Zusammenfassung von EPC2000 Art 054 für die Entscheidung T1688/20 vom 19.10.2022

In T 1688/20 the board referred to the three criteria developed in T 198/84, as summarised in T 279/89, according to which a selection of a sub-range of numerical values selected from a broader range was considered novel, when each of the following criteria was satisfied: (a) the selected sub-range is narrow compared to the known range; (b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range; and (c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching). For criterion (c), the board concurred with the most recent decisions, including T 261/15, according to which the criterion of purposive selection was relevant for the question of inventive step rather than for novelty. Indeed, since 2019, the Guidelines for Examination in the EPO stated that only criteria (a) and (b) needed to be fulfilled (see G-VI, 8 (ii) - November 2019 version). With regard to criteria (a) and (b), the present board was not convinced that the relative terms "narrow" and "sufficiently far removed" provided objective, solid and consistent criteria for establishing novelty of a selected sub-range. The board was of the view that these terms were generally open to such a broad interpretation that the decision whether criteria (a) and (b) were met could also depend on the subjective perception of the deciding body on which values were to be considered "narrow" or "sufficiently far removed". Furthermore, the board was of the opinion that, at least in the present case, the remaining criteria (a) and (b) did not need to be assessed for the question of novelty. The board started its analysis by recalling that the European patent system must be consistent and the concept of disclosure must be the same for the purposes of Art. 54, 87 and 123(2) EPC (G 1/03, G 2/10 and G 1/16). The board observed that the various tests developed for different cases of amendments were only meant to provide an indication of whether an amendment complied with Art. 123(2) EPC as interpreted according to the "gold standard" (G 3/89, G 11/91 and G 2/10) and should not lead to a different result (see in particular T 1472/15 and T 437/17, regarding the essentiality test). The board thus held that the same approach should hold true for deciding on novelty of the claimed subject-matter with respect to the prior art, i.e. that no test or list of criteria should lead to a different result than when applying the "gold standard" directly, which was the absolute requirement in terms of disclosure. In light of the above, the board concluded that in cases where under application of the "gold standard" it could be established whether the skilled person, using common general knowledge, directly and unambiguously derived a claimed sub-range from a particular disclosed range of the prior art, no supporting test or criteria was necessary to reach a conclusion. Thus, none of the three criteria initially developed in T 198/84 needed to be applied. In the case in hand, the board concluded that, applying the "gold standard" the skilled person could not directly and unambiguously derive the subject-matter of claim 1 as granted from the disclosures of the cited prior art documents. It underlined in its assessment that it was consistent case law that general information, such as a range defined by its boundaries, could not anticipate a more specific technical feature, such as a specific value in that range. This also applied in the case that the alleged value was an adjacent value to be considered after one or the other boundary value.