Résumé de EPC2000 Art 076(1) pour la décision T1050/22 du 09.07.2024

See also abstract under Article 56 EPC. In T 1050/22 the board explained that the selection of originally explicitly disclosed limit values defining several (sub)ranges to define an individual range did not necessarily generate subject-matter extending beyond the original disclosure. However, the further combination of such an individual range with another individual range emerging from a second list of ranges and relating to a different feature was not considered to be derivable from the original disclosure, unless there was a clear pointer to such a combination (see for instance T 1511/07, T 1731/18). In the case in hand, the basis for the definition of the indicated combination of ranges was even less evident due to the presentation in the claims and the description of the grandparent application (D5) of lists of upper and lower limits rather than defined ranges (compare with T 1408/21). According to the board, a relevant pointer was usually a specific indication or teaching in the original application directing the skilled person to a specific combination. Such a specific indication could originate from the original claims and/or from disclosed specific embodiments, in particular when the examples of the application as filed presented a uniform disclosure with regard to the concerned combination of features and all fell under the scope of the claims. However, the presence of discordant examples could well indicate that the examples did not provide any clear pointer to the combination of features. In the case in hand, starting from the disclosure in D5, feature (e) represented a first selection from the list of ranges which emerged from the endpoints shown in claim 3 and page 7, while feature (g) represented a further selection from a second list of ranges that was created on the basis of the endpoints shown in claim 1 and page 8 of D5. In the absence of any pointer to the particular combination of claim 1 of the main request, the combination of the range amounts for features (e) and (g) as claimed represented added subject-matter. The board did not identify any passage of the description nor any example as a possible pointer for the combination of such selections. Examples A, M and N, cited by the respondent, corresponded to the only examples where the compounds and their amounts matched with the claimed compounds and amounts. Most of the remaining examples, in particular examples B- K, showed however discordant compositions, so that the examples could not be seen as a clear pointer to the defined combination of features. The combination of features (e) and (g) with the further selected feature of viscosity of dependent claim 11 was also considered not to be derivable from D5, since there was also no further pointer for such combination. Examples M and N cited by the respondent did not even indicate the viscosity of the compositions disclosed therein. Consequently, the main request did not meet the requirements of Art. 76(1) EPC. Since the content of D5 was similar to the content of the application as filed, the same conclusion applied with regard to the requirements of Art. 123(2) EPC.