T 0119/15 - Combining preferred features

Key points

• The claim is directed a polymer laminate with two layers, made of three copolymers. Claim 1 specifies for each of these polymers a different range of the ratio of the comonomers.
•  "The preferred ranges are each disclosed as individually preferred value ranges, no specific combination of preferred ranges being (explicitly or implicitly) indicated or suggested in EP-A [the application as filed].
• " In view of the above it follows that the subject-matter of claim 1 cannot be derived directly and unambiguously from the application as filed (EP-A). Since all preferred value ranges mentioned above are disclosed in EP-A only as preferred ranges the skilled person would only deduce that each of them can be individually selected. However, no combination of such value ranges is indicated as preferred and this applies in particular to the combination of the molar ratios according to features (i) to (iii)."
• " The Board also considers that decision T 1511/07 does not apply to the present case. In effect, claim 1 in case T 1511/07 is directed to a chemical compound ("a metastable calcium complex"), whereas present claim 1 is directed to a polymer laminate, which is a mechanical item including different mechanical components, such as different copolymer layers having mechanical or physical properties."
• "By contrast, the "lists" discussed in decision T 1511/07 all pertain to one and the same chemical compound or object, thus no equivalence or analogy being given with the preferred value ranges indicated in EP-A, which cannot be considered as "lists" within the meaning of T 1511/07." 
• As a comment, I don't see any technical reason why components of a compound should be treated differently from components of a multilayer laminate. I wonder if the Board is doing a kind of common law distinguishing cases. Which is not necessary because the Board is not bound by other T decisions. 

EPO T 0119/15 -  link

Reasons for the Decision

[ Claim 1 is directed to a polymer laminate comprising a first and a second layer, the first layer being made of the copolymer SIBS and the second layer of the copolymer SIS and/or SIB.]

2. The subject-matter of claim 1 (main request) infringes Article 123(2) EPC since it extends beyond the content of the application as filed.

In the Board's judgement the features [specifying for each of these three copolymers SIBS, SIS and SIB a different range of the molar ratio of comonomers] were not disclosed in combination as constituting a preferred feature in the application as filed and therefore the selection of the molar ratios for SIBS, SIS and SIB in combination (included in the subject-matter of claim 1) is not permissible.

Claim 1 is directed to a polymer laminate comprising a first and a second layer, the first layer being made of the copolymer SIBS and the second layer of the copolymer SIS and/or SIB.

Preferred value ranges for the weight averaged molecular weight, the percentage content by mass of styrene, the molar ratio of an isobutylene (or isoprene) unit to a styrene unit and the polymerization degree of each block are given in the corresponding set of said paragraphs relating respectively to SIBS, SIS or SIB. The preferred ranges are each disclosed as individually preferred value ranges, no specific combination of preferred ranges being (explicitly or implicitly) indicated or suggested in EP-A.

In view of the above it follows that the subject-matter of claim 1 cannot be derived directly and unambiguously from the application as filed (EP-A). Since all preferred value ranges mentioned above are disclosed in EP-A only as preferred ranges the skilled person would only deduce that each of them can be individually selected. However, no combination of such value ranges is indicated as preferred and this applies in particular to the combination of the molar ratios according to features (i) to (iii). Further, no link is made (explicitly or implicitly) in EP-A between he preferred value ranges of the molar ratios, hence no such link permits to distinguish between this specific combination of preferred value ranges and other possible combinations. Also, there would be no reason on the basis of common general knowledge for the skilled person to select the specific combination of the molar ratios, for the polymer laminate includes said copolymer SIBS in the first layer and said copolymers SIS and/or SIB in the second layer, wherein said layers fulfil a different physical function (air permeation resistance vs. adhesion). Consequently, the layers being different and having essentially different physical functions, there would be a priori no reason for the skilled person to select the preferred value ranges of one and the same parameter (i.e. molar ratio) for all said copolymers.

[...]
The Board also considers that decision T 1511/07 does not apply to the present case. In effect, claim 1 in case T 1511/07 is directed to a chemical compound ("a metastable calcium complex"), whereas present claim 1 is directed to a polymer laminate, which is a mechanical item including different mechanical components, such as different copolymer layers having mechanical or physical properties. Further, in the present case the preferred value ranges represent various technical features of each (SIBS, SIS, or SIB) copolymer layer, with these features for each copolymer layer independently defining an object different from the object defined by the features pertaining to a different copolymer layer. By contrast, the "lists" discussed in decision T 1511/07 all pertain to one and the same chemical compound or object, thus no equivalence or analogy being given with the preferred value ranges indicated in EP-A, which cannot be considered as "lists" within the meaning of T 1511/07.