T 0398/19 - Open-ended parameter features

 Key points

• Claim 1 is directed to a porous material specified inter alia by having a specific surface area of 40 m2/g. A high specific surface area is a desirable property for the material at issue. Clearly, the patent does not give examples over the entire open-ended range. The open-ended range includes by definition compositions that are currently impossible to prepare.
• The opponent refers to  T 1697/12 and T 0113/19 and the German decisions X ZR 32/17 and X ZR 34/17.
• The Board notes that the patentee declared in writing that the patent is limited to compositions having a specific surface area in the same order of magnitude as illustrated in the patent and as can be achieved using the steps of the method claim of the patent. 
• The Board, in translation from French: “For the Board, it is therefore clear that specific surface area [] values very far from the values specifically disclosed do not form part of the claimed invention; this is therefore well limited to the contribution of the disclosure of the invention compared to the existing state of the art.”
• The Board, “The Board is further of the opinion that the present case does not concern a new preparation of a known composition but a new class of mixed oxides characterized by a new combination of parameters having structural implications. Consequently, it can no longer follow the conclusions of decisions X ZR 32/17 ([headnote 1a and 1b]) and X ZR 34/17 (paragraphs 29 and 30 of the reasons) of the Federal Court of Justice of Germany.” 
• The reference for  X ZR 32/17 is to the headnote about sufficiency of that decision.  (link)
• The Board indicates that they follow T 0113/19 (point 2.1 i), T 1018/05 (point 2.3), T 1697/12 (point 5.5.5),  T 0624/08 (point 3.2.2) and consider that T 1697/12 concerns a different case. 4

T 0398/19 -  https://www.epo.org/law-practice/case-law-appeals/recent/t190398fu1.html

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