1.5.3 Setting new end-point with not expressly disclosed value

T 985/06 concerned amending the upper limit of a range, supported in the description as filed, to a new (lower) value not thus supported, by changing it from "1.05:1 to 1.4:1" to "1.05:1 to less than 1.4:1". The board acknowledged that "1.05:1 to 1.4:1" included all values within the stated range. However, the application as filed disclosed only the range in general; it did not specifically, and thus directly and unambiguously, disclose all values within it. The amendment therefore contravened Art. 123(2) EPC.

In T 83/13 claim 1 as granted included the feature "an amount of less than 15% by weight", whereas the claim as filed and the original description had mentioned amounts of between 5% and 20% and between 8 and 15%. In the board's view, the wording "an amount of less than 15% by weight" included concentration values differing by one or more decimal places from which, depending on the precision of the measurement method or simply by applying rounding rules, the whole value of "15% by weight" could be arrived at. Replacing the concentration value of "15.0% by weight" with "an amount of less than 15% by weight" did not change the technical teaching or constitute a new technical function in relation to the claimed concentration range; from a technical perspective, the scope of protection remained the same even after the amendment (see T 112/10). The board added that its decision was consistent with the boards' case law on novelty and rounding values (see T 234/09 or T 1186/05).

In T 1986/14 claim 6 of the main request was amended by including the features "glycerin in an amount ranging from 50% to 90% by weight of the composition". The appellant argued that the amount of glycerin in claim 6 found a basis in the application as originally filed, which read "glycerin moisturizer can be present individually in an amount ranging from about 50.00% to about 90.00% by weight". The board held that it was undisputed that 50% and 50.00% differed in their accuracy. For this reason, the values 50.00% and 90.00%, on their own, could not provide a basis for the features 50% or 90%. The applicant argued, however, that the use of the term "about" in the passage mentioned above indicated that it was not intended to restrict the claimed amount to ranges defined by end-points with four significant figures. For the board, the feature "about 50.00% to about 90.00%" disclosed a range with two end-points, namely 50.00% and 90.00%, and an area of undefined boundaries around them. No other end-point, such as 50% or 50.0%, was either implicitly or explicitly disclosed. For this reason, the passage cited could not provide a basis for the afore-mentioned feature.

In T 2203/14, the upper limit of the range relating to the thickness of the corrosion resistant layer in claim 1 as filed "approximately 5 microns" was amended to "approximately 5.0 micrometers" in view of prior art disclosing a value of 5.2. The board recalled that according to case law, when comparing a value from the state of the art with a claimed value, the state of the art value had to be given the same accuracy as the one claimed (citing T 871/08 of 8 December 2011 and T 175/97). Therefore, "approximately 5.0" and "approximately 5" could – in the case at issue – not have the same meaning. The application as filed consistently mentioned only the value of 5 micrometers for the corrosion resistant layer. The fact that the upper limit of another layer in the application as filed was given as 5.0 and 5 had no bearing on the value at issue since the two layers were not linked to such a degree that a certain accuracy for one layer would inevitably imply the same accuracy for the other layer. The board concluded that the amended value "approximately 5.0" was not directly and unambiguously derivable from the application as filed.

Quick Navigation