1.4.2
Selection from two lists and deletion of elements from two lists 

In T 727/00 the board held that the combination - unsupported in the application as filed - of one item from each of two lists of features meant that although the application might conceptually comprise the claimed subject-matter, it did not disclose it in that particular individual form. For that reason alone, claim 1 of the main request was not supported by the description and contravened Art. 123(2) EPC.

The board in T 1511/07 held that although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub range, was not contestable under Art. 123(2) EPC when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature was not considered to be disclosed in the application as filed, unless there was a clear pointer to such a combination.

The board in T 1374/07, referring to T 811/96, said that a selection of two components (here: fat and enzymes) from one list is in fact equivalent to a twofold selection from two identical lists (see also T 2375/09 T 1506/13). Thus, applying the novelty test, the board concluded that the addition of the feature "fat and enzymes" to claim 1 infringed Art. 123(2) EPC.

According to the boards' consistent case law, the guiding principle is that deleting meanings of residues in a generic chemical formula must not lead to the selection, in the respective lists, of a particular combination of single, specific but originally undisclosed meanings of residues (see T 615/95 and T 859/94).

In T 942/98 precisely this had occurred through the deletion of all other meanings, residues X1, X2 and R5 had been narrowed down to a single meaning, leading to a combination of specific meanings of residues not disclosed in the application as filed. Consequently, claim 1 as filed did not in itself provide adequate support for claim 1 as amended (cited by T 2013/08 in connection with the established case law concerning "singling out").

In T 615/95 there were three independent lists of sizeable length specifying distinct meanings for three residues in a generic chemical formula in a claim. One originally disclosed meaning was deleted from each of the three independent lists. The board stated that the present deletions did not result in singling out a particular combination of specific meanings, i.e. any hitherto not specifically mentioned individual compound or group of compounds, but maintained the remaining subject‑matter as a generic group of compounds differing from the original group only by its smaller size. Such a shrinking of the generic group of chemical compounds was not objectionable under Art. 123(2) EPC 1973, since these deletions did not lead to a particular combination of specific meanings of the respective residues which was not disclosed originally or, in other words, did not generate another invention (see also T 948/02, which refers in detail to this case law and which did not allow the amendment of a generic chemical formula; see also T 659/97, T 894/05, T 888/08).

In T 1506/13 the board, referring to T 948/02, summarised that a deletion of genes from a list of specific genes was allowable if it fulfils two conditions: First, the deletion must not result in singling out any hitherto not specifically mentioned individual compound or group of compounds, but maintains the remaining subject-matter as a generic group of compounds differing from the original group only by its smaller size. Second, the deletion does not lead to a particular combination of a specific meaning which was not disclosed originally, i.e. it does not generate another invention, or in other words it merely restricts the required protection but does not provide any technical contribution to the originally disclosed subject-matter.

In the board's view in T 686/99 the application as filed disclosed in an undifferentiated way different categories of base oils without any pointer regarding the selection of one particular category thereof. Priority was not given to ester oils from the original host of equivalent base oils. Therefore the board came to the conclusion that combining in claim 1 a base oil mandatorily comprising ester oils with the hydrofluorocarbons listed in claim 1 resulted from a multiple selection within two lists of alternative features, namely of ester oils from the list of base oils and of hydrofluorocarbons from the list of refrigerants, thereby generating a fresh particular combination. In the absence of any pointer to that particular combination, this 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. (See also T 1206/01; and T 1041/07 on assessing whether a particular combination of features was disclosed in a document.)

In case T 209/10 the appellant (patent proprietor) alleged that claim 1 did not concern an unallowable selection but merely the deletion of some option(s) from one list. The board considered that the application as originally filed disclosed the technical effect of prevention of bone loss, which was not identical to the prevention of post-menopausal osteoporosis in a post-menopausal woman as described in claim 1 as granted. Post-menopausal women were selected from a list of several possible options for the patients to be treated. A further selection also took place in claim 1, namely that concerning the form of the medicament as a tablet or capsule. The oral route did not equate with the selection of tablets and capsules since other forms such as solutions and suspensions might also be possible. Moreover, the patient was identified as an aging human and there was no preference for post-menopausal women to be linked to a particular dosage form. The board concluded that claim 1 included technical information which was not directly and unambiguously derivable from the application as originally filed and singled out subject-matter which was not disclosed in an individualised manner in the application as originally filed.

