T 1688/20 - Novelty of ranges under the gold standard test

Key points

•  The question is whether the subrange defined in the claim provides for novelty. The prior art disclosure is 55 - 60, and the claimed range is  an angle of 56 degrees or more and 59 degrees or less" 
• "According to the opposition division none of the following criteria were met by the sub-range of claim 1 of the patent as granted with respect to the known broad range of E5:
  (a) the selected sub-range is narrow compared to the known range; (b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range; (c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching)."

• "For criterion (c), the Board concurs with the most recent decisions of the Boards of Appeal, including T 261/15, point 2.2.2 of the reasons, according to which this criterion of purposive selection is relevant for the question of inventive step rather than for novelty."

• "with regard to criteria (a) and (b), namely that a claimed sub-range must be "narrow" compared to the known range and "sufficiently far removed" from any specific examples disclosed in the prior art and from the end-points of the known range, the present Board is not convinced that the relative terms "narrow" and "sufficiently far removed" provide objective, solid and consistent criteria for establishing novelty of a selected sub-range. The Board is of the view that these terms are generally open to such a broad interpretation that the decision whether criteria (a) and (b) are met not only depends on the factual circumstances of each case, but could also depend on the subjective perception of the deciding body on which values are to be considered "narrow" or "sufficiently far removed". It follows that there is not always clear guidance on what can unmistakably be held as "narrow" or "sufficiently far removed" in order to fulfil the requirements of criteria (a) and (b)."

• "in order to conclude a lack of novelty there should be in the prior art a direct and unambiguous disclosure, in the sense of the "gold standard", of subject-matter falling within the scope of the claim (see also T 1085/13, Reasons, point 3.6.1).'

• "The Boards have emphasized that the various tests developed for different cases of amendments are only meant to provide an indication of whether an amendment complies with Article 123(2) EPC as interpreted according to the "gold standard" and should not lead to a different result"

• "The present Board derives from the above that the same should hold true for deciding on novelty of the claimed subject-matter with respect to the prior art, i.e. that no test or list of criteria should lead to a different result than when applying the "gold standard" directly, which is the absolute requirement in terms of disclosure.'

•  In light of the above, the Board concludes that in cases where, under application of the "gold standard", it can be established whether the skilled person, using common general knowledge, directly and unambiguously derives a claimed sub-range from a particular disclosed range of the prior art, no supporting test or criteria is necessary to reach a conclusion and thus none of the principles set out in decisions T 198/84 and T 279/89 needs to be applied.

• i.e.: " (a) the selected sub-range is narrow compared to the known range; (b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range;  (c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching)." 

•  The appellants [patentee] argued that the angle range disclosed by document E5 is 55 to 60 degrees, so that there is no direct and unambiguous disclosure of feature F of claim 1 according to the patent as granted, in particular of "an angle of 56 degrees or more and 59 degrees or less"."' 

• "The Board thus concludes that, under the application of the "gold standard" the skilled person cannot directly and unambiguously derive from the disclosure of E5 an "angle of 56 degrees or more and 59 degrees or less" as required by claim 1 according to the patent as granted."

• E5 is prior art under Art.54(2) EPC. The Board finds the claim to be also inventive. The Board finds that the selection is not an arbitrary selection: " the Board notes that the technical effects due to the variations of the twist angle are recognisable in view of the comparative examples corresponding to paragraphs [0046] to [0053], tables 10 to 15 and figures 6 and 7. The influence on the coating efficiency and on the paint particle diameter in view of the different values of twist angle and under the same boundary conditions of air pressure and flow rate can be clearly recognised, in particular for air pressures of 0.1 MPa and above, which involve higher flow rates." 

• " The argument of the respondent  [opponent] that the technical effect mentioned in the opposed patent can also be achieved with twist angle values outside the claimed range and that therefore the claimed range is an arbitrary selection, cannot be followed. What is relevant is whether the prior art disclosing the broader range also discloses the presence of such a technical effect, which is here not the case. Even if the patent proprietor were to choose to claim a range of values for the twist angle smaller than the range in which a technical effect might take place, the claimed range still provides a technical effect that has not been disclosed in the prior art and would thus represent a purposive selection." 

