1.5.2 Forming a range with isolated value taken from example

In T 201/83 (OJ 1984, 481), the board came to the conclusion that the amendment of the concentration range for a claimed mixture, such as an alloy, was admissible on the basis of a value described in a specific example, provided that the skilled person could have readily recognised that this value was not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree. In the case at issue, the new limit could be deduced from the original documents.

The board in T 876/06 applied the principle established in T 201/83 and came to the conclusion that the skilled person could have recognised in the application as originally filed that the weight ratio of liquid rubber to solid rubber was not so closely associated with the other features of the examples as to determine the effect of the invention as a whole in a unique manner and to a significant degree. Thus, it was permissible to use the particular value used in several examples to limit the range of the weight ratio of liquid rubber to solid rubber. The limitation of the claim represented merely a quantitative reduction of a range to a value already envisaged within the document and not an arbitrary restriction providing a technical contribution to the subject-matter of the claimed invention. The board also found incorrect the argument of the respondent (opponent) that the amendment in T 201/83 was only considered allowable because it represented the lowest value disclosed with regard to the then claimed invention. In the board's view this fact played no role at all. The requirements of Art. 123(2) EPC 1973 were fulfilled.

In T 612/09 the board considered that in the case underlying decision T 201/83 the fact that the value was disclosed in an example was insofar of relevance as the board had first to establish that the value disclosed in the context of an example could be considered separately from the other features disclosed in the example. However, the board in T 612/09 could not derive from decision T 201/83 the requirement that the value on which a sub-range was to be based had necessarily to be disclosed in an example. Rather it appeared that what was required was that for the skilled person the value had to be recognisable as a singularity, as in decision T 201/83, within or at the end of a range of possibilities which may mark an end-point for a particular sub-range.

In T 517/07 a newly introduced upper limit had been disclosed in the original application documents only as an isolated value in example 1. The board decided that singling out an individual value from a specific embodiment and applying it as a new upper limit in claim 1 created a new – now capped – value range that was not disclosed in the original documents.

In T 1188/10 the broadest general range relating to the concentration of LAE in food products, disclosed in the application as filed, was from 0,0001% to 1%. The new range of 0,006% to 0,015% was formed by taking, as end points, single values from examples 2 and 4 relating to the use of LAE as preservative in two different specific food products at different growth temperatures. In order to assess whether this new range complied with Art. 123(2) EPC it had to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples. In the case at issue, this was the case so that the range claimed complied with Art. 123(2) EPC.

The board decided in case T 184/05 that an impurity concentration value of a product obtained under specific process conditions could not be taken in strict isolation from the examples unless it had been demonstrated that this value was not so closely associated via the applied process with specific (undisclosed) maximum values of all other impurities comprised in the product.

In T 570/05 the proposed amendment was that the coating layer had a "thickness of from 220 to 500 nm", for which the only literal basis in the application as originally filed for the lower value of 220 nm of the claimed range was to be found in three examples; nowhere in the documents as filed did this value form the lower (or indeed any) endpoint of a range of thicknesses. Recalling the relevant case law namely, T 201/83, T 1067/97 and T 714/00 (see also in this chapter II.E.1.9. "Intermediate generalisations"), dealing with extracting an isolated feature, the board examined whether or not there existed a functional or structural relationship between the coating layer thickness, in particular its lower limit, and the remaining features of the claim. The board concluded that the condition of absence of any clearly recognisable functional or structural relationship was not satisfied in the present case and that the amendment could thus not be allowed.

The board in T 931/00 stated that although figures in examples might, under specific conditions, be used to limit a range which was already present in the original application, they could not be used to define an entirely new relationship between parameters which had never been linked before. Such arbitrary new links between existing parameters introduced new matter, contrary to the requirements of Art. 123(2) and Art. 100(c) EPC 1973.

The board in T 1146/01 had to answer the question of whether one measurement of a selected characteristic or property of a sample disclosed only in an individual example could be relevant to the generality of the claimed subject-matter, separately from and irrespectively of the other parameters inherent to the same sample. The situation in this case was different from the case in T 201/83. In T 201/83 an amendment was allowed on the basis of a particular value described in a specific example, provided the skilled person could readily have recognised that value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree. In T 1146/01, however, the board stated that formulating a new range on the basis of individual values taken from selected examples, which were not at all directly related to each other, meant that the reader was confronted with new information not directly derivable from the text of the application as originally filed.

In T 1004/01 the question that arose before the board was whether or not there was a basis in the application as originally filed for a peel strength "of at least 24 grams" to define the claimed laminate. According to the application as filed, the peel strength of the laminate was defined by an open-ended range as an essential feature of the invention. In the general description and the claims there was no further mention of any preferred peel strength range. According to the board, the exemplified laminates and the peel strength thereof were disclosed only in a concrete technical context, without providing any preference for a peel strength of at least 24 grams. Nor was any such preference given in the description, which could justify the lower limit. Since, however, a peel strength of 24 grams was disclosed, the question arose as to the conditions under which such an exemplified feature could form the basis for a new range as claimed. The peel strength of 24 grams could not be detached from the exemplified laminates to form a basis for a generalised lower limit of the claimed peel strength range without taking into consideration the other particulars closely associated therewith.

In T 526/92 the patent related to an additive concentrate having a high TBN of at least 235 for incorporation in a lubricating oil composition. The application as filed contained no explicit reference to TBN apart from the examples where 235 was the lowest value mentioned. The feature "having a high TBN of at least 235" was introduced during the examination proceedings to distinguish the claimed subject-matter from compositions with low TBN values up to 100 disclosed in a citation. TBN values had not been originally disclosed as a (broad) range but only as single, punctate values; thus a new range was defined which had not been disclosed originally. Furthermore, the generic part of the original specification did not contain any information indicating that TBN played any role in the framework of the application in suit. This meant that there was also no information whatsoever concerning a TBN range, whether open-ended or not. Nor was there any information at all in the description regarding the contribution of a TBN to the solution of a technical problem. Moreover, it could not be concluded that the individual TBN values disclosed in the examples were representative of a TBN range starting at 235 and without any upper limit. The board held that if values of a parameter are only given in the examples, without the significance of this parameter becoming evident from the original specification, no range must be arbitrarily formed, which is open ended at one side and has one limit selected from the examples. This decision was approved and cited by T 931/00 – also referring to T 201/83 (OJ 1984, 481) – which concerned the creation of a new parameter range by defining its upper limit by selecting a single value from an example.

In T 343/90 the additional feature of "a viscosity of 430 to 1300 dPa.s at 165°C" was added to the claim. The board observed that the specific viscosity range could not be found expressis verbis either in the specification as filed or in the disputed patent as granted. However, the lower and the upper limit of the viscosity range were specifically mentioned in the examples of the application as filed. The viscosity values taken from the examples as the end-points of the viscosity range could not be seen only in the context of all the other parameters given there. Therefore, the amendment complied with Art. 123(2) EPC.

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