T 0989/22 - Seriously contemplate and overlapping ranges (alloy case)

Key points

• Claim 1 specifies an alloy composition. 
• The Board, in translation: "It appears [...]  that there is no direct and unequivocal disclosure in D10 of an alloy having a composition as defined in claim 1 of the contested patent. To arrive at such an alloy the skilled person must make several choices among the specific ranges and values ​​disclosed in D10, which is not considered a direct and unequivocal disclosure. The combination of different limit values ​​from different value ranges is not considered disclosed (see T 900/18, Reasons 4.1 citing T 1634/13, Reasons 3.2). Furthermore, the ranges of values ​​should not be compared separately but together (see T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1)."
• This is just the established case law for alloys, as far as I know. It is a bit of a specialized field (requirement to use "consisting of", etc.).
• "The criterion to be applied to assess the novelty of ranges of values ​​is direct and unequivocal disclosure (see T 1688/20, Reasons 3.4 and Reasons 3.3.1 citing G 1/03 and G 2/10)."
• " The concept of "seriously considering" cited by the appellant was initially described in decision T 26/85 (Reasons 9) and taken up again in decision T 666/89 (Reasons 7 and 8) and used in many other decisions concerning the overlapping of domains (Case law of the boards of appeal, 10**(th) edition, 2022, IC6.3.2). In T 666/89 the board held that the concept of "serious consideration" was a concept of novelty (Reasons 8).
• 
  
• "The board is of the opinion that the concept of "seriously considering" implies that the skilled person must assess whether the technical teaching of the earlier document is to be applied within the common range of values ​​(see T 26/85, Reasons 9 and T 666/89, Reasons 7) which is, in the opinion of this board, directly linked to the desired effect.
• "" However,[...]  in the meantime it is well established that direct and unequivocal disclosure is the indisputable criterion for assessing novelty. ""
• " This is why the concept of "seriously considering" is difficult to reconcile with the overarching criterion of direct and unequivocal disclosure in the case of multiple ranges of values."
• "It should also be noted that in T 26/85 the board concluded that novelty was given because the state of the art clearly dissuaded the skilled person from working within the claimed range of values. In the present case, even if the "seriously consider" criterion was accepted contrary to what was written above, it would be noted that all the alloys according to the invention of D10 given as examples have concentrations of Mg > 0.7 and Li > 1 in wt%. It seems unlikely that anyone in the trade would then seriously consider working at lower concentrations. "
• Note, the remark that " the concept of "seriously considering" is difficult to reconcile with the overarching criterion of direct and unequivocal disclosure" hence is obiter.

• See also T 1132/22: "The criterion to be applied when evaluating the novelty of ranges is the gold standard of whether there is direct and unambiguous disclosure (see T 1688/20, Reasons 3.4). In the case of multiple ranges, the concept of "seriously contemplating" as described in T 26/85 is not really in line with direct and unambiguous disclosure. In such a case, "seriously contemplating" is instead linked to the desired effect, which implies considerations known for inventive step (T 989/22, Reasons 1)."
• "To arrive at the claimed composition, the skilled person would have to choose specific end points from the different ranges disclosed. However, this is not considered to be direct and unambiguous disclosure (see T 900/18, Reasons 4.1 citing T 1634/13, Reasons 3.2). Furthermore, the ranges cannot be regarded individually but only in combination (see T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1). Also, an example is a specific embodiment that cannot be combined with the description (see T 210/05, Reasons 2.3)."

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/fr/boards-of-appeal/decisions/t220989fu1

translation

1. Article 100(a) EPC, whole of Article 54 EPC

The applicant disputes the novelty in relation to D10. However, the chamber sees no reason to diverge from the contested decision.

FORMULA/TABLE/GRAPHIC

In point 11 of the grounds of appeal, the applicant submitted a table comparing claim 1 of the contested patent with the disclosure of D10. It appears from this table and from the table of the contested decision reproduced above that there is no direct and unequivocal disclosure in D10 of an alloy having a composition as defined in claim 1 of the contested patent. To arrive at such an alloy the skilled person must make several choices among the specific ranges and values ​​disclosed in D10, which is not considered a direct and unequivocal disclosure. The combination of different limit values ​​from different value ranges is not considered disclosed (see T 900/18, Reasons 4.1 citing T 1634/13, Reasons 3.2). Furthermore, the ranges of values ​​should not be compared separately but together (see T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1).

The criterion to be applied to assess the novelty of ranges of values ​​is direct and unequivocal disclosure (see T 1688/20, Reasons 3.4 and Reasons 3.3.1 citing G 1/03 and G 2/10). The concept of "seriously considering" cited by the appellant was initially described in decision T 26/85 (Reasons 9) and taken up again in decision T 666/89 (Reasons 7 and 8) and used in many other decisions concerning the overlapping of domains (Case law of the boards of appeal, 10**(th) edition, 2022, IC6.3.2). In T 666/89 the board held that the concept of "serious consideration" was a concept of novelty (Reasons 8). However, as discussed below, in the meantime it is well established that direct and unequivocal disclosure is the indisputable criterion for assessing novelty. The board is of the opinion that the concept of "seriously considering" implies that the skilled person must assess whether the technical teaching of the earlier document is to be applied within the common range of values ​​(see T 26/85, Reasons 9 and T 666/89, Reasons 7) which is, in the opinion of this board, directly linked to the desired effect. This is why the concept of "seriously considering" is difficult to reconcile with the overarching criterion of direct and unequivocal disclosure in the case of multiple ranges of values.

It should also be noted that in T 26/85 the board concluded that novelty was given because the state of the art clearly dissuaded the skilled person from working within the claimed range of values. In the present case, even if the "seriously consider" criterion was accepted contrary to what was written above, it would be noted that all the alloys according to the invention of D10 given as examples have concentrations of Mg > 0.7 and Li > 1 in wt%. It seems unlikely that anyone in the trade would then seriously consider working at lower concentrations.

The subject matter of claim 1 and claims 2 to 15, directly or indirectly incorporating the subject matter of claim 1, are therefore new.