• As a comment, the Board does not seem to directly address the argument of the opponent that " the alleged effects of improving the coating efficiency are also achieved by twist angles outside the claimed range such as 55 degrees (as shown in figures 6 and 7 of the patent specification)", bearing in mind that 55 degrees is a disclosed embodiment in E5.

• As a further comment, I doubt if it is correct that "what is relevant is whether the prior art disclosing the broader range also discloses the presence of such a technical effect", other than for 2nd medical and non-medical use claims. If the prior art document discloses an embodiment which inherently provides the technical effect (even if that effect is not expressly described), then the objective technical problem is not achieving that technical effect, in my view.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t201688eu1.html

3. Patent as granted - Novelty, Articles 100(a) and 54 EPC

3.1 In point 2.3.3 of the decision under appeal, the opposition division found that feature F was anticipated by document E5, which discloses a twist angle ("Drallwinkel") of 50 degrees or more and 60 degrees or less, in particular 55 degrees (see paragraphs [0025] and [0072]). According to the opposition division none of the following criteria were met by the sub-range of claim 1 of the patent as granted with respect to the known broad range of E5:

(a) the selected sub-range is narrow compared to the known range;

(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range;

(c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching).

3.2 These criteria were initially developed in decision T 198/84 and summarised briefly in T 279/89. For criterion (c), the Board concurs with the most recent decisions of the Boards of Appeal, including T 261/15, point 2.2.2 of the reasons, according to which this criterion of purposive selection is relevant for the question of inventive step rather than for novelty. Indeed, since 2019 the Guidelines state that only the first two criteria need to be fulfilled (see CLB, supra, I.C.6.3.1, fifth paragraph and Guidelines for Examination, G-VI, 8 (ii) - November 2019 version). The parties appear to agree on this point (see statement of grounds of appeal, page 15, penultimate paragraph and reply to the statement of grounds of appeal, page 13, point iii.).

3.2.1 Furthermore, with regard to criteria (a) and (b), namely that a claimed sub-range must be "narrow" compared to the known range and "sufficiently far removed" from any specific examples disclosed in the prior art and from the end-points of the known range, the present Board is not convinced that the relative terms "narrow" and "sufficiently far removed" provide objective, solid and consistent criteria for establishing novelty of a selected sub-range.

The Board is of the view that these terms are generally open to such a broad interpretation that the decision whether criteria (a) and (b) are met not only depends on the factual circumstances of each case, but could also depend on the subjective perception of the deciding body on which values are to be considered "narrow" or "sufficiently far removed". It follows that there is not always clear guidance on what can unmistakably be held as "narrow" or "sufficiently far removed" in order to fulfil the requirements of criteria (a) and (b).

3.3 In any case, the Board is additionally convinced that, at least in the present case, the remaining criteria (a) and (b) do not need to be assessed for the question of novelty, for the following reasons.

3.3.1 It is established case law of the Boards of Appeal that the European patent system must be consistent and the concept of disclosure must be the same for the purposes of Articles 54, 87 and 123(2) EPC (see G 1/03, Reasons, point 2.2.2; G 2/10, Reasons, point 4.6 and G 1/16, Reasons, point 17).

3.3.2 With regard to the allowability of an amendment to the parts of the European patent application or of a European patent in view of the requirements of Article 123(2) EPC, it is also established case law of the Boards of Appeal that the question to be considered is what a skilled person would have derived directly and unambiguously, using common general knowledge from the description, claims and drawings of the European patent application, seen objectively and relative to the date of filing (see CLB, supra, II.E.1.3.1, in particular G 3/89; G 11/91; and G 2/10, referring to this test as the "gold standard").

3.3.3 It follows from the above that, analogously as for assessing compliance with Article 123(2) EPC, in order to conclude a lack of novelty there should be in the prior art a direct and unambiguous disclosure, in the sense of the "gold standard", of subject-matter falling within the scope of the claim (see also T 1085/13, Reasons, point 3.6.1).

