Zusammenfassung von EPC2000 Art 076 für die Entscheidung T2171/21 vom 07.11.2023

In T 2171/21 the board explained that there existed a difference between the conceptual disclosure of a number of possible combinations and the individualised disclosure of specific combinations. While the former might be a more economical way of drafting a patent application, it did not necessarily allow the skilled person to derive each and every individual combination directly and unambiguously. In the case in hand, claim 1 was directed to a specific dosage regimen (steps (a) and (b) of the claim) including a specific induction dose (150 mg) for a specific disease (AS). The disease AS was disclosed in the earlier application as filed in a list comprising RA and a generic reference to other forms of inflammatory arthritis, which were exemplified by three concrete diseases. The dosage regimen was disclosed in the last of nine rows in Table 5, and the induction dose was disclosed as one of two options in the last row of Table 5. To arrive at the claimed subject-matter, the skilled person had to select one element from each of the three lists and combine the three, or they had to "compute" all possible combinations (48 in this case) and discard 47 of them. Neither approach could be considered to lead to subject-matter disclosed directly and unambiguously in the earlier application as filed. Due to the repeated necessity for making selections, the selection from three lists could not be seen as resulting in subject-matter derivable from what was directly at the disposal of the skilled person. The calculation of all possible combinations, due to the step of computing, was not direct. The respondent argued that the situation was fundamentally different from the selection of groups for substitution in a Markush formula. The board disagreed. In the same way that Markush formulae could represent conceptual combinations of lists of different chemical groups (e.g. R1 and R2) with different core structures, the disclosure in the earlier application as filed represented conceptual combinations of different dosage regimens and induction dosages with different diseases. Just as different chemical groups could not coexist at the same position on a given chemical core structure, the same patient with a disease could not be treated at the same time with different dosage regimens or different induction dosages. The board agreed with the respondent that considerations on a selection from several lists were not meant to replace the gold standard (G 2/10, point 4.3 of the Reasons). An aspect also addressed by the Enlarged Board in G 2/10 was the issue of "singling out" by holding that "there would be added matter" where the amendment "would result in singling out any hitherto not specifically mentioned or at least implicitly disclosed individual compound or group of compounds ..." (point 4.5.4 of the Reasons). The board held that the "singling out" of a combination of features was precisely what happened in claim 1 of the present case (T 2273/09). Furthermore, the board agreed with T 3035/19 that considerations on selections from two or more lists of some length provided valuable guidance. However, the board also acknowledged that the combination of features resulting from selections from two or more lists only added subject-matter in the absence of a pointer to that particular combination. The concept of selection from lists had to be applied with due regard to the whole content of the earlier application as filed. In the case in hand, the earlier application as filed did not contain a preference for or pointer to any of the combined features or to the chosen combination. The ground for opposition in Art. 100(c) EPC thus prejudiced the maintenance of the patent.