T 1255/18 - Two lists principle is only an aid

 Key points

• The Board finds the claims to lack basis in the (parent) application as filed. The issue is that the claim specifies a combination of features which are only disclosed individually in the application as filed.
• The Board: “While conditions have been developed by the case law, such as the so-called "two-lists principle" (indeed starting from decision T 12/81 of 9 February 1982 in the context of the novelty analysis as cited by the appellant), they are not meant to be additional or alternative conditions to be checked, but only a possible aid in certain cases to verify whether the gold standard is satisfied and should thus not lead to a different result than when applying the gold standard directly.”
• “Allowing the various restrictions introduced into present claim 1 without there being any - even implicit - indication in the parent application as filed that the combination of newly introduced features was envisaged would be unfair to third parties. In particular, it would give an applicant who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of features encompassed by said broad original claim, e.g. a specific combination of features falling within the ambit of present claim 1 which does not overlap with the examples of the parent application.”
• The application claims the priority of a US application.

https://www.epo.org/law-practice/case-law-appeals/recent/t181255eu1.html

3. Even if the Board, to the benefit of the appellant, considered that the passages cited by the appellant provided a basis in the parent application as filed for feature (3), one could not conclude that the claimed subject-matter meets the requirements of Article 76(1) EPC for the following reasons.

3.1 The appellant did not indicate any explicit single disclosure for the claimed combination of features, but rather relied on various separate passages of the earlier application as filed relating to each of said features individually. The mere fact that each of the features of claim 1 of the main request would as such, i.e. when read in isolation, be disclosed in the earlier application as filed is not sufficient to conclude that the skilled person would implicitly derive the presently claimed combination of features directly and unambiguously from the application as filed, using common general knowledge. In this context "implicitly" means that the skilled person would have found a disclosure for said combination of features as objectively and necessarily implied by the explicit content of the application as originally filed as a whole.

3.2 While conditions have been developed by the case law, such as the so-called "two-lists principle" (indeed starting from decision T 12/81 of 9 February 1982 in the context of the novelty analysis as cited by the appellant), they are not meant to be additional or alternative conditions to be checked, but only a possible aid in certain cases to verify whether the gold standard is satisfied and should thus not lead to a different result than when applying the gold standard directly.
The appellant's argument that the definition of the corrosion-resisting particles in claim 1 of the earlier application is not given in the form of a list whose definition was given in Annex A1, but in the form of overlapping items is not decisive. The central question to be answered in order to assess whether the requirements of Article 76(1) EPC are met is therefore not whether the two-lists principle strictly applies in the present case, with possible implications related to the precise meaning of the term "list", but whether the combination of features, in particular that of claim 1 of the main request, can be seen by the skilled person as directly and unambiguously derivable from the content as a whole of the parent application as filed, in agreement with decision T 783/09 of 25 January 2011 cited by the appellant.

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The underlying idea of Article 123(2) EPC is that applicants or patent proprietors shall not be allowed to improve their position by adding subject-matter not disclosed in the application as filed, since so doing would give them an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (G 1/93, OJ EPO, 1994, 541, point 9 of the reasons for the decision). The same is valid for the requirement of Article 76(1) EPC, second sentence, having regard to the fact that this provision and that of Article 123(2) EPC serve the same purpose (Case Law of the Boards of Appeal, 9th edition 2019, II.F.2.1).

3.13 The primer and/or pretreatment coating composition of claim 1 was defined on filing of the parent application in a broad manner, its definition including as the sole structural features an adhesion promoting component and a corrosion resisting particles selected from (i) magnesium oxide particles having an average primary particle size of no more than 100 nanometers; (ii) particles comprising an inorganic oxide network comprising one or more inorganic oxides; and/or (iii) chemically modified particles having an average primary particle size of no more than 500 nanometers. Subsequently introducing some limits into claim 1 on the basis of preferences or options defined in the parent application as filed for the purpose of overcoming objections based on prior art revealed in proceedings before the EPO, is allowable in view of the requirements of Article 76(1) EPC subject to the condition that the parent application as filed reveals, at least implicitly in a direct and unambiguous manner the resulting specific combination of features.

Allowing the various restrictions introduced into present claim 1 without there being any - even implicit - indication in the parent application as filed that the combination of newly introduced features was envisaged would be unfair to third parties. In particular, it would give an applicant who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of features encompassed by said broad original claim, e.g. a specific combination of features falling within the ambit of present claim 1 which does not overlap with the examples of the parent application.

The underlying principle is that any invention for which protection is sought, i.e. in the specific form claimed, and which therefore is meant to provide a contribution to the art justifying for a specified time the right to exclude others from exploiting the invention, must have been made at the date of filing the application and be properly disclosed therein. As indicated in point 2.3.3 of the reasons for G 1/03 (OJ EPO, 2004, 413) "applicants deal with the state of the art of which they are aware (see Rule 27(1)(b) EPC)" (now Rule 43(1)(b) EPC) "and try to delimit the invention against it. For any further state of the art of which they are not aware, they draft fall-back positions for preferred (and more preferred) embodiments. In this way the invention as set out in the specification may appear like the skins of an onion and it becomes clear where the core of the invention is." Amending the subject-matter to address objections raised in view of prior art documents revealed in proceedings before the EPO is acceptable as long as a corresponding fall-back position can be considered to be disclosed in the application as filed. In the present case, the parent application as originally filed did not contain any fall-back position on the basis of which the combinations of features as presently claimed might be considered to be disclosed.

3.14 On this basis, claim 1 of the main request does not meet the requirements of Article 76(1) EPC. The main request is therefore not allowable.