T 1220/22 - The uniform concept of disclosure

Key points

• The question is whether a certain feature is a distinguishing feature of the claim over D4. D4 is a patent application cited as pre-published prior art. 
•  The appellant argued that the subject-matter of claim 1 differed from D4 in the addition/use of an ABX3 mineral having perovskite structure. This constituted a "double feature", i.e. firstly the use of an inorganic additive/mineral - which was merely an optional component, d), in claim 1 of D4 - and secondly the mineral having perovskite structure. It was clear from the description and claims 1 and 8 that these additives under d) were merely optional components in D4. Hence, choosing the presence of such additives in the compositions of claim 1 of D4 constituted a first selection. A second selection, from the list of inorganic additives under d) in claim 8 was necessary in order to arrive at the presence of titanates (in the granules). This assessment was also in line with the reasoning of decision T 1137/21. Similarly, no disclosure of titanates as inorganic additives under d) was directly and unambiguously derivable from the description of D4."
• "The board does not agree. Claim 1 of D4 clearly points to a preferred range  ..."
• "a person skilled in the art will arrive at the specific choice of titanates after performing a single selection from the list of additives under d) as called for in claim 8."
• "This conclusion can be confirmed by the following hypothetical consideration: if an amendment to claim 1 of D4 had to be considered under Article 123(2) EPC, a limitation of this claim to such embodiments would not create added subject-matter; rather, it would be directly and unambiguously derivable from the teaching of D4."
• "The board agrees with the [proprietor ?]  that a uniform concept of disclosure should be applied for the assessment of disclosure under Article 123(2) EPC and of establishing the distinguishing feature over the prior art, and in view of the above the board's findings are fully in line with this uniform concept. The case underlying T 1137/21, as referred to by the appellant, relates to a different scenario involving numerous selections from different dependent claims as originally filed, including less preferred choices. The scenario underlying T 1137/21 is thus not comparable to the case at hand.

  Consequently, the distinguishing feature of claim 1 is not the use of titanates but the use of a specific titanate, namely of one having perovskite crystal structure and the general formula ABX3."

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t221220eu1

1.3 Distinguishing feature

The appellant argued that the subject-matter of claim 1 differed from D4 in the addition/use of an ABX3 mineral having perovskite structure. This constituted a "double feature", i.e. firstly the use of an inorganic additive/mineral - which was merely an optional component, d), in claim 1 of D4 - and secondly the mineral having perovskite structure. It was clear from the description and claims 1 and 8 that these additives under d) were merely optional components in D4. Hence, choosing the presence of such additives in the compositions of claim 1 of D4 constituted a first selection. A second selection, from the list of inorganic additives under d) in claim 8 was necessary in order to arrive at the presence of titanates (in the granules). This assessment was also in line with the reasoning of decision T 1137/21. Similarly, no disclosure of titanates as inorganic additives under d) was directly and unambiguously derivable from the description of D4.

The board does not agree. Claim 1 of D4 clearly points to a preferred range for the inorganic additives under d) of 0.15 to 6 wt% and hence to their preferred presence in the granules. Similarly, four out of the five examples in D4 involve the use of the inorganic additives under d) and therefore constitute a pointer to the use of the additives under d). The examples thus likewise teach that the use of said additives under d) is preferred in D4. Choosing their presence in D4 is thus not a "selection" step from a list of equal alternatives. When starting from the embodiments of claim 1 comprising 0.15 to 6 wt% of an inorganic additive under d), a person skilled in the art will arrive at the specific choice of titanates after performing a single selection from the list of additives under d) as called for in claim 8.

This conclusion can be confirmed by the following hypothetical consideration: if an amendment to claim 1 of D4 had to be considered under Article 123(2) EPC, a limitation of this claim to such embodiments would not create added subject-matter; rather, it would be directly and unambiguously derivable from the teaching of D4.

The board agrees with the appellant that a uniform concept of disclosure should be applied for the assessment of disclosure under Article 123(2) EPC and of establishing the distinguishing feature over the prior art, and in view of the above the board's findings are fully in line with this uniform concept. The case underlying T 1137/21, as referred to by the appellant, relates to a different scenario involving numerous selections from different dependent claims as originally filed, including less preferred choices. The scenario underlying T 1137/21 is thus not comparable to the case at hand.

Consequently, the distinguishing feature of claim 1 is not the use of titanates but the use of a specific titanate, namely of one having perovskite crystal structure and the general formula ABX3.

1.4 Technical effect and objective technical problem