3.3.4 The Boards have emphasized that the various tests developed for different cases of amendments are only meant to provide an indication of whether an amendment complies with Article 123(2) EPC as interpreted according to the "gold standard" and should not lead to a different result (see CLB, supra, II.E.1.3.1, penultimate paragraph, in particular the decisions dealing with the three-point essentiality test T 1472/15, Reasons, point 2.3 and T 0437/17, Reasons, point 3.3.4)

3.3.5 The present Board derives from the above that the same should hold true for deciding on novelty of the claimed subject-matter with respect to the prior art, i.e. that no test or list of criteria should lead to a different result than when applying the "gold standard" directly, which is the absolute requirement in terms of disclosure.

3.4 In light of the above, the Board concludes that in cases where, under application of the "gold standard", it can be established whether the skilled person, using common general knowledge, directly and unambiguously derives a claimed sub-range from a particular disclosed range of the prior art, no supporting test or criteria is necessary to reach a conclusion and thus none of the principles set out in decisions T 198/84 and T 279/89 needs to be applied.

3.5 Document E5

3.5.1 The appellants argued that the angle range disclosed by document E5 is 55 to 60 degrees, so that there is no direct and unambiguous disclosure of feature F of claim 1 according to the patent as granted, in particular of "an angle of 56 degrees or more and 59 degrees or less". Furthermore, the broader range of 55 to 60 degrees is only disclosed in combination with the feature of the air holes being directed to the edge of the bell cup, while features B/C of claim 1 require that the air holes are directed to the back surface of the bell cup.

3.5.2 The respondent, on the other hand, submitted that document E5 anticipated the subject-matter of claim 1 according to the patent as granted, including feature F, in a direct and unambiguous manner.

According to the respondent, the opposition division correctly found that E5 disclosed a twist angle ("Drallwinkel") of 50 degrees or more and 60 degrees or less, in particular "substantially" 55 degrees (see claim 13, paragraph i) and paragraphs [0025] and [0072]). The skilled person would understand, directly and unambiguously, that an angle value anticipated by E5 lies somewhere in the middle of the range disclosed, thereby prejudicing novelty of the angle range according to feature F.

In addition, the skilled person would inevitably understand from the formulations "60 degrees or less" and "substantially 55 degrees" values of inter alia 59 and 56 degrees as being the next possible and logical alternative when considering a single degree as the smallest possible difference, thereby directly and unambiguously anticipating the end points of the claimed angle range.

Lastly, the respondent, making reference inter alia to decision T 234/09 and to the Guidelines G-VI, 8.1, argued that under consideration of the measurement error margins and by applying the rounding-off convention, the angle of 55 degrees or 60 degrees disclosed by E5 covers the disclosure of a value of 55.4 degrees or 59.5 degrees respectively, while the claimed values of 56 and 59 degrees also protect values of 55.5 and 59.4 degrees respectively. According to the respondent, those differences between the disclosed and claimed values of 0.1 degrees are negligible and fall within the customary tolerance values, so that E5 directly and unambiguously discloses the claimed angle values of 56 and 59 degrees, at least in view of these error margins and customary tolerances.

3.5.3 The Board is not persuaded by the respondent's arguments for the following reasons.

It cannot be agreed with the respondent that an angle value somewhere within the disclosed range can be considered as directly and unambiguously disclosed. Indeed, it is consistent case law that general information, such as a range defined by its boundaries, cannot anticipate a more specific technical feature, such as a specific value in that range, see CLB, supra, I.C.4.1. This also applies in the case that the alleged value is an adjacent value to be considered after one or the other boundary value. Therefore, the formulations "60 degrees or less" and "substantially 55 degrees" cannot be seen as directly and unambiguously disclosing the end points of the claimed range.

With regard to the error margins and the rounding-off convention, the Board is convinced that the skilled person would not consider different nominal values of a dimension as corresponding. Therefore the Board cannot agree with the respondent that the skilled person would derive an implied disclosure of 56 degrees from a value of 55 degrees nor an implied disclosure of 59 degrees from a value of 60 degrees.

The Board thus concludes that, under the application of the "gold standard" the skilled person cannot directly and unambiguously derive from the disclosure of E5 an "angle of 56 degrees or more and 59 degrees or less" as required by claim 1 according to the patent as granted.