T 0137/17 - Art. 123(2) and claim specifying combinations

Key points

• Claim 1 as granted is directed to a composition "comprising A, B1 and/or B2, and C1 and/or C2".
• Claim 1 as filed specified a composition comprising A, B, and C. Hence, during prosecution, B was limited to B1 and/or B2, and C was limited to C1 and/or C2.
• “The [opponent] argued that claim 1 required an explicit basis in the application as originally filed for each of the combinations arising from that feature, namely B1+C1, B1+C2, B1+C1+C2, B2+C1, B2+C2, B2+C1+C2, B1+B2+C1, B1+B2+C2 and B1+B2+C1+C2, and not every combination found the required basis.”
• The Board: “claim 1 does not individualise any of these combinations. This argument is thus not convincing.”
• The Board's reasoning seems rather remarkable in asserting that “claim 1 does not individualise any of these combinations”. On the other hand, it seems indeed straightforward that an Art. 123(2) objection can not be based on claim embodiments which are not "individualised" in the claim. However, when exactly is an embodiment "individualised"?
• There appears to be a connection with the two-list principle. 

 

T 0137/17  -

https://www.epo.org/law-practice/case-law-appeals/recent/t170137eu1.html

3. Amendments

3.1 Claim 1 as originally filed required a catalyst comprising

(A) a transition metal

(B) an organopolyphosphite, and

(C) an organomonophosphite ligand

Claim 1 of the main request requires

(A) a transition metal

(B) an organopolyphosphite and/or an organopolyphosphoramidite ligand, and

(C) an organomonophosphite ligand and/or an organomonophosphoramidite ligand.

3.2 Paragraph [0029] of the application as originally filed provides the required basis for this amendment. It discloses that "any organomonophosphoramidite ligand can be used as, or in combination with, the organomonophosphite ligand used in the practise of this invention". This passage thus discloses feature (C) of claim 1. It continues by disclosing that "any organopolyphosphoramidite ligand can be used as, or in combination with, the organopolyphosphite ligand used in the practise of this invention". This second passage provides thus a basis for feature (B) of claim 1 (Article 123(2) EPC).

3.3 Designating the members of each class by (B1) organo-polyphosphite ligand, (B2) organopolyphosphoramidite ligand, (C1) organomonophosphite ligand and (C2) organomono-phosphoramidite ligand, claim 1 requires

B1 and/or B2, and C1 and/or C2.

The appellant argued that claim 1 required an explicit basis in the application as originally filed for each of the combinations arising from that feature, namely B1+C1, B1+C2, B1+C1+C2, B2+C1, B2+C2, B2+C1+C2, B1+B2+C1, B1+B2+C2 and B1+B2+C1+C2, and not every combination found the required basis.

3.4 However, claim 1 does not individualise any of these combinations. This argument is thus not convincing.