Zusammenfassung von EPC2000 Art 123(2) für die Entscheidung T1261/21 vom 10.01.2024

In T 1261/21 the board established that in claim 1 of auxiliary request 26, the deodorisation time and the deodorisation temperature were limited based on a disclosure of converging numerical ranges or converging elements of the same feature (also named "converging alternatives" in some board decisions) in claims 3 and 4 of the application as filed. The triglyceride composition was limited based on a list of non-converging alternatives in claim 10 of the application as filed. The board explained that the "gold standard" must be applied universally to assess whether amendments comply with Art. 123(2) EPC (G 2/10). In the case in hand, the criteria set out in T 1621/16 were helpful. The board concurred with T 1937/17 that the first criterion in point 2 of the Catchword of T 1621/16 ("the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution") should not be taken into account when establishing whether there was a direct and unambiguous disclosure for the combination of features resulting from a multiple selection. However, the board agreed with the conclusion in point 1 of the Catchword of T 1621/16 that the choice of a more or less preferred element from a list of converging alternatives should not be treated as an arbitrary selection because this choice did not lead to a "singling out". The board further agreed that in general a pointer to the combination of features resulting from multiple selections was necessary to comply with Art. 123(2) EPC (see second criterion in point 2 of the Catchword of T 1621/16). In this context, the present board preferred the term "converging elements" to "converging alternatives", as "alternatives" seemed to imply that there were real alternatives that did not overlap. Furthermore, the board agreed with T 1133/21 that, first, the mere fact that features were described in terms of lists of more or less converging elements (alternatives) did not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed. This was particularly relevant where an application as filed provided a large reservoir of options and alternatives. Second, factors which may play a role in the assessment of Art. 123(2) EPC were, inter alia, the number of elements (alternatives) disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features. In addition, the board considered that the question of whether the claimed combination of features merely resulted from the combination of claims having an appropriate back-reference to each other (see T 2237/10) played a role in the assessment of compliance with Art. 123(2) EPC. Particularly relevant was whether there was a pointer to the claimed combination of features. This was especially so in cases like the present one where only very few "selections" were necessary to arrive at the claimed combination of features. A pointer was an (implicit or explicit) indication or hint towards the combination of features in question. The pointer needed to be suitable for demonstrating that the claimed combination of features was envisaged in the application as filed. Typically, it consisted of an example or embodiment. In the board's view, there was not normally only one pointer towards the most preferred example or embodiment. Finally, the board observed that an overly formalistic application of the concept of multiple selections from lists of alternatives should be avoided (see T 1210/20). Thus, the question was whether there was a pointer in the application as filed to the combination of the two numerical ranges relating to different levels or enumerations of converging elements, and a selection from a list of non-converging alternatives. Example 1 of the application as filed exemplified the deodorisation of cocoa butter. In the board's view, this emphasised that cocoa butter was a preferred triglyceride composition. Thus, the selection of cocoa butter was not arbitrary. Also, the experiments of example 1 all fell within the time and temperature requirements of claim 1, thus supporting that the claimed combination of features was not the result of an arbitrary selection. The board concluded that the subject-matter of claim 1 of auxiliary request 26 met Art. 123(2) EPC.