Quick Navigation

 

Case Law of the Boards of Appeal

 
 
1.1.5 Value ranges, lists, singling out, generalisation

In T 201/83 (OJ 1984, 481), the board came to the conclusion that the amendment of the concentration range for a component of a claimed alloy was admissible on the basis of a value described in a specific example since the skilled person could have readily recognised that this value was not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention to a significant degree. The new limit could therefore be deduced from the original documents. In T 17/86 (OJ 1989, 297) the examining division took the view that, although the introduction into a claim of a particular technical feature constituted a limitation, it nevertheless contravened Art. 123(2) EPC 1973 since the feature concerned had been described in the application solely in association with another feature not included in the claim. The board, however, stated that the application as filed unmistakably showed that the combination of technical features in the new claim thus amended was sufficient to produce the result sought in the application.

In T 526/92 the patent related to an additive concentrate having a high TBN of at least 235 for incorporation in a lubricating oil composition. The application as filed contained no explicit reference to TBN apart from the examples where 235 was the lowest value mentioned. The feature "having a high TBN of at least 235" was introduced during the examination proceedings to distinguish the claimed subject-matter from compositions with low TBN values up to 100 disclosed in a citation. The board revoked the patent on the grounds that it breached Art. 123(2) EPC 1973, stating that the precondition of the disclaimer had not been met (see Chapter II.E.1.4 for law now applicable to disclaimers).

In this case, TBN values had not been originally disclosed as a "broad" range but only as single, punctate values; thus a new range was defined which had not been disclosed originally. Furthermore, the generic part of the original specification did not contain any information indicating that TBN played any role in the framework of the application in suit. This meant that there was also no information whatsoever concerning a TBN range, whether open-ended or not. Nor was there any information at all in the description regarding the contribution of a TBN to the solution of a technical problem. Moreover, it could not be concluded that the individual TBN values disclosed in the examples were representative of a TBN range starting at 235 and without any upper limit. The board held that if values of a parameter are only given in the examples, without the significance of this parameter becoming evident from the original specification, no range must be arbitrarily formed, which is open ended at one side and has one limit selected from the examples (decision approved and cited by T 931/00 - also referring to T 201/83 (OJ 1984, 481) - which concerned the creation of a new parameter range by defining its upper limit by selecting a single value from an example. T 1004/01 summarises the findings made in T 526/92).

In T 433/01 the board's view was that the second auxiliary request would in all probability also have failed to meet the requirements of Art. 123(2) EPC 1973 because it did not satisfy the criterion derived from T 201/83 (OJ 1984, 481) that for a generalisation based on a value described in an example to be admissible, that value had to be manifestly independent of the other features of the example in terms of the relevant technical properties.

The board in T 876/06 suggested that according to EPO practice, as stated for instance in T 201/83, an amendment of a concentration range in a claim for a mixture is allowable on the basis of a particular value described in a specific example, if the skilled person could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of the invention as a whole in a unique manner and to a significant degree. Applying this principle, the board came to the conclusion that the skilled person could have recognised in the application as originally filed that the weight ratio of liquid rubber to solid rubber was not so closely associated with the other features of the examples as to determine the effect of the invention as a whole in a unique manner and to a significant degree. Thus, according to the board, in this case it was permissible to use the particular value used in several examples to limit the range of the weight ratio of liquid rubber to solid rubber. The limitation of the claim represented merely a quantitative reduction of a range to a value already envisaged within the document and not an arbitrary restriction providing a technical contribution to the subject-matter of the claimed invention in accordance with point 10 of the Reasons in T 201/83. The board also found incorrect the argument of the respondent/opponent that the amendment in T 201/83 was only considered allowable because it represented the lowest value disclosed with regard to the then claimed invention. In the board's view this fact played no role at all. Nor did the board agree with the argument that decision T 201/83 had been overruled by later decisions of the Enlarged Board of Appeal. The requirements of Art. 123(2) EPC 1973 were fulfilled.

The board decided in case T 184/05 relating to Art. 123(2) EPC that an impurity concentration value of a product obtained under specific process conditions could not be taken in strict isolation from the examples unless it had been demonstrated that this value was not so closely associated via the applied process with specific (undisclosed) maximum values of all other impurities comprised in the product.

In T 570/05 the invention related to a solar-control coated substrate with high reflectance, and the proposed amendment read as follows: "…the … coating layer has a thickness of from 220 to 500 nm", for which the only literal basis in the application as originally filed for the lower value of 220 nm of the claimed coating thickness range was to be found in examples 18, 21 and 25. The formal disclosure of the value "220" already existed; the issue to be decided was whether or not new subject-matter was added by forming a new range in a claim using said figure of 220 nm, it being evident that nowhere in the documents as filed did said value form the lower (or indeed any) endpoint of a range of thicknesses. Recalling the relevant case law namely, T 201/83, T 1067/97 and T 714/00 (see also point 1.2. of this chapter), dealing with extracting an isolated feature, the board examined whether or not there existed a functional or structural relationship between the coating layer thickness, in particular its lower limit, and the remaining features of the claim. The board concluded that the condition of absence of any clearly recognisable functional or structural relationship under which an isolated extraction of a feature of an example would be allowable under Art. 123(2) EPC according to the relevant case law was not satisfied in the present case.

The board in T 1146/01 had to answer the question of whether one measurement of a selected characteristic or property of a sample disclosed only in an individual example could be relevant to the generality of the claimed subject-matter, separately from and irrespectively of the other parameters inherent to the same sample. The situation in this case was different from the case in T 201/83. In T 201/83 an amendment was allowed on the basis of a particular value described in a specific example, provided the skilled person could readily have recognised that value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree. In T 1146/01, however, the board stated that formulating a new range on the basis of individual values taken from selected examples, which were not at all directly related to each other, meant that the reader was confronted with new information not directly derivable from the text of the application as originally filed.

