T 1320/13 - Values do not disclose range

Key points

• The decision mostly deals with insufficient disclosure of plants obtained by crossing and selection (the decision being given on 17.01.2017), but I leave that aside.
• The Board decides that the claimed range of "between 0.6 and 1" for a particular ratio is not given basis by the remark in the application as filed, that  the range can be "0.1 and about 1", and that the ratio is for example "about 1.0, 0.9, 0.8, 0.7, 0.6, 0.5, 0.4, 0.3, 0.2, 0.1 or even 0, derivable therein". 

EPO T 1320/13 - link

11. Claim 1 inter alia defines the alpha-subunit level and the alpha'-subunit level in the beta-conglycinin trimer (hereinafter "alpha:alpha' ratio") in the range of "between 0.6 and 1".

12. The appellant argued that, although this range was not explicitly disclosed in the application, it had a basis in the disclosure of the range "0.1 and about 1" in claim 5 in conjunction with the value "0.6" disclosed in a list on page 5, lines 12 and 13, which reads: "about 1.0, 0.9, 0.8, 0.7, 0.6, 0.5, 0.4, 0.3, 0.2, 0.1 or even 0, derivable therein". The list of values disclosed on page 5 was understood by the skilled person to represent individual end-points of sub-ranges in view of the ranges disclosed in claims 5, 6 and 10, which could therefore be combined to define an amended range in line with the criteria set out in decision T 2/81.

13. The board is not convinced by this argument. The skilled person would not regard the list of individually disclosed values of ratios on page 5 of the application as individual end-points of ranges. Firstly, a list of individual values - even if disclosed as here in descending order - does not relate to values that lie between them, while a range necessarily encompasses all the values that lie between its two disclosed end-points, i.e. a list of individual values is conceptually different from a range. Secondly, the list on page 5 of the application contains no pointers to a particular combination of ratio values. Accordingly, a specific selection of values also does not clearly and unambiguously emerge for the skilled person from the content of the application.

14. Therefore, the list of individually disclosed ratio values in the application on page 5 does not directly and unambiguously disclose end-points of ranges, let alone preferred ones. Consequently, the amended range "between 0.6 and 1" referred to in claim 1 would not have been recognised by the skilled person as singled out in the application.

15. In decision T 2/81 published in OJ 1982, 394, the board decided that the combination of end-points derived from a disclosed general range and a preferred part-range thereof was directly and unambiguously derivable from the application as filed (see point 3 of the Reasons). This situation, however, differs from the present one for the reasons set out in points 13 and 14 above and can therefore not be relied on by the appellant in support of its case.

16. The main request does therefore not fulfill the requirements of Article 123(2) EPC.