Résumé de EPC2000 Art 123(2) pour la décision T1133/21 du 26.05.2023

In T 1133/21 the respondent (patent proprietor) submitted that although multiple selections had to be made to arrive at the claimed subject-matter, the teaching of the application as filed taught toward the claimed combination of features. In essence, the respondent argued that since i) the ranges in amended claim 1 were selected from lists of converging alternatives and ii) there was a pointer to the claimed combination of features, claim 1 met the criteria set out in decision T 1621/16 for the requirements of Art. 123(2) EPC to be fulfilled. The board was not convinced by the arguments of the respondent. The board explained that the gold standard for assessing compliance with Art. 123(2) EPC was that amendments to the claims, description and drawings of a European patent application or patent could only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed (G 2/10). It was established case law that the content of an application must not be used as a reservoir from which features pertaining to separate embodiments could be combined to artificially create an embodiment. In the absence of any pointer to the combination, the 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. Decision T 1621/16 did not provide for an exception to this rule. It required, in fact, that a claim amended on the basis of multiple selections from lists of converging alternatives may only be considered to meet the requirements of Art. 123(2) EPC if the application as filed included a pointer to the combination of features resulting from the multiple selections. This meant that the mere fact that features were described in terms of lists of more or less converging alternatives did not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment would only be allowable under Art. 123(2) EPC if it complied with the gold standard. The assessment of whether this standard was complied with was very case specific. It required taking into account the teaching of the application as filed as a whole, avoiding artificial semantic constructions. Factors which might play a role in the assessment were, inter-alia, the number of alternatives disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features. For instance, if the values in a number of examples were clustered within specific ranges, this might provide a pointer to those ranges. In the current case, the application for the opposed patent was drafted to provide a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments. The respondent also argued that the current case was similar to that underlying T 350/18. In that decision, the board found that claim 1 was in line with the examples and that, in the absence of a contradiction or specific interrelation of individual features which would require additional adaptation or modification, the claimed combinations of numerical ranges defined by the broadest range which converged down towards the most preferred range met the requirements of Art. 123(2) EPC. According to the respondent, this same approach had to be applied to the current case. The board did not find this argument persuasive either. The board held that the assessment of whether Art. 123(2) EPC was complied with was very case specific. In view of the very broad teaching of the application as filed and the vast number of alternative options disclosed in the application, the current case could not be compared to T 350/18. The board concluded that claim 1 of the main request contained subject-matter extending beyond the content of the application as filed (Art. 123(2) EPC).