T 1261/21 - Selections from lists

Key points

• Claim 1 of auxiliary request 26 is based on claim 1 of the application as filed; with three features selected from three lists.
• "in claim 1, the deodorisation time and the deodorisation temperature are limited based on a disclosure of converging numerical ranges or converging elements of the same feature (also named "converging alternatives" in some board decisions) in claims 3 and 4 of the application as filed, and the triglyceride composition is limited based on a list of non-converging alternatives in claim 10 of the application as filed."
• "The "gold standard" is to be applied universally to assess whether amendments to a claim comply with Article 123(2) EPC (G 2/10). In this case, the criteria specified in T 1621/16 are helpful."
• "T 1621/16 contains the following ruling (see Catchword):
  "1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.
  2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:
  - the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and
  - the application as filed includes a pointer to the combination of features resulting from the multiple selections."
• "The board concurs with the view expressed in T 1937/17 that the first criterion of point 2) of the Catchword of T 1621/16 ("the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution") should not be considered a criterion in establishing whether there is a direct and unambiguous disclosure for the combination of features resulting from a multiple selection"
• "Otherwise, the board shares the conclusion reached in T 1621/16 that the choice of a more or less preferred element from a list of converging elements (or alternatives) should not be treated as an arbitrary selection because this choice does not lead to a "singling out" (see point 1 of the Catchword of T 1621/16); and that in general a pointer to the combination of features resulting from multiple selections is necessary to meet the requirements of Article 123(2) EPC"
• "the assessment of situations like the one underlying T 1621/16 should not be treated in the same way as amendments resulting from selections from two or more lists of non-converging alternatives ""
• "the board prefers the term "converging elements" over "converging alternatives". To the board, "alternatives" seems to imply that there are real alternatives having no overlap with each other. However, where the broadest feature, such as a numerical range, simply converges towards the narrowest feature, fully lying within the broadest feature and not merely partly overlapping it or lying beside it, as in the case at hand, it seems misleading to use the term "alternatives". Thus, in the case at hand, the board prefers the term "converging elements"."
• "the mere fact that features are described in terms of lists of more or less converging elements (converging alternatives) does not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed and that any amendment is only allowable under Article 123(2) EPC if it complies with the gold standard. This is particularly relevant where an application as filed provides a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments as in the case underlying T 1133/21"
• "the assessment of compliance with Article 123(2) EPC in situations like the present one should be case specific, as also stated by the opposition division (see page 26, third paragraph of the decision under appeal). Factors playing a role in this assessment are, inter alia, the number of elements (alternatives) disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features (see point 2.16 of T 1133/21)." 
• "A pointer is an (implicit or explicit) indication or hint towards the combination of features in question. The pointer needs to be suited to demonstrate that the claimed combination of features is envisaged in the application as filed. Such information must be provided in the application as filed. Typically, it consists of an example or embodiment disclosed in the application which demonstrates that the combination of features was already envisaged in the application as filed, e.g. by the fact that the new combination of features falls within an example. The existence of a pointer must exclude that arbitrary new combinations of features are created which are merely conceptually comprised in the application as filed."
  
• Example 1 is a sufficient pointer in the case at hand.
• "The board does not take issue with the fact that these experiments of example 1 not only fall within the scope of claim 1 but also within an even further restricted scope of more preferred options."

EPO 

The link to the decision and (an extract of) the decision text are provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211261eu1

4. Article 123(2) EPC

4.1 The opponents argued that claim 1 of auxiliary request 26 contravenes Article 123(2) EPC. In essence, they were of the opinion that there was no pointer in the application as filed towards the amendment made. To arrive at the claimed subject-matter, a three-fold selection was necessary, i.e.:

- the selection of cocoa butter from the list in claim 10 of the application as filed

- the selection of the range "between 80 and 480 min" from the ranges of claim 3 of the application as filed

- the selection of the temperature "at least 235°C" in claim 4 of the application as filed

The features "between 80 and 480 min" (see claim 3 of the application as filed) and "at least 235°C" (see claim 4 of the application as filed) were not the most preferred or narrowest ranges for the deodorisation time and deodorisation temperature. In their view, cocoa butter was not a preferred triglyceride composition, and selecting it was an arbitrary selection from a list of non-converging alternatives.

