T 1095/18 - Selection invention / multiple selections

 Key points

• The claim at issue is directed to a polyethylene composition having a density in a range, a component A in a range, a component B in a range, a component C in a range, and having a further property (MFI value) in a specified range. The question is whether the claim is novel over D1.
• The undisputed fact is that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1.
• “in the Board's view, the criteria for selection inventions referred to in the contested decision and by respondent 1 and briefly summarised in T 279/89 []), have been developed for a so-called "selection" of only one single parameter from a numerical range. It is apparent [] that beside the necessary selection of a specific value/range [for the MFI property], the skilled reader has to perform further selections in the four ranges defining the density as well as each of the amounts in components A, B and C”
• “In the Board's view, it is in particular not possible in the present case to treat each of the five features mentioned in claim 1 []t individually as was done by the opposition division and the [opponents] because these features are to some extent interconnected (e.g. the MFI190/5 feature is related to some extent to the amounts of components A to C). Also, a series of selections in several (here 5) ranges amounts to a more severe limitation in terms of the scope of the subject-matter so defined (as compared to each single selection). In that regard the situation of the present case is not that of a single selection made in a range of the prior art but rather that of multiple selections in multiple ranges already disclosed in combination in D1. The fact that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1 do not affect the above conclusion.”
• “he question that the Board had to answer was thus whether from the broader disclosure of generic compositions in [claim 1 of D1], the skilled person would have, in consideration of the whole of D1 and in particular of its examples, directly and unambiguously derived a composition that fell under the scope of claim 1 of the main request. It was not contested to that effect that any of examples 1 to 4 of D1 could be seen as being relevant to answer that question.”
• “It can thus not be concluded from the description of D1 and/or from its examples that polyethylene compositions having a density, amounts in components A, B and C as defined in operative claim 1 and an MFI190/5 in the range of 1.2-2.1 g/10 min were at all prominent in D1 to such an extent that such compositions could be seen as being directly and unambiguously disclosed in that document. In the Board's view, the respondents' objection amounts to create a novel combination of features by cherry-picking within the disclosure of D1 but which combination is not directly and unambiguously derivable from D1.” emphasis added.

T 1095/18 -  -

https://www.epo.org/law-practice/case-law-appeals/recent/t181095eu1.html

1.3 In the present case, the respondents first relied on the disclosure in claim 1 or on column 2, lines 13-46 of a generic composition according to D1 and argued that claim 1 of the main request did not satisfy the accepted criteria required to constitute a selection invention.

1.4 However, in the Board's view, the criteria for selection inventions referred to in the contested decision and by respondent 1 and briefly summarised in T 279/89 of 3 July 1991 (not published in the OJ EPO, point 4.1 of the reasons), have been developed for a so-called "selection" of only one single parameter from a numerical range. It is apparent from the disclosure relied upon by the respondents that beside the necessary selection of a specific value/range in MFI190/5 within the broader range disclosed therein, the skilled reader has to perform further selections in the four ranges defining the density as well as each of the amounts in components A, B and C in the passage of column 2, lines 13-46 of D1 in order to arrive at the ranges defining operative claim 1. In addition, the ultra high polyethylene must be selected to be a copolymer and not a homopolymer. In the Board's view, it is in particular not possible in the present case to treat each of the five features mentioned in claim 1 of the main request individually as was done by the opposition division and the respondents because these features are to some extent interconnected (e.g. the MFI190/5 feature is related to some extent to the amounts of components A to C). Also, a series of selections in several (here 5) ranges amounts to a more severe limitation in terms of the scope of the subject-matter so defined (as compared to each single selection). In that regard the situation of the present case is not that of a single selection made in a range of the prior art but rather that of multiple selections in multiple ranges already disclosed in combination in D1. The fact that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1 do not affect the above conclusion.

1.6 In view of the above, the respondents' arguments based on the concept of selection invention did not convince.

1.7 In the case of a composition allegedly resulting from a multiple selection in the prior art, as it is the case for claim 1 of the main request in view of D1, assessing whether a subject-matter is directly and unambiguously derivable from the prior art requires, beyond the identification of the individual selections made in the composition considered in claim 1 or column 2, lines 13-46 of D1, that a careful comparison be carried out in order to assess whether or not the subject-matter being claimed was made available to the skilled person in the prior art in particular because the parameters defining the composition of claim 1 of the main request are to some extent, interconnected to one another.

1.8 The question of novelty in the case of a multiple selection of parameters in ranges disclosed in a composition of the prior art can thus not be simply answered by considering the ranges of the various parameters separately from one another, it must also be determined whether the combination of these parameters was directly and unambiguously derivable and was made available to them in the relevant document. In that regard, the mere consideration that the ranges of a multiple selection in the parameters of the prior art were as such not excluded from that prior art, as argued by the respondents, is not sufficient to establish lack of novelty as that consideration falls short of showing that the combination of the selected ranges was directly and unambiguously derivable from the prior art.

1.9 The question that the Board had to answer was thus whether from the broader disclosure of generic compositions in column 2, lines 13-46 (or claim 1), the skilled person would have, in consideration of the whole of D1 and in particular of its examples, directly and unambiguously derived a composition that fell under the scope of claim 1 of the main request. It was not contested to that effect that any of examples 1 to 4 of D1 could be seen as being relevant to answer that question.

[...]

1.17 It can thus not be concluded from the description of D1 and/or from its examples that polyethylene compositions having a density, amounts in components A, B and C as defined in operative claim 1 and an MFI190/5 in the range of 1.2-2.1 g/10 min were at all prominent in D1 to such an extent that such compositions could be seen as being directly and unambiguously disclosed in that document. In the Board's view, the respondents' objection amounts to create a novel combination of features by cherry-picking within the disclosure of D1 but which combination is not directly and unambiguously derivable from D1.

1.18 The respondents further argued that the skilled person would have seriously contemplated preparing a composition as defined in said claim 1. However, for the same reasons as indicated in above section 1.17, in the absence of a direct and unambiguous disclosure in D1 of the combination of features defined in operative claim 1, it cannot be concluded that it was shown that D1 provides a teaching or a good reason for the skilled person to prepare specifically such a composition. In particular, all the arguments submitted by the respondents in that respect involving the examples of D1 amount to artificially modify the disclosure of D1 in order to (possibly) arrive at the subject-matter according to claim 1 of the main request, whereby D1 provides no indication in that sense (see in particular the above arguments regarding the modification of the process conditions used in example 3 of D1 in order to achieve the desire MFI190/5 feature). Also, no evidence was provided that in doing so, the other features of claim 1 of the main request would still be satisfied. For these reasons, the respondents' objection did not convince.

1.19 It follows that the subject-matter of claim 1 of the main request must be seen as being novel over D1.