, 9 and 10, which were also part of the list of peptides disclosed in Tables 1 and 2. The board recalled that, according to G 2/98 (OJ 2001, 413), if the invention claimed in a later European patent application constituted a selection invention in respect of the subject-matter disclosed in a first application whose priority was claimed, the criteria applied by the EPO with a view to assessing the novelty of selection inventions over the prior art had also to be considered carefully when assessing whether the claim in the European patent application was in respect of the same invention as the priority application within the meaning of Art. 87(1) EPC 1973. Such priority claims should not be acknowledged if the selection inventions in question were considered "novel" according to these criteria. The board considered that in the case before it the selection of specific peptides from the disclosure of the priority document did not result in novel subject-matter since the selection was made from only one list of entities, i.e. the preferred peptides specified in the claims and Tables 1 and 2, such that the claimed subject-matter was directly and unambiguously derivable from the priority document.

According to the board in case T 110/07, the priority document P1 failed to disclose the range in the feature of claim 1 of the subsequent European application "sodium diffusion barrier layer ... having a thickness of at least 10 nm". Nor, in view of G 2/98 (OJ 2001, 413), was either the claimed lower limit of 10 nm or the open-ended range of ≥10 nm directly and unambiguously derivable from P1. The board considered a "novelty test" based on the concept of overlapping ranges (as had been applied by the opposition division) to be inappropriate in view of G 2/98, because in this case there was no overlap but rather a generalisation of ranges. According to G 2/98 priority claims should not be acknowledged if the selection inventions in question are considered "novel" according to the criteria applied by the EPO in assessing novelty of selection inventions over the prior art. However, it did not automatically follow from this statement that priority claims should be acknowledged if the selection inventions in question were considered not "novel". The board drew attention to decisions T 1233/05, T 230/07 and T 1130/09, according to which the demonstration of a technical effect over a sub-range is not decisive for acknowledging novelty. A sub-range must be novel per se.