In T 98/09, which concerned the "singling out" of combinations of active ingredients not originally disclosed from lists, the board held that, contrary to the appellant's view, a deletion from a list could also constitute an inadmissible extension if the singling out of one individual ingredient led to a selection of combinations which, even if conceivably covered by the application as filed, had not been specifically disclosed. It was the boards' settled case law that such a selection is to be regarded as an inadmissible extension and so as an infringement of Art. 123(2) EPC (see e.g. T 727/00 and T 686/99). The case at issue concerned two lists (six elements and 47 elements). The applicant sought to individualise one of the lists to one element. The board held that this selection was contrary to Art. 123(2) EPC. For a similar case, in which the board found that the deletion of elements of two lists led to an unallowable selection, see T 1808/08.

In T 197/08 the board observed that the feature "FIE as the sole active ingredient" was not as such mentioned in the original application. The respondent (opponent) had argued that the introduction of "as the sole active ingredient" in combination with FIE, which was selected from a group of compounds in which it was not its most preferred active ingredient, constituted an unallowable selection from two lists. The board considered that FIE was selected from a list of six particularly preferred active ingredients and combined monotherapy (as the sole active ingredient), which constituted de facto the only administration form envisaged in the original application. Under these circumstances, the feature was not the result of two selections from different lists, as basically only one selection, i.e. the selection of FIE, had to be made in order to arrive at the feature. As a consequence, the requirements of Art. 123(2) EPC were met.

In T 1241/03 the board came to the conclusion that claims to formulations comprising compounds in specific concentrations did not need to have a literal basis in a single passage of the application as originally filed, as long as the exact concentrations and ranges claimed for the specific substances were disclosed as such in the original application. The claims did not refer to a "patchwork" of parameters disclosed in non-connected parts of the description, nor had specific values been isolated from examples in a non-allowable way. The reference in a claim to a combination of compounds in specific concentrations, explicitly disclosed in different passages of the application, was not considered by the board to be an amendment of the patent which extended beyond the content of the application as originally filed.

In T 783/09 the opposition division stated that the subject-matter of the claim 1 at issue was a selection from two lists and therefore contravened Art. 123(2) EPC. The board considered that the skilled person would directly and unambiguously recognise forty-four individual combinations, among them the three "basic" combinations referred to in claim 1. The board referred to the statement in decision T 12/81 (OJ 1982, 296) that if "two classes of starting substances are required to prepare end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new". The board noted that many boards had denied a direct and unambiguous disclosure for individualised subject-matter that was only derivable from a document by combining elements from lists. The board stated however that, given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the "disclosure status" of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole.

In T 1710/09 the board insisted, however, that, in line with established jurisprudence, "can" within the meaning of T 12/81 was to be a taken as a "is to". In view of the implications of freely interpreting this word "can" as in T 783/09, there was deep concern that in this way the uniformity of the disclosure assessment process could not be warranted.

In T 10/97 not all the compounds listed in the original claim were included in amended claim 1. However, since the claimed group of compounds was obtained not by restricting an originally disclosed generic definition of a substituent in a generic formula to a specific one selected from worked examples, but by deleting some members from a list of individualised equally useful compounds in order to improve the chances of patentability over the available prior art, the board found that such deletions must be considered admissible in accordance with the case law of the boards of appeal (see T 393/91). For the remaining compounds, no particular technical effect was either disclosed or alleged.

In T 783/09 the board referred to T 10/97. All forty-four combinations resulting from the combination of the elements of the two lists (one list with two elements, the other list with 22 elements) were directly and unambiguously disclosed. However, a further issue was whether or not the claiming of only three of the forty-four combinations disclosed extended the content of the application as filed in an unallowable way. The forty-four combinations were referred to as "very preferred embodiments"; by this statement the skilled person was taught that each of the forty-four combinations had the same quality, i.e. they were all very preferred combinations in the context of the invention. Nothing else was derivable from the remainder of the application, i.e. a particular quality, for example a particular technical effect, was attributed neither to the three combinations of claim 1 nor to the remaining forty-one. Hence, the group of combinations in claim 1 could not be considered as the result of a selection of three qualitatively equal elements from a list of forty-four qualitatively non-equal elements - for which selection there would be no hint in the application as filed and the claiming of which group therefore would have to be considered as adding matter. Rather the group of claim 1 was to be considered as the result of the deletion of forty-one elements from a list of forty-four qualitatively equal elements (see T 10/97). In summary, the subject-matter of claim 1 complied with the requirements of Art. 123(2) EPC.

