6.3.1 Selection of a sub-range
As evoked above, initially a third criterion was required, namely that "(c) the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection)". This criterion is now considered relevant in the assessment of inventive step rather than novelty (see T 1233/05, T 1131/06, T 230/07, T 913/07, T 1130/09, T 2041/09, T 492/10, T 1948/10, T 423/12, T 378/12, T 1404/14, T 261/15). Some isolated counter-examples do exist: see for example decision T 66/12, in which the board left it open as to whether the first two criteria were satisfied in light of its conclusion that the third criterion was not met. See also T 673/12 and T 2438/13, which recalled the three criteria for the examination of novelty.
In T 230/07 the board noted that novelty and inventive step are two distinct requirements for the patentability of an invention and therefore different criteria should apply for their assessment. So, the presence or absence of a technical effect within a sub-range of numerical values was not to be taken into account in the assessment of novelty. To establish novelty of a sub-range of numerical values from a broader range, the selected sub-range should be narrow and sufficiently far removed from the known broader range illustrated by means of examples. A sub-range is not rendered novel by virtue of a newly discovered effect occurring within it.
In T 1130/09 the "selection invention" principle had been applied in the contested decision for the purpose of assessing novelty, regard being had to the three criteria developed in T 198/84 (see OJ 1985, 209). The board observed that this principle was applicable where a narrow sub-range was selected from a broader range. The passage on page 9, lines 5 to 7, of document (2) disclosed that the dimensions of the structures were measured in nanometres or micrometres. Therefore, as had already been established in the contested decision, the range specifically claimed was a narrow selection which, in the absence of examples in document (2), had to be considered far removed from the central embodiments in that document. The board thus held that the first two of the criteria defined in T 198/84 were met. The third – that a technical effect of the narrower sub-range claimed had to be demonstrated – could not, however, be considered for the purpose assessing novelty, because novelty and inventive step were two distinct requirements for patentability. A technical effect within the more narrowly claimed range did not confer novelty on a numerical range which was already novel per se, but merely confirmed its already established novelty. Whether or not there was a technical effect nevertheless remained a matter of inventive step (many decisions have applied this approach; see T 1233/05, T 1131/06, T 230/07, T 913/07, T 2041/09, T 492/10, T 1948/10, T 423/12, T 378/12, T 1404/14 and T 261/15). Indeed in T 378/12, concerning criterion (c), the board was of the view that purposive selection was relevant for assessing inventive step but not novelty. Consequently, since the claimed sub-range met the criteria (a) and (b), the board judged that the subject-matter of claim 1 was new.