T 2623/11 - Selection inventions

Key points

• The term " selection invention" is used to identify the particular rules for novelty of such inventions (T 279/89). The present Board defines a special rule for inventive step of selection inventions.
"Only if the selection is connected to a particular technical effect, and if no hints exist leading the skilled person to the selection, an inventive step may be accepted"

T 2623/11 - link

Reasons for the Decision

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4.2 Inventive step

[...] It is, however, noted generally for selection inventions that only if the selection is connected to a particular technical effect, and if no hints exist leading the skilled person to the selection, an inventive step may be accepted.

In the present case, no particular technical effect is provided in the application. In fact, in the application the claimed materials are generally listed with other similar materials. None of the selected materials is highlighted with respect to the other materials as having any particular merit. It is noted in this respect that while the only example of the invention in the application includes the claimed specific materials (cf Example 1), comparison is only made with examples in which one or more of these materials are omitted (cf Comparative Examples 1 to 3). Accordingly, there is no support in the application for the claimed selection being connected to any particular technical effect.

Moreover, as discussed above, hints exist in the state of the art, in particular concerning the choice of alumina particles for absorbing moisture and the provision of a surface treatment, leading the skilled person to the selection.

Accordingly, the subject-matter of claim 1 according to the second auxiliary request lacks an inventive step in the sense of Article 56 EPC 1973.