T 1571/15 - Seriously contemplating in ranges

Key points:

• Claim 1 is for a nickel metal alloy defined by its elemental composition. D1 and D2 both disclose overlapping ranges. Is claim 1 novel?
• The Board finds that D1 does not anticipate claim 1. " The appellant [opponent] argued that the person skilled in the art would seriously contemplate working over the whole range of the broad composition of D1, [] However, this argument disregards the fact that D1 discloses a preferred composition range, []. Since the exemplary composition [] also falls within said preferred range and there is no pointer to work outside this range, the person skilled in the art would not seriously contemplate working outside the preferred composition of D1. The contents of [ Co, Ti, Mo, and Ta]  of the preferred composition of D1 fall outside the claimed range. Therefore, the claimed contents of Co, Ti, Mo, and Ta are not disclosed in D1." 
• Hence, it seems that in this technical field, the novelty destroying teaching is given by the examples and the preferred embodiment, rather than by the broad ranges of the (independent) claims. 

EPO T 1571/15 - link

IV. Claim 1 of the main request (patent as granted) reads as follows:

"A Ni-base superalloy consisting of:

by weight %, Co: 9 to 11%, Cr: 9 to 12%, Mo: up to 1%, W: 6 to 9%, Al: 4 to 5%, Ti: 4 to 5%, Nb: up to 1%, Ta: up to 3%, Hf: 0.5 to 2.5%, Re: up to 3%, C: 0.05 to 0.15%, B: 0.005 to 0.015%, Zr: up to 0.05%, and the balance of Ni and inevitable impurities."

Reasons for the Decision

1. Main request - novelty

[...]

1.1 D1 relates to an Ni-base superalloy and discloses a broad composition in claim 1 (see table above) and a narrower ("typical", see page 3, lines 17-18) composition in claim 5. The overlap between the composition as claimed and the broad composition of D1 is narrow, in particular in respect of Co, Ti, Ta and Mo.

The appellant argued that the person skilled in the art would seriously contemplate working over the whole range of the broad composition of D1, because this broad composition was the same, but for the elements Hf and B, as that of the commercial alloy Rene N4, which was the starting point of D1. However, this argument disregards the fact that D1 discloses a preferred composition range, namely the composition of claim 5 and page 3, line 20 - page 4, line 7. Since the exemplary composition (last paragraph on page 9) also falls within said preferred range and there is no pointer to work outside this range, the person skilled in the art would not seriously contemplate working outside the preferred composition of D1. The contents of Co (7.00-8.00%), Ti (3.35-3.65%), Mo (1.30-1.60%), and Ta (4.60-5.00%) of the preferred composition of D1 fall outside the claimed range. Therefore, the claimed contents of Co, Ti, Mo, and Ta are not disclosed in D1.

In respect of the Ti content, the appellant also argued that the person skilled in the art would have contemplated working in the centre of the broad range of D1 (3.0-5-0%), which falls within the claimed range for this element. However, while it is true that the person skilled in the art may seriously contemplate working in the centre region of a prior art range when no other pointer (for instance in the form of examples of preferred ranges) to another region is present, this is no longer true if, as in the present case, such a pointer is present and is directed to another region. Therefore, the argument of the appellant is not persuasive.

Hence, the subject-matter of claim 1 is novel over D1, because this document does not disclose a composition with Co, Ti, Mo and Ta contents as claimed.

1.2 D2 is directed to a blade for a gas turbine defined by its geometry (claim 1). Claim 7 discloses a very broad composition for said blade. In this case too the overlap is narrow (see for instance the contents of Co, Cr, Mo, W, Ti and Ta). More specific composition ranges are disclosed in examples 1-3. None of said specific ranges would lead the person skilled in the art to work in the claimed range. In particular, none of them points to the claimed contents of Ta (all the examples exhibit contents higher than those claimed), Ti (all the examples exhibit contents lower than those claimed) or Cr (the ranges of examples 1 and 3 are lower and the range of example 2 is broader than the claimed range). Hence, D2 is not novelty-destroying either.

1.3 D10 relates to an Ni-base superalloy powder for repair, coating or re-building. Column 3 of the table discloses two compositions - a broad composition and a preferred composition - the latter corresponding to the composition which is actually claimed (claim 1). Neither of these compositions overlaps with the composition as claimed: the broad composition has a lower C content (up to 0.010) and the claimed composition has at least Co (3.0-7.5), W (1.6-2.5), C (up to 0.003) and Yb (0.01-0.7) outside the claimed ranges. Hence, D10 is not novelty-destroying either.