1.6.2 Selections from two lists – singling out a combination of features
(i) Combination not individualised in the application as filed – examples
In the board's view in T 686/99 the application as filed disclosed in an undifferentiated way different categories of base oils without any pointer regarding the selection of one particular category thereof. Priority was not given to ester oils from the original host of equivalent base oils. Therefore the board came to the conclusion that combining in claim 1 a base oil mandatorily comprising ester oils with the hydrofluorocarbons listed in claim 1 resulted from a multiple selection within two lists of alternative features, namely of ester oils from the list of base oils and of hydrofluorocarbons from the list of refrigerants, thereby generating a fresh particular combination. In the absence of any pointer to that particular combination, this combined selection of features did not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed.
In T 714/08 claim 1 of the main request had been amended so as to limit the first oxidation base to paraphenylenediamine and the list of couplers to 12 compounds, but the specific combination of paraphenylenediamine with each of those couplers could not be derived directly and unambiguously from the application as filed. The board did not accept the argument that the application as filed had already individualised paraphenylenediamine as a preferred first oxidation base. In its view, the cited passage related solely to a specific example. The case differed from those concerning restrictions applied to lists of substituents in Markush-type chemical formulas (see T 615/95 or T 50/97; see the abstracts in this chapter II.E.1.6.3 below); the restrictions there had not resulted in singling out particular combinations but had retained the generic nature of the chemical formula defining the claimed products.
In T 407/10 the board at first concurred with the appellant that, whereas the combination of e.g. two features only originally disclosed in lists of equivalent alternatives was normally found to violate Art. 123(2) EPC, there might be other combinations of features which although not explicitly disclosed in the application as filed were nevertheless derivable from the presence of an (explicit or implicit) pointer thereto. For instance, the fact that certain features were disclosed as preferred in the original application acted as a pointer for the skilled person, as the combination of preferred features was obviously the best way of achieving the technical effects that the invention aimed to provide (see e.g. T 68/99). However, this jurisprudence did not consider the combination of a feature not originally disclosed as preferred with a plurality of further restrictions based on preferred features as an amendment in accordance with Art. 123(2) EPC.
In T 775/17, the board (referring to T 407/10) held that under established case law combining a feature that had not originally been disclosed as preferable with a number of other limitations based on preferred features was not an amendment compatible with Art. 123(2) EPC.
In T 1799/12 the board considered that the jurisprudence and T 407/10 correctly referred to further circumstances that need to be taken into account, such as pointers to that selection or combination in the description and in the examples, for instance the fact that the features in question have been mentioned in the description as "preferred". By contrast, in the case at issue, no pointer was available towards the choice of a square or rectangular base wall shape, but there was a clear pointer in the opposite direction, namely towards base wall shapes without any corners ("generally circular" or "oval").
In T 2273/10 the appellant (patent proprietor) argued that claim 1 was a combination of the invention's most preferred features, and did not involve a selection from various lists. The board disagreed. The application as filed disclosed several possibilities for each of the three features. To arrive at the claimed wording, the skilled person had to make a selection from various lists. In addition these selections related to preferred and non-preferred features.
Similarly, in T 1150/15 the board rejected the proprietor's approach to combine the preferred options for each of the substituents Y, X and Z disclosed on page 75, to disregard the preferred option for RB disclosed in the same context and to combine it with a definition which has been singled out of the most general list of options for substituent A as arbitrary. The board distinguished its case from the facts underlying T 615/95 (see chapter II.E.1.6.3 below).
In T 1259/16 the claimed combination of the features characterising the claimed solution – "free of free bromine" and "less than 100 ppm of metal ion impurities" – was not explicitly disclosed in the application as filed. The board considered that the lists relating to free bromine levels and metal ion impurities were fully independent. The various levels of free bromine and metal ion impurities represented equally suitable alternatives. The skilled person reading the application would not recognise that the lower values were necessarily more preferred, as reducing impurities to as low a level as possible was both impractical and uneconomical. The claimed combination was therefore contrary to Art. 123(2) EPC.
In T 1476/15 it was held that there was neither an explicit nor an implicit yet direct and unambiguous disclosure in the patent application which indicated that the concentration ranges of the elements in question (polyamines and plant- and yeast-derived protein hydrolysate) had to be read hierarchically and in parallel, where each parallel position in the sequence of five increasingly preferred embodiments of these two lists was combined. Even taking into account the examples, the board could not identify why the specific concentration ranges mentioned in the claim ought to be combined. This conclusion was in line with the view expressed in T 1511/07.
Similarly, in T 1465/15 the board could see no pointer to the claimed combination (of a preferred range of soy hydrolysate with a target protein to be expressed); no preference for the claimed combination over any of the remaining combinations was derivable from the relevant list of converging alternatives of concentration ranges.
(ii) Combination individualised in application as filed – examples
In T 45/12 the board considered that the specific combination of pioglitazone with glimepiride was singularised in the root application as filed. All through the description of the root application as filed pioglitazone was disclosed as the most preferred sensitivity enhancer to be used in combination with another antidiabetic agent. Glimepiride was one specific antidiabetic agent disclosed for use as second component in the composition. Thus, even assuming that the composition containing pioglitazone with glimepiride would require a selection (among the specific antidiabetic agents disclosed to be combined with pioglitazone), this one-dimensional selection did not introduce added subject-matter.
In T 1032/12 the board rejected the appellant's argument that the claimed polypeptide was defined by two features selected from two independent lists. The board considered that, in the case at issue, the protein of SEQ ID NO:2 was singled out as the particularly preferred polypeptide, and when reference to fragments as the preferred sequences was made, they were always labelled as "particularly preferred fragments". Therefore, the reference in the description to "the preferred polypeptide" was a reference to the polypeptide of SEQ ID NO:2. It was this specific mention of the full-length molecule as the particularly preferred molecule that distinguished the case at issue from the case underlying decision T 583/09, referred to by the appellant, where different molecules had been presented as equivalent alternatives.
In T 1402/14 the board considered that the situation in the case in hand was different from that in T 1511/07 (see point a) above), where the board had considered that the application as filed did not contain any pointer towards combining two ranges of different level of preference. In the case in hand, the combined ranges were of the same level of preference (broadest definition of each range). In the board's view, claim 1 of auxiliary request 1 therefore did not contain any subject-matter extending beyond the content of the application as filed.
T 2723/16 is another decision in which the selection was deemed to have already been disclosed as preferable.