T 1477/21 20-04-2023

1. Extension of subject-matter - Article 123(2) EPC - auxiliary requests 12-15.

1.1 Claim 1 of each of auxiliary requests 12 to 15 comprises, when compared with claim 1 as originally filed, the additional feature that

"the polymeric film (8) has a thickness of from 5 mym to 30 mym" (see point V above).

The opposition division noted (appealed decision, section 18.4.2)that paragraph [0010] of document O1 disclosed a broad range of 5 mym to 1 mm and also a narrower range of 50 mym to 80 mym.

The opposition division, referring to the ratio decidendi of T 2/81 (OJ EPO 1982, 394), found that the claimed range from 5 mym to 30 mym was also originally disclosed in this paragraph.

Based on the above, the opposition division acknowledged the compliance of claim 1 of auxiliary request 12 with the requirements of Article 123(2) EPC.

1.2 The opponent contested the correctness of the above conclusions (statement of grounds, point IV), arguing that there were substantial differences between the circumstances of the present case and those decided upon in T 2/81.

1.3 The Board agrees with the opponent.

1.3.1 The amended range considered allowable in T 2/81 resulted from the combination of the lower limit (0.05 ppm) of a smaller range with the higher limit of the general range (10 ppm), giving a new range which included the smaller range (see T 2/81, point 3. of the reasons).

The case at issue in T 2/81 however relates to a situation in which only one general range (1 ppb to 10 ppm) and only one preferred range (0.05 to 5 ppm) which is contained therein, are disclosed in the same sentence ("from 1 ppb to 10 ppm, preferably from 0.05 to 5 ppm", see point 3 of the reasons) in such a way that a skilled person would consider that these two ranges are unequivocally correlated to each other, and that the smaller range is a preferred range.

1.3.2 There are two major differences with the present situation (opponent's statement of grounds of appeal, point IV).

In the present case the claimed range, resulting from the amendment, has the lower limit of the general range (5 mym to 3 mm, see paragraph [0010]) and, as its upper limit, the lower limit of a smaller range of 30 to 80 mym (see again paragraph [0010]) with the result that the smaller range is now excluded.

The other, even more important, difference is that in the present case no clear and unequivocal correlation between the broader range and the smaller range can be derived from paragraph [0010] of O1.

There is no hint in O1 that such a relationship between these two particular ranges exists.

This correlation was however the basis upon which the competent Board decided in T 2/81 to allow the amendment.

Paragraph [0010] of O1 merely mentions one general range and nine smaller ranges contained therein, as well as a plurality of open-ended ranges.

1.3.3 As a consequence of the above the Board concludes that the opponent convincingly demonstrated that the ratio decidendi of T 2/81 has not been correctly applied in section 18.4.2 of the appealed decision.

1.4 The opponent then argued that claim 1 of each of auxiliary requests 12 to 15 contravened the requirements of Article 123(2) EPC because there was no basis in the originally filed documents for a thickness range having the value 30 mym as an upper limit.

This value is only disclosed as a possible lower limit in O1, and there is nothing in the originally filed documents which would lead a skilled person to identify the claimed range, which ends at 30 mym, as being disclosed.

According to the opponent, each range mentioned in paragraph [0010] of O1 is to be considered as a distinct embodiment.

1.5 The patent proprietor disagreed, as follows.

1.5.1 From the perspective of the skilled person, the range of 5 mym to 30 mym, added with respect to claim 1 as originally filed, only reduces an originally disclosed range (5 mym to 1 mm), selecting a new upper end point

which is of the same order of magnitude of the lower end point.

As paragraph [0010] of O1 unambiguously teaches that any thickness from 5 mym up to 3 mm can be selected, and unambiguously mentions, multiple times, a thickness of 30 mym, the claimed range clearly does not present the skilled person with any new technical information.

A skilled person would immediately understand, from paragraph [0010], that all values mentioned therein could be selected because they would consider the technical disclosure of paragraph [0010] as a whole, seeing that there is a technical correlation between the broader ranges and the smaller ranges disclosed therein.

The objection of the opponent, on the contrary, overlooked this technical correlation and artificially split the unitary teaching into a multitude of separated ranges, each range being a distinct embodiment.

The objection of the opponent was therefore to be rejected, being at odds with the so-called "gold standard" defined in G 2/10.

1.5.2 The patent proprietor cited decision T 1170/02 in support of its argument. In that decision a new range was allowed which was formed by taking the lower limits of two ranges disclosed in the same paragraph of the original description, as in the present case. T 1170/02 confirmed that the approach of the opponent was not correct, and that the technical disclosure of paragraph [0010] should be taken as a whole.

1.6 The Board disagrees with the patent proprietor.

1.6.1 The objection of the opponent does not appear to be in contradiction with the application of the gold standard defined in G 2/10 but is rather based thereon.

This is because the opponent convincingly argued that paragraph [0010] of O1 only contained a list of thickness ranges disclosed as separate embodiments, but did not provide any additional technical information allowing a skilled reader to establish a relationship, or even a ranking of preference, between them.

There is therefore no technical information, derivable from paragraph [0010] of O1, which would have led a skilled person to identify the claimed range, ending at 30 mym, as being originally disclosed.

It is therefore not apparent to the Board how a skilled reader could consider, following the patent proprietor, that the claimed range corresponds to technical information which was originally disclosed, simply because the upper limit thereof (30 mym) is consistently mentioned in O1 as the lower limit of multiple ranges.

The argument of the patent proprietor referring to the gold standard (letter of 4 April 2022, section E) is also not convincing because, if followed, the outcome would be that any pair of values comprised within the broadest range disclosed in paragraph [0010] of O1 (5 mym to 3 mm) may be arbitrarily employed as the upper and lower limits of a claimed range, without contravening the requirements of Article 123(2) EPC (see the letter of the opponent dated 31 March 2022, point III).

1.6.2 Claim 1 of auxiliary request 12 is also not allowable when the ratio decidendi of T 1170/02 is taken into consideration, for the following reasons (statement of grounds of appeal of the opponent, pages 10 and 11).

In T 1170/02 the allowed range followed from the lower limits of two consecutively presented ranges, thereby excluding the smaller, preferred range. The amendment was allowed because the skilled person would, in view of data related to examples presented in the originally filed documents, have seriously considered working beyond the lower limit of the preferred range.

Contrary to the particular circumstances in T 1170/02, there are no data in the originally filed documents in the present case on the basis of which the skilled person would seriously contemplate working below 30 mym, disclosed as the lower limit of the ninth preferred range, because no specific examples of the claimed container are provided.

1.6.3 The Board therefore concurs with the opponent that in claim 1 of auxiliary request 12 one of the many possible lower limits mentioned in paragraph [0010] of the original description was arbitrarily combined as an upper limit with the lower limit of the broader range mentioned therein, thereby creating a new range, which was not originally disclosed.

As a consequence of the above, claim 1 of auxiliary request 12 does not comply with the requirements of Article 123(2) EPC.

As the claimed range of thickness in claim 1 of each of auxiliary requests 13 to 15 has been amended to "5 mym to 30 mym", the same conclusion applies to these auxiliary requests which thus cannot be allowed either because of a lack of compliance with the requirements of Article 123(2) EPC.