In T 2273/09 the appellants argued that the same reasoning and conclusion of T 783/09 applied to the case at issue, which related to the deletion of ten of sixteen directly and unambiguously disclosed individual combinations, with six combinations then remaining. The board referred to G 2/10 where it was held that whether the skilled person was presented with new information depended on how he or she would understand the amended claim. Applying the technical assessment of the case under consideration with regard to the remaining subject-matter claimed, the board held that the subject-matter of the main request under consideration did not meet the requirements of Art. 123(2) EPC.

In T 236/08 the feature "suitable for administration by inhalation" in claim 1 was not present in the claims as originally filed. A basis for this feature could however be found as part of a list in the description, where it was one way among different possible ways of administration. A consequence was however that the combination of the subject-matter of claim 1 with the subject-matter of any dependent claim which also resulted from a selection among different possibilities would constitute an unallowable selection from multiple lists. For example, the subject-matter of dependent claim 10 related to a singling out from a list of possibilities concerning specifically the use of insulin. Therefore, its combination with the subject-matter of claim 1, which resulted similarly from a selection of possible ways of administration, constituted a selection from multiple lists and had no basis in the application as originally filed.

In T 407/10 the board at first concurred with the appellant that, whereas the combination of e.g. two features only originally disclosed in lists of equivalent alternatives was normally found to violate Art. 123(2) EPC, there might be other combinations of features which although not explicitly disclosed in the application as filed were nevertheless derivable from the presence of an (explicit or implicit) pointer thereto. For instance, the fact that certain features were disclosed as preferred in the original application acted as a pointer for the skilled person, as the combination of preferred features was obviously the best way of achieving the technical effects that the invention aimed to provide (see e.g. T 68/99). However, this jurisprudence did not consider the combination of a feature not originally disclosed as preferred with a plurality of further restrictions based on preferred features as an amendment in accordance with Art. 123(2) EPC.

In T 1799/12 the board considered that the jurisprudence and T 407/10 correctly referred to further circumstances that need to be taken into account, such as pointers to that selection or combination in the description and in the examples, for instance the fact that the features in question have been mentioned in the description as "preferred". Further, the circumstance that the list consists of equivalent alternatives could also play a role (see in particular T 686/99). In the case at issue, no pointer was available towards the choice of a square or rectangular base wall shape, but there was a clear pointer in the opposite direction, namely towards base wall shapes without any corners ("generally circular" or "oval"). By the same token, the five possible shapes mentioned in the parent application were not equivalent alternatives. The possible conditions in favour of allowing the currently claimed selection were therefore not fulfilled.

In T 2273/10 the appellant (patent proprietor) argued that claim 1 was a combination of the invention's most preferred features, and did not involve a selection from various lists. The board disagreed. The application as filed disclosed several possibilities for each of the three features. To arrive at the claimed wording, the skilled person had to make a selection from various lists. In addition these selections related to preferred and non-preferred features.

In T 1032/12 the board rejected the appellant's argument that the claimed polypeptide was defined by two features selected from two independent lists. For the appellant (opponent) the term "preferred polypeptides" encompassed a list of possible polypeptides. The board considered that, in the case at issue, the protein of SEQ ID NO:2 was singled out as the particularly preferred polypeptide, and when reference to fragments as the preferred sequences was made, they were always labelled as "particularly preferred fragments". Therefore, the reference in the description to “the preferred polypeptide" was a reference to the polypeptide of SEQ ID NO:2. It was this specific mention of the full-length molecule as the particularly preferred molecule that distinguished the case at issue from the case underlying decision T 583/09, referred to by the appellant, where different molecules had been presented as equivalent alternatives. Art. 123(2) EPC was not infringed.

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