T 2377/16 - Basis for consisting

Key points

• In this examination appeal, the Board appears not overly strict about Article 123(2) EPC.
• " The replacement of "comprising" by "consisting of" is allowable in view of Table 5, which shows that slurries according to batches 2 to 5 containing water, cement, zeolite and an accelerating additive in the claimed ranges have the best compressive strength. The skilled person understands therefrom that these compositions are the most preferred. " 
• A second matter is the basis for a combination of ranges. " The range 100% to 200% for water is a combination of the ranges 22% to 200% and 40% to 100% disclosed in claim 6 of the application as filed. In line with T 1170/02 (Reasons 4.5.2) and T 956/07 (Reasons 5.1), the exclusion of the most preferred range in the present case is consistent with the teaching of example 5 (Table 5) and is considered directly and unambiguously derivable from the application as filed.' 

EPO T 2377/16 -  link

2. Article 123(2) EPC

Claim 1 is based on claims 1 and 4 to 7 in combination with the last three lines on page 1 of the application as filed.

The replacement of "comprising" by "consisting of" is allowable in view of Table 5, which shows that slurries according to batches 2 to 5 containing water, cement, zeolite and an accelerating additive in the claimed ranges have the best compressive strength. The skilled person understands therefrom that these compositions are the most preferred. This is not contrary to T 2017/07 (point 4 of the Reasons) since in that case the amendment led to a composition that was in contradiction to the examples, which did not make technical sense. T 759/10 and the decisions cited therein (Reasons 5) are not of relevance, since they concern the amendment from "comprising" to "consisting essentially of".

The range 100% to 200% for water is a combination of the ranges 22% to 200% and 40% to 100% disclosed in claim 6 of the application as filed. In line with T 1170/02 (Reasons 4.5.2) and T 956/07 (Reasons 5.1), the exclusion of the most preferred range in the present case is consistent with the teaching of example 5 (Table 5) and is considered directly and unambiguously derivable from the application as filed.