T 0249/12 - Combining ranges

Key points

• The Board decides that a disclosed range of 1 - 50 wt.% can be combined with the preferred range of 10-20 wt.% to provide basis for a claimed range of 10-50 wt.%.

EPO T 249/12 - link (29.01.2016)

Reasons for the Decision

3. Art. 123(2) EPC

3.1 Claim 1 corresponds to claim 1 of the application as filed, in which the expression "a.2) a second polyamide (PA-2) ..." was amended to "a.2) 10-50 mass %, relative to the total mass of the thermoplastic polyamide composition, of a second polyamide (PA-2) ...".

3.1.1 In that respect, the passage on page 9, lines 7-10 of the application as filed, which was relied upon by the appellant, reads as follows:

"In a further preferred embodiment of the invention the second polyamide is present in an amount of 1-50 mass %, preferably 2.5-40 mass %, more preferably 5-30 mass %, and still more preferably 10-20 mass %, relative to the total mass of the thermoplastic polyamide composition."

3.1.2 It was not disputed that said passage refers to polyamide (PA-2) according to feature a.2 of operative claim 1. As derivable from the passage of the application as filed cited above, the range of 10-50 mass % now being specified in operative claim 1 amounts to defining a range by using the upper limit of the less preferred broader range (50 mass %) and the lower limit of the most preferred narrower range (10 mass%). It is concurred with the findings of T 2/81 that the end-points of the new range now defined being both specifically mentioned in the application as filed, the range defined using the lower limit(s) and the upper limit(s) of those ranges would have been "unequivocally and immediately apparent to the skilled person" (T 2/81; section 3 of the reasons) i.e. the range now being specified in claim 1 is directly and unambiguously disclosed in the application as filed.

3.1.3 It was neither shown nor argued by the respondent that the range of 10-50 mass % now being defined for polyamide (PA-2) in operative claim 1 is in any way special as compared to the range defined in claim 1 as originally filed, which was implicitly limited by the fact that the thermoplastic polyamide composition (a)

- consists of a blend of at least two polyamides comprising (PA-1) and (PA-2);

- comprises at least 50 mass %, relative to the total mass of the thermoplastic polyamide composition, of (PA-1).

Therefore, there is no evidence on file that the subject-matter now being defined is related to a different invention as compared to the application as filed. The amendment made therefore merely amounts to defining a sub-range by deleting a part of the initial broader range i.e. it is a limitation of the range originally disclosed.

Under those circumstances, although the amendment made amounts to combining the upper limit and the lower limit disclosed in two different ranges originally disclosed in a list of four possible ranges (see section 3.1.1 above), there is no justification for deviating from the general conclusion drawn in T 2/81, which dealt according to the respondent with the combination of only two ranges. That conclusion is in line with accepted case law of the Boards of Appeal see e.g. T 522/96 (section 2.1 of the reasons).

3.2 The respondent considered that the criteria for the assessment of Art. 123(2) EPC had developed since T 2/81 and that the "gold standard" criteria now to be considered was whether or not the amendment made was "directly and unambiguously derivable" from the application as filed, which was allegedly not the case here.

However, it is derivable from section 3 of T 2/81 that the conclusion according to which the amendment made was allowable was arrived at by considering that:

(a) the new range was "unequivocally and immediately apparent to the person skilled in the art"; and

(b) the restriction made would not merit novelty as "selection" so that it does not represent any new subject-matter within the meaning of Art. 123(2) EPC.

In the Board's view, above criterion (a) is equivalent to the "gold standard" mentioned by the respondent i.e. it has to be assessed whether the subject-matter now being defined is directly and unambiguously derivable from the application as filed. That that requirement is satisfied in the present case is shown in above section 3.1.2.

Also, above criterion (b) is here satisfied (see section 3.1.3).

For those reasons, the respondent's arguments did not convince.

3.3 Under those circumstances, the subject-matter now being defined in operative claim 1 does not extend beyond the content of the application as filed and satisfies the requirements of Art. 123(2) EPC.