T 1050/22 - Discordant examples, and lists of possible upper and lower limits

Key points

• "In the present case, as explained above and starting from the disclosure in D5, feature (e) represents a first selection from the list of ranges which may emerge from the endpoints shown in claim 3 and page 7, while feature (g) represents a further selection from a second list of ranges that may be created on the basis of the endpoints shown in claim 1 and page 8 of D5. In the absence of any pointer to the particular combination of claim 1 of the main request, the combination of the range amounts for features (e) and (g) as claimed represents added subject-matter. The Board does indeed not identify any passage of the description or any example as possible pointer for the combination of such selections. Examples A, M and N, which were cited by the respondent, correspond to the only examples wherein the compounds and their amounts match with the claimed compounds and amounts. Most of the remaining examples, in particular examples B-K, show however discordant compositions, so that the examples cannot be seen as a clear pointer to the defined combination of features."
• " The selection of originally explicitly disclosed limit values defining several (sub)ranges to define an individual range may not necessarily generate subject-matter extending beyond the original disclosure, but the further combination of such individual range with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be derivable from the original disclosure, unless there is a clear pointer to such a combination (see for instance T 1511/07 point 2.1,, T 1731/18, point 1.5 of the reasons, and the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.a). In the present case, the basis for the definition of the indicated combination of ranges is even less evident due to the presentation in the claims and the description of D5 of lists of upper and lower limits rather than defined ranges (Cf. T 1408/21 point 1.4 and see the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.c). "
• "A relevant pointer is usually a specific indication or teaching in the original application directing the skilled person to a specific combination. Such specific indication can originate from the original claims and/or from disclosed specific embodiments, in particular when the examples of the application as filed present an uniform disclosure with regard to the concerned combination of features and all fall under the scope of the claims. However, the presence of discordant examples may well indicate that the examples do not provide any clear pointer to the combination of features. 
• "Consequently, the main request does not meet the requirements of Article 76(1) EPC."

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221050eu1

Claim 1 of D5 related to "an effective amount of borate, the effective amount being less than about 0.5 w/v% of the overall composition". There is no disclosure of a specific lower range limit in claim 1 or any other claim of D5.

The description on page 8 of D5 provides lists of possible distinct upper and lower range limits of the amount of borate and reads: "Typically, for the present invention, the borate is at least about 0.05 w/v %, more typically at least about 0.1 w/v % and still more typically at least about 0.25 w/v % of the ophthalmic composition. Furthermore, the borate can advantageously be less than about 0.75 w/v %, more typically less than about 0.5 w/v % and still more typically less than about 0.4 w/v %, and even possibly less than about 0.35 w/v % of the ophthalmic composition.".

Hence, starting from the disclosure in D5 of lists of particular lower and upper limits which are found either in claim 1 of D5 or on page 8, numerous partially overlapping sub-ranges may be created and the claimed range of "at least 0.05 w/v% but less than 0.5 w/v%" represents again a selection from the list of ranges which may emerge from the original disclosure.

2.5 Claim 11 further specifies the viscosity of the suspension and defines it as "greater than 0.03 Pas (30 cps)". Claim 11 refers to dependent claim 10, which relates to a viscosity "greater than 0.02 Pas (20cps) but less than 0.5 Pas (500 cps)", creating for this reason a range of "greater than 0.03 Pas to less than 0.5 Pas".

The subject-matter of dependent claim 11 was not defined in the original claims of D5, but addressed in the description. The description of D5 gives on page 12 lists of lower and upper values of viscosity: "The viscosity of the suspension is typically greater than 5 cps, more typically greater than 20 cps and even more typically greater than 30 cps. The viscosity of the suspension is typically less than 1000 cps, more typically less than 500 cps and even more typically less than 150 cps".

The claimed feature of "greater than 0.03 Pas" is therefore a selection among several possible disclosed lower and upper values of viscosity ranges, picked out from the description and combined with an arbitrary upper range limit as defined in claim 10. This feature constitutes again a selection from the list of possible ranges which may emerge from the original disclosure.

2.6 The selection of originally explicitly disclosed limit values defining several (sub)ranges to define an individual range may not necessarily generate subject-matter extending beyond the original disclosure, but the further combination of such individual range with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be derivable from the original disclosure, unless there is a clear pointer to such a combination (see for instance T 1511/07 point 2.1,, T 1731/18, point 1.5 of the reasons, and the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.a). In the present case, the basis for the definition of the indicated combination of ranges is even less evident due to the presentation in the claims and the description of D5 of lists of upper and lower limits rather than defined ranges (Cf. T 1408/21 point 1.4 and see the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.c).

A relevant pointer is usually a specific indication or teaching in the original application directing the skilled person to a specific combination. Such specific indication can originate from the original claims and/or from disclosed specific embodiments, in particular when the examples of the application as filed present an uniform disclosure with regard to the concerned combination of features and all fall under the scope of the claims. However, the presence of discordant examples may well indicate that the examples do not provide any clear pointer to the combination of features.

In the present case, as explained above and starting from the disclosure in D5, feature (e) represents a first selection from the list of ranges which may emerge from the endpoints shown in claim 3 and page 7, while feature (g) represents a further selection from a second list of ranges that may be created on the basis of the endpoints shown in claim 1 and page 8 of D5. In the absence of any pointer to the particular combination of claim 1 of the main request, the combination of the range amounts for features (e) and (g) as claimed represents added subject-matter. The Board does indeed not identify any passage of the description or any example as possible pointer for the combination of such selections. Examples A, M and N, which were cited by the respondent, correspond to the only examples wherein the compounds and their amounts match with the claimed compounds and amounts. Most of the remaining examples, in particular examples B-K, show however discordant compositions, so that the examples cannot be seen as a clear pointer to the defined combination of features.

The combination of features (e) and (g) with the further selected feature of viscosity of dependent claim 11 is also considered not to be derivable from D5, since there is also no further pointer for such combination. Examples M and N cited by the respondent do even not indicate the viscosity of the compositions disclosed therein.

2.7 Consequently, the main request does not meet the requirements of Article 76(1) EPC.

Since the content of D5 is similar to the content of the divisional application as filed for which the patent was granted, the same conclusion applies with regard to the requirements of Article 123(2) EPC.