c) Earlier case law: three requirements for novelty 

With regard to this third criterion (arbitrary or purposive selection) when it was first formulated, the board in T 198/84 was of the opinion that this view of novelty really entailed more than just a formal delimitation vis-à-vis the state of the art. There would be delimitation only in respect of the wording of the definition of the invention, but not in respect of its content, if the selection were arbitrary, i.e. if the selected range only had the same properties and capabilities as the whole range, so that what had been selected was only an arbitrary specimen from the prior art. This was not the case if the effect of the selection, e.g. a substantial improvement in yield, occurred in all probability only within the selected range, but not over the whole known range (purposive selection). To prevent misunderstanding, the board emphasised, following T 12/81 (OJ 1982, 296), that a sub-range singled out of a larger range was new not by virtue of a newly discovered effect occurring within it, but had to be new per se. An effect of this kind was not therefore a prerequisite for novelty; in view of the technical disparity, however, it permitted the inference that what was involved was not an arbitrarily chosen specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

In T 17/85 (OJ 1986, 406) the novelty of the claimed range was denied because the preferred numerical range in a citation in part anticipated the range claimed in the application. A claimed range could not be regarded as novel, at least in cases where the values in the examples given in the citation lay just outside the claimed range and taught the skilled person that it was possible to use the whole of this range.

In deciding the question of the novelty of an invention, the board in T 247/91 emphasised that consideration had to be given not only to the examples but also to whether the disclosure of a prior art document as a whole was such as to make available to the skilled person as a technical teaching the subject-matter for which protection was sought. The board stated that a skilled reader of the cited document had no reason to exclude the range of 85 to 115°C claimed in the patent in suit when carrying out the invention disclosed in the citation. The teaching of the cited document was clearly not limited to the use of the exemplified temperatures, but extended to the whole described temperature range of 80 to 170°C which had been made available to the skilled person as a technical teaching. The subject-matter of the patent in suit lacked novelty.

In T 610/96 the patentee claimed a magnetoresistive material comprising magnetic and non-magnetic metallic thin film layers. The board found that the claimed ranges defining the composition of these layers must be considered as a narrow selection of the generic disclosure of prior art document D10, which did not overlap with the sub-ranges preferred in D10 and which further selected a specific non-magnetic layer among a group of possible layers. This selection was also sufficiently far removed from the specific examples of D10. Furthermore, the claimed material showed different characteristics of the magnetoresistance change, so that the specific sub-range was not simply an arbitrary part of the generic disclosure of D10, but was of a different nature and therefore novel. The criteria for selection inventions set out in T 279/89 were thus satisfied. In T 100/12 too, all three criteria were met.

For a decision in which the prior art under consideration was taken into account pursuant to Art. 54(3) EPC, see T 847/07. In that case the board applied the "purposive selection" requirement in its assessment of novelty.