T 2247/11 - Selection from two lists

EPO T 2247/11

For the decision, click here.

Key points

• The issue involves a whether a claim directed to (essentially) feature B + one or more of A, C, and D (each being lists) has basis in a claim specifying one or more of A, B, C and D. Hence, does the application provide basis for singling out B?
• The Board looks what is actually aimed for with the method of the present invention, and notes that the examples only demonstrate B + (particular types of) A. Hence, claim 1 has no basis since it also covers B+C and B+D. The auxiliary request for B+A in contrast has basis. 
• The present case is a good example how the assessment of Art. 123(2) can be not overly formalistic but can be based on the actual technical teaching of the patent. 

Reasons for the Decision

1. The appeal is admissible.

2. The invention concerns a dual-energy X-ray absorptiometry method and device for obtaining, firstly, a three-dimensional representation of the bone mineral density (BMD) of the osseous body (page 1, lines 10 to 28; page 2, lines 5 to 12), and for determining, in addition, the value of a "composite index" using the digitised radiological data and a three-dimensional model of the examined bone (page 2, lines 19 to 31). This composite index allows the evaluation of fracture risks (page 2, lines 2 to 5 and 34 to 38).

3. First and first "bis" auxiliary requests - Article 123(2) EPC

3.1 Claim 1 (of both requests) includes a definition of the "composite index" recited in original claim 1 which, according to the appellant, corresponds to some of the alternatives included in or covered by original dependent claim 17. The definition of the "composite index" is the following (amendments to original claim 17 are highlighted by the Board):

"[deleted: the] said composite index is a combination of at least two parameters which comprise the bone mineral density and a parameter chosen from among:

. [a] a specific parameter of the bone geometry, chosen from among the angle, length, surface and volume of an osseous part,

[deleted: . [b] a physical parameter chosen from the bone mineral density and the mass of an osseous part,]

. [c] a mechanical parameter chosen from the section modulus and moments of inertia of an osseous part, and

. [d] a chemical parameter chosen from the water composition, fat composition and bone composition of an anatomical part comprising said osseous body,

[deleted: . or any combination of at least two of the preceding parameters]".

In original claim 17 the "composite index" was defined in general terms as a combination of two (or more) parameters chosen from four lists of different parameters. In current claim 1, instead, the "composite index" is defined as a more specific combination of a particular parameter - the bone mineral density (BMD) - selected from one of the lists (list [b]) with one (or more) of the parameters from the other three lists [a], [c] and [d].

The question therefore arises whether there is a basis for this selection in the application as filed.

3.2 The appellant was of the opinion that the prominence of BMD as a highly relevant parameter throughout the application justified its selection in combination with any of the parameters of the three lists [a], [c] and [d].

The Board disagrees.

As explained under point 2 above, the method of the present invention is aimed at obtaining a three-dimensional representation of the BMD of the osseous body, and, in addition, at determining the value of a "composite index" (page 1, lines 10 to 22 and page 2, lines 19 to 25; original claim 1). Hence, the original application presents the determination of both the BMD and the composite index as two essential evaluations performed by the method of the invention. Accordingly, from the disclosed relevance of BMD, the skilled person would not deduce that original claim 17 disclosed the selection of BMD (from list [b]) in combination with one (or more) of the parameters of the three lists [a], [c] and [d].

3.3 The appellant pointed also to passages in the original descripton which disclosed examples of a composite index including BMD.

The Board agrees that in the cited passages [...] examples of a composite index including BMD are presented. According to the first passage, the composite index is determined from BMD referred to a bone volume. In the second passage, the composite index is defined as a mathematical linear combination of BMD, femoral head diameter D, midneck cross section area S and neck-shaft angle X. The latter composite index was moreover shown in Figure 8 to have a better correlation with fracture load than BMD alone [...].

In both examples, BMD is combined with bone-geometry parameters. The Board therefore considers that these examples provide a clear pointer to the selection of BMD (from list [b]) in combination with one (or more) of the bone-geometry parameters of list [a] of original claim 17. The Board does not consider, however, that these (geometry-based) examples also provide a pointer for the combined selection of BMD with one or more parameters of the (entirely different) mechanical and chemical parameters of lists [c] and [d]. Thus, although conceptually encompassed by original claim 17, this selection does not emerge clearly and unambiguously from the content of the original application as a whole.

3.4 The Board consequently concludes that claim 1 of the first and first "bis" auxiliary requests contains subject-matter extending beyond the content of the application as filed, contrary to the requirements of Article 123(2) EPC.

4. First "ter" auxiliary request

4.1 Claim 1 of this request defines the composite index as a combination of BMD with one (or more) of the bone-geometry parameters of list [a]. For the reasons given above, in particular under point 3.3, claim 1 satisfies the requirements of Article 123(2) EPC.