4 Jan 2017

T 0378/12 - Purposive selection

Key points
  • The present Board is also of the view that purposive selection is relevant for assessing inventive step but not novelty [of selection inventions]. Consequently, since the claimed sub-range meets the criteria (a) and (b), the Board judges that the subject-matter of claim 1 is new
EPO T 0378/12- link

Reasons for the Decision
4. Novelty
[] 4.4 The remaining feature [not disclosed in D1] is essentially that a mixture of light exiting the lighting device emitted by the first group of solid state light emitters and the first luminescent material would, in an absence of any additional light, produce a sub-mixture of light having x, y colour coordinates corresponding to a point on a 1931 CIE Chromaticity Diagram lying within an area defined as being enclosed by the straight lines joining the points (0.32, 0.40); (0.36, 0.48); (0.43, 0.45); (0.42, 0.42) and (0.36, 0.38).
4.5 According to document D1 (paragraph [0055] and Fig. 7), the "combination of the blue LED chip 11 and yellow (YAG) phosphor 13 theoretically realizes any chromaticity within the range 45...", the preferred range being the range 43. By mapping the above points onto the CIE Chromaticity Diagram, it is apparent that the area defined by claim 1 of the present application falls entirely within the general area 45 disclosed in document D1 (but ldoes not overlap the preferred area 43). The claimed region of chromaticity is therefore a two-dimensional sub-range lying entirely within a disclosed two-dimensional range.

4.6 The same conclusion was reached in the contested decision, and in order to determine whether the claimed sub-range was disclosed in document D1, the Examining Division applied the three criteria, (a)-(c), set out in C-IV, 9.8(ii) of the April 2010 Edition of the Guidelines for Examination (corresponding to G-VI, 8(ii) of the November 2016 Edition).
Criteria (a) and (b) require that the selected sub-range is narrow compared to the known range, and is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points (or in the present two dimensional case, boundary lines) of the known range. The Examining Division decided that these criteria were fulfilled, and the Board sees no reason to question this finding.
However, the claimed sub-range was found not to meet the criterion (c), that "the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art but another invention (purposive selection, new technical teaching)". As a result, the Examining Division decided that the claimed sub-range was disclosed in document D1, and hence that the subject-matter of claim 1 was "not new in the sense of Article 54(1) and (2) EPC."
4.7 The principles set out in the section of the Guidelines cited by the Examining Division were developed in particular in T 198/84 (see e.g. Headnote) and summarised in T 279/89 (Reasons, point 4.1) and elsewhere.
4.8 In several more recent decisions, however, the boards have taken the view that criterion (c) (purposive selection) is relevant for the question of inventive step rather than novelty (cf. Case Law of the Boards of Appeal, 8th edition 2016, I.C.6.3.1, final three paragraphs). For example, in the Headnote of T 230/07 the position was set out as follows:
"Novelty and inventive step are two distinct requirements for the patentability of an invention and therefore different criteria should apply for their assessment. So, when assessing novelty of an invention, the presence or absence of a technical effect within a sub-range of numerical values is not to be taken into account in the assessment of novelty.
"For establishing novelty of a sub-range of numerical values from a broader range, the selected sub-range should be narrow and sufficiently far removed from the known broader range illustrated by means of examples. A sub-range is not rendered novel by virtue of a newly discovered effect occurring within it."
Similar views are expressed in, for example, T 1130/09 (Reasons, point 3.2, fourth paragraph) and T 1233/05 (Reasons, point 4.4).
4.9 The present Board is also of the view that purposive selection is relevant for assessing inventive step but not novelty. Consequently, since the claimed sub-range meets the criteria (a) and (b), the Board judges that the subject-matter of claim 1 is new within the meaning of Article 52(1) EPC and Article 54 EPC 1973.

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