1.6.2 Selection from two lists – singling out a combination of features

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. See also T 714/08 and T 1267/11.

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 (distinguished in T 119/15 which did not relate to lists within the meaning of T 1511/07).

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.

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.

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 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. However, given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter was not a mandatory consequence of its presentation as elements of lists. Thus, the "disclosure status" of subject-matter individualised from lists had 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 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 714/08 claim 1 of the main request had been amended so as to limit the first oxidation base to paraphenylenediamine and the list of couplers to 12 compounds, but the specific combination of paraphenylenediamine with each of those couplers could not be derived directly and unambiguously from the application as filed. The case differed from those concerning restrictions applied to lists of substituents in Markush-type chemical formulas (see T 615/95 or T 50/97); the restrictions there had not resulted in singling out particular combinations but had retained the generic nature of the chemical formula defining the claimed products.

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 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 45/12 the board considered that the specific combination of pioglitazone with glimepiride was singularised in the root application as filed. All through the description of the root application as filed pioglitazone was disclosed as the most preferred sensitivity enhancer to be used in combination with another antidiabetic agent. Glimepiride was one specific antidiabetic agent disclosed for use as second component in the composition. Thus, even assuming that the composition containing pioglitazone with glimepiride would require a selection (among the specific antidiabetic agents disclosed to be combined with pioglitazone), this one-dimensional selection did not introduce added subject-matter.

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. Similarly, in T 1150/15 the board rejected the proprietor's approach to combine the preferred options for each of the substituents Y, X and Z disclosed on page 75, to disregard the preferred option for RB disclosed in the same context and to combine it with a definition which has been singled out of the most general list of options for substituent A as arbitrary. The board distinguished its case from the facts underlying T 615/95 (see chapter II.E.1.6.3 below).

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.

According to the board in T 2134/10, there was no combination of independent features from two lists. The board found that a specific degree of sequence identity (in claim 1(d): "at least 95%") is not a property that, in combination with a particular molecule selected from Table 1 (disclosing 113 open reading frames encoding potentially antigenic peptides of S. pneumoniae), could single out a particular molecule or confer properties to the claimed subject matter not directly and unambiguously derivable from the application as filed.

In T 1581/12 claim 1 was directed to a combination of sequences SEQ ID NO 4, 6 with fragment length of "20 or more consecutive amino acids", and a selection of those fragments containing an epitope of these sequences. In the parent application, sequences SEQ ID NO 4, 6 were disclosed as members of a list of several hundred sequences. Likewise, the fragment length indicated in claim 1 was disclosed in the parent application within a long list of lengths to be selected "depending on the particular sequence". The board observed that the case law referred to by the appellant (opponent) (T 583/09, T 2134/10) was exclusively concerned with a combination of specific members from two, fully independent lists, where the combination of one member of one list with another member of the other list, in the absence of a clear pointer to such a combination, was considered to create new subject-matter. However, the present situation was different. The values of the fragment length disclosed in the parent application would be understood by a skilled person to apply to each and every member of the list of disclosed amino acid sequences (SEQ ID NOs), wherein the upper length of these fragments varied "depending on the particular sequence"; the list of fragment lengths was actually not independent from the list of amino acid sequences. The combination of the value "20 or more consecutive amino acids" with the amino acid sequences SEQ ID NOs 4, 6, therefore only limited the original disclosure in the parent application. This limitation did not create new subject-matter.

In T 1259/16 the claimed combination of the features characterising the claimed solution – "free of free bromine" and "less than 100 ppm of metal ion impurities" – was not explicitly disclosed in the application as filed. The board considered that the lists relating to free bromine levels and metal ion impurities were fully independent. The various levels of free bromine and metal ion impurities represented equally suitable alternatives. The skilled person reading the application would not recognise that the lower values were necessarily more preferred, as reducing impurities to as low a level as possible was both impractical and uneconomical. The claimed combination was therefore contrary to Art. 123(2) EPC.

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