1.5.1 Forming a range by combination of end points of disclosed ranges
In T 1919/11 the subject-matter of claim 1 of the main request related to silver at a concentration of at least 1µM to less than 200µM. In the description, it was stated in two separate consecutive sentences that "When silver is incorporated in the medium, it will be added at a concentration of less than 900 µM, preferably less than 500 µM, and more preferably less than 200 µM" and "When silver is incorporated in the medium, it will be added at a concentration of at least 10 nM, preferably 100 nM, more preferably 1 µM, and typically at 10 µM". The board observed that the situation in the case at issue was not comparable with that in T 1107/06 and dealt with in the settled jurisprudence of the boards of appeal. A general range, which means a lower limit which is unequivocally combined with an upper limit, and a preferred disclosed narrower range – equally consisting of a lower limit which is unequivocally combined with an upper limit – were simply missing. Even a kind of parallel structure in indicating the upper and lower limits (less/at least, preferred or more preferred) implied no unequivocal correlation between a particular upper limit and a particular lower limit because there was no teaching that such an arrangement was intended. Therefore, one of the upper limits mentioned in the first sentence in the description of the parent application as originally filed (as cited above) and one of the lower limits mentioned in the second sentence were arbitrarily combined, which did not represent a direct and unambiguous disclosure.
- T 2029/23
In T 2029/23 the patent concerned a method for preparing gelatin-based candy that did not require a drying step or the use of a single-use starch mould to extract moisture from the liquid composition.
The board decided to set aside the decision under appeal, in which the opposition division had concluded that claim 1 of the main request did not meet the requirements of Art. 123(2) EPC.
Claim 1 of the main request differed from claim 1 of the application as filed in that claim 1 of the main request specified that (1) the gelatin had a bloom value of 200 to 300 and (2) the liquid candy composition was allowed to set at a temperature below 10°C for 10 to 30 minutes.
Regarding the bloom value of the gelatin, the board explained that the widest range for a bloom value disclosed in the claims of the application as filed was 200 to 300 (claim 8). Adding this feature to claim 1 of the main request merely specified the gelatin to be used in the invention. Hence, this amendment was directly and unambiguously derivable from the application as filed. This was also the case for the setting temperature, for which the board found that a setting temperature below 10°C was directly and unambiguously derivable from claim 3 of the application as filed.
As regards the range of 10 to 30 minutes for the setting time, the board distinguished the case in hand from the case underlying T 1919/11, in which the competent board had decided that the amendment combining a lower limit and an upper limit from two separate sentences (or "lists") of upper and lower limits was not allowable because the disclosure in the parent application as filed did not represent a range and such a combination was arbitrary. Instead, in the case in hand, there was a single sentence, namely claim 4 of the application as filed, that contained a general range (1 hour or less) and only two preferred narrower ranges (30 minutes or less and 10 minutes or less). The lower two values of this range were used to draw up the range in claim 1 of the main request. This amendment in itself did not produce added subject-matter.
Furthermore, the board observed that the application as filed explicitly stated that for a relatively fast setting time, the temperature during setting was to be kept low. The skilled person would have readily understood that there was a correlation between the setting temperature and the setting time.
Therefore, the board established that claim 1 of the main request met the requirements of Art. 123(2) EPC.