4.2 For the following reasons, the board comes to a different conclusion.

4.2.1 Claim 1 of auxiliary request 26 is based on claim 1 of the application as filed. Compared to claim 1 of the application as filed, the following amendments were made:

- limiting the triglyceride composition based on the disclosure in claim 10 of the application as filed, being "selected from the group consisting of cocoa butter, shea oil (Butyrospermum parkii), palm oil (Elaeis guineensis, Elaeis olifera), illipe oil (Shorea spp.), mango oil (Mangifera indica), sal oil (Shorea robusta), kokum oil (Garcinia indica), fractions thereof or any combination thereof", to cocoa butter

- limiting the deodorisation time based on the disclosure in claim 3 of the application as filed, being defined as "between 60 minutes to 600 minutes, such as between 80 minutes to 480 minutes, or between 100 minutes and 360 minutes", to the second range "between 80 minutes to 480 minutes"

- limiting the deodorisation temperature based on the disclosure in claim 4 of the application as filed, being defined as "at least 225°C, such as at least 230°C or at least 235°C", to the third range of "at least 235°C"

4.2.2 Consequently, in claim 1, the deodorisation time and the deodorisation temperature are limited based on a disclosure of converging numerical ranges or converging elements of the same feature (also named "converging alternatives" in some board decisions) in claims 3 and 4 of the application as filed, and the triglyceride composition is limited based on a list of non-converging alternatives in claim 10 of the application as filed.

4.2.3 The "gold standard" is to be applied universally to assess whether amendments to a claim comply with Article 123(2) EPC (G 2/10). In this case, the criteria specified in T 1621/16 are helpful.

4.2.4 T 1621/16 contains the following ruling (see Catchword):

"1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.

2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:

- the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and

- the application as filed includes a pointer to the combination of features resulting from the multiple

selections."

4.2.5 The board concurs with the view expressed in T 1937/17 that the first criterion of point 2) of the Catchword of T 1621/16 ("the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution") should not be considered a criterion in establishing whether there is a direct and unambiguous disclosure for the combination of features resulting from a multiple selection (see point 4.3.1 of T 1937/17).

4.2.6 Otherwise, the board shares the conclusion reached in T 1621/16 that the choice of a more or less preferred element from a list of converging elements (or alternatives) should not be treated as an arbitrary selection because this choice does not lead to a "singling out" (see point 1 of the Catchword of T 1621/16); and that in general a pointer to the combination of features resulting from multiple selections is necessary to meet the requirements of Article 123(2) EPC (see second criterion of point 2) of the Catchword).

4.2.7 The current board derives from this decision that the assessment of situations like the one underlying T 1621/16 should not be treated in the same way as amendments resulting from selections from two or more lists of non-converging alternatives (see Case Law of the Boards of Appeal, 10**(th) edn., chapter II.E.1.6.2). This board endorses this approach.

4.2.8 In this context, the board prefers the term "converging elements" over "converging alternatives". To the board, "alternatives" seems to imply that there are real alternatives having no overlap with each other. However, where the broadest feature, such as a numerical range, simply converges towards the narrowest feature, fully lying within the broadest feature and not merely partly overlapping it or lying beside it, as in the case at hand, it seems misleading to use the term "alternatives". Thus, in the case at hand, the board prefers the term "converging elements".

4.2.9 The board also shares the assessment in T 1133/21 (point 2.15) of the current board in a different composition that the mere fact that features are described in terms of lists of more or less converging elements (converging alternatives) does not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed and that any amendment is only allowable under Article 123(2) EPC if it complies with the gold standard. This is particularly relevant where an application as filed provides a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments as in the case underlying T 1133/21 (see point 2.17 of T 1133/21).

4.2.10 The board also agrees with the conclusion reached in T 1133/21 that the assessment of compliance with Article 123(2) EPC in situations like the present one should be case specific, as also stated by the opposition division (see page 26, third paragraph of the decision under appeal). Factors playing a role in this assessment are, inter alia, the number of elements (alternatives) disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features (see point 2.16 of T 1133/21).

4.2.11 In addition, the board considers that whether the claimed combination of features merely results from the combination of claims having an appropriate back-reference to each other (see also T 2237/10, Reasons 4.5) plays a role in the assessment of the compliance with Article 123(2) EPC and in particular whether there is a pointer to the claimed combination of features. This is especially so in cases like the one at hand where only very few "selections" were necessary to arrive at the combination of features in question (see claims 3 and 4 of the application as filed only covering three numerical ranges converging from the broadest range towards the narrowest range being fully within the broadest range).

4.2.12 A pointer is an (implicit or explicit) indication or hint towards the combination of features in question. The pointer needs to be suited to demonstrate that the claimed combination of features is envisaged in the application as filed. Such information must be provided in the application as filed. Typically, it consists of an example or embodiment disclosed in the application which demonstrates that the combination of features was already envisaged in the application as filed, e.g. by the fact that the new combination of features falls within an example. The existence of a pointer must exclude that arbitrary new combinations of features are created which are merely conceptually comprised in the application as filed.

In the board's view, there is not normally only one pointer towards the most preferred example or embodiment, e.g. exemplified by a specific example or embodiment of the invention.

4.2.13 Finally, the board is of the opinion that an overly formalistic application of the concept of multiple selections from lists of alternatives should be avoided (see also T 1210/20, Reasons 3.11). Instead, it is to be assessed, on a case-by-case basis, what a skilled person would directly and unambiguously derive from the whole application as filed as being disclosed in combination. This is the only test adopted by the Enlarged Board of Appeal which is binding on the boards.