According to the appellant in case T 99/09, the added feature was to be regarded as an invisible term without any additional technical content. The board observed that said feature had been disclosed in the application as filed only in combination with other structural or functional features. It was never disclosed in isolation. The application as filed provided no basis for a generalisation. Furthermore, the board pointed out that this feature had a generally established technical meaning in the relevant field. Finally, the board concluded that the term in question, although vague, did make a technical contribution to the claimed subject-matter and could not be regarded as "invisible" (in breach of Art. 123(2) EPC).

In T 727/00 the board held that the combination - unsupported in the application as filed - of one item from each of two lists of features meant that although the application might conceptually comprise the claimed subject-matter, it did not disclose it in that particular individual form. For that reason alone, claim 1 of the main request was not supported by the description. With regard to "two lists", see also below T 783/09.

Although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub range, is not contestable under Art. 123(2) EPC when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be disclosed in the application as filed, unless there is a clear pointer to such a combination (T 1511/07).

Contrary to the appellant/patent proprietor's allegation, the board in T 1374/07, referring to T 811/96, said that a selection of two components from one list is in fact equivalent to a twofold selection from two identical lists.

According to the boards' consistent case law, the guiding principle is that deleting meanings of residues must not lead to the selection, in the respective lists, of a particular combination of single, specific but originally undisclosed meanings of residues (see T 615/95 and T 859/94).

In T 942/98, precisely this had occurred through the deletion of all other meanings, residues X1, X2 and R5 had been narrowed down to a single meaning, leading to a combination of specific meanings of residues not disclosed in the application as filed. Consequently, claim 1 as filed did not in itself provide adequate support for claim 1 as amended (cited by T 2013/08 in connection with the established case law concerning "singling out").

In T 615/95 there were three independent lists of sizeable length specifying distinct meanings for three residues in a generic chemical formula in a claim. One originally disclosed meaning was deleted from each of the three independent lists. The board stated that the present deletions did not result in singling out a particular combination of specific meanings, i.e. any hitherto not specifically mentioned individual compound or group of compounds, but maintained the remaining subject­matter as a generic group of compounds differing from the original group only by its smaller size. Such a shrinking of the generic group of chemical compounds was not objectionable under Art. 123(2) EPC 1973, since these deletions did not lead to a particular combination of specific meanings of the respective residues which was not disclosed originally or, in other words, did not generate another invention (see also T 948/02, which refers in detail to the case law on the deletion of one originally disclosed meaning and which did not allow the amendment of a generic chemical formula; see also T 659/97 and T 894/05).

In case T 209/10, the appellant/patent proprietor alleged that claim 1 did not concern an unallowable selection; it concerned the merely deletion of some option(s) from one list. According to the opponent, the application as originally filed concerned therapy of bone loss and did not singularise the treatment of postmenopausal osteoporosis in postmenopausal women. Claim 1 addressed a medical use claim [in the Swiss-type form] in which the selection of the disease to be treated together with the selection of the dosage form amounted to an individualisation or singling out which was not directly and unambiguously derivable from the application as originally filed. In the board’s view it had to be assessed whether the application as originally filed singled out the "invention" specified in claim 1, and whether the claim included technical information not directly and unambiguously derivable from the application documents as originally filed. The board came to the conclusion that the application as originally filed disclosed the technical effect of prevention of bone loss, which was not identical to the prevention of post-menopausal osteoporosis in a post-menopausal woman. Post-menopausal women were selected from a list of several possible options for the patients to be treated. Apart from the selection and individualisation of the disease to be treated and the subgroup of patients, a further selection also took place in claim 1 of the main request, namely that concerning the form of the medicament as a tablet or capsule. The oral route did not equate with the selection of tablets and capsules since other forms such as solutions and suspensions might also be possible. Moreover, the patient was identified as an aging human and there was no preference for post-menopausal women to be linked to a particular dosage form. Claim 1 included technical information which was not directly and unambiguously derivable from the application as originally filed and singled out subject-matter which was not disclosed in an individualised manner in the application as originally filed.

In T 98/09, which concerned the "singling out" of combinations of active ingredients not originally disclosed from lists, the board held that, contrary to the appellant's view, a deletion from a list could also constitute an inadmissible extension if the singling out of one individual ingredient led to a selection of combinations which, even if conceivably covered by the application as filed, had not been specifically disclosed. It was the boards' settled case law that such a selection is to be regarded as an inadmissible extension and so as an infringement of Art. 123(2) EPC (see e.g. T 727/00, point 1.1.4 of the Reasons; T 686/99, point 4.3 of the Reasons).

In T 653/03, the original term "diesel engine" in claim 1 was replaced by the term "combustion engine". Thus the suitability of the claimed method was generalised to any type of combustion engine. The board decided that the treatment of exhaust gas in the original application was always related to a diesel engine, and it could not be inferred by the skilled person that the subject-matter of the granted patent extended to a method which was suitable for any type of combustion engine. The technical contribution was that the amended method was suitable for any type of combustion engine, whereas in the original form it was suitable only for a diesel engine. The generalisation was not admissible.

In T 1241/03, in view of the general disclosure of the application as filed, the reference in a claim to a combination of compounds in specific concentrations, explicitly disclosed in different passages of the application, was not considered by the board to be an amendment of the patent which extended beyond the content of the application as originally filed.