4.2.14 Thus, the relevant question is whether there is a pointer in the application as filed towards the combination of the two numerical ranges, relating to different levels or enumerations of converging elements (claims 3 and 4 of the application as filed), and a selection from a list of non-converging alternatives (claim 10 of the application as filed).

4.2.15 In the case at hand, example 1 of the application as filed qualifies as a pointer to the choice of cocoa butter for the following reasons.

4.2.16 Example 1 of the application as filed exemplifies the deodorisation of cocoa butter. In the board's view, this emphasises that cocoa butter is a preferred triglyceride composition. This assessment is supported by page 1, lines 4 to 6 of the application as filed, which mentions that "the present invention relates to bloom-retarding components based on cocoa butter". Thus, the selection of cocoa butter from the list in claim 10 of the application as filed is not arbitrary.

4.2.17 In comparison to claim 1, narrower temperature and time ranges in the deodorising step are applied in example 1. However, the experiments of example 1 applying a temperature of 240°C, 250°C and 260°C for 2, 4 and 6 hours (i.e. 120 min, 240 min and 360 min) in the deodorisation of cocoa butter all fall within the requirement "between 80 and 480 minutes at a temperature of at least 235°C" of claim 1. The board does not take issue with the fact that these experiments of example 1 not only fall within the scope of claim 1 but also within an even further restricted scope of more preferred options.

4.2.18 Concerning the temperature feature, the narrowest range of "at least 235°C" in claim 4 of the application as filed, although not explicitly designated as the "most preferred", is considered the most preferred definition of this open-ended temperature range in light of the whole description. The board shares the opposition division's conclusion that "when read meaningfully by the skilled person, the narrowest range in each claim corresponds to the most preferred embodiment" (see decision under appeal, point 7.1, page 29, lines 3 to 6). The fact that higher temperatures are preferred is also supported at numerous places in the description (see page 6, lines 1 to 11; page 8, lines 13 to 17 and page 15, lines 14 to 17 of the application as filed).

4.2.19 As indicated under point 4.2.11 above, the fact that there are only three levels of converging elements disclosed in dependent claims 3 and 4 of the application as filed also plays a role. This represents, in the board's view, only a very limited number of possible choices. The current situation is different from when there is a high number of converging elements or a large reservoir of options (as, for instance, in T 1133/21).

4.2.20 In view of the above, the board does not take issue with the deodorisation times of 120 min, 240 min and 360 min used in the above experiments of example 1 of the application as filed that only cover a part of the range "between 80 and 480 minutes" and not the entire claimed range. As outlined above, all these deodorisation experiments of cocoa butter according to example 1 fall within the scope of claim 1 and, thus, support that the claimed combination of features is not the result of an arbitrary selection.

4.2.21 The opponents referred to T 149/18, which in their view supported that in the case at hand, there was no pointer towards the combination of claimed features. The board is of the opinion that T 149/18 differs from the case at hand and thus is not applicable. The following differences are relevant.

Firstly, in T 149/18, the pH range of the final product ("4 to 8") was constructed by combining the upper limit of a broad range of 2 to 8 disclosed in claim 5 with the lower limit of a narrower preferred range of 4 to 7 disclosed in the same claim. In the case at hand, numerical ranges literally mentioned in dependent claims of the application as filed are inserted into claim 1. No new numerical range is created; only literally mentioned ranges are chosen.

Secondly, in T 149/18, a product-by-process claim was created which was not present in the parent application as filed. This is not the case in the current proceedings.

Thirdly, in T 149/18, the pH range of 4 to 8 for the pH adjustment step a) (being part of the newly created product-by-process formulation and not necessarily representing the pH range of the final product) is constructed using a value of 4 (which is not originally disclosed as a lower limit) in combination with the upper limit from the range 2 to 8. Other non-convergent ranges and values are also disclosed. According to the parent application as filed, the pH of the composition prepared during this pH adjusting step a) is not necessarily that of the final product, and these pH values are independent from each other.

Finally, in T 149/18, the pH values of the pH adjustment step a) mentioned in the examples are associated with a specific choice of temperature. In contrast, in the case at hand, numerous experiments of example 1 fall within the scope of claim 1, but no further specific adaptation of additional features is required. Example 1 merely requires the presence of cocoa butter and specific time and temperature conditions in an otherwise typical deodorisation step.

Thus, T 149/18 is not relevant for the case at hand.

4.2.22 In view of the above circumstances, the subject-matter of claim 1 is directly and unambiguously derivable from the application as filed, i.e. there is sufficient basis for the selection of cocoa butter (from a list of non-converging alternatives in claim 10 of the application as filed) in combination with the limitation of the deodorisation time to a range of 80 to 480 min (disclosed in claim 3 of the application as filed) and the limitation of the deodorisation temperature to the range of at least 235°C (disclosed in claim 4 of the application as filed).

In view of the above, the subject-matter of claim 1 complies with Article 123(2) EPC.