T 1095/18 - Selection invention / multiple selections

 Key points

• The claim at issue is directed to a polyethylene composition having a density in a range, a component A in a range, a component B in a range, a component C in a range, and having a further property (MFI value) in a specified range. The question is whether the claim is novel over D1.
• The undisputed fact is that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1.
• “in the Board's view, the criteria for selection inventions referred to in the contested decision and by respondent 1 and briefly summarised in T 279/89 []), have been developed for a so-called "selection" of only one single parameter from a numerical range. It is apparent [] that beside the necessary selection of a specific value/range [for the MFI property], the skilled reader has to perform further selections in the four ranges defining the density as well as each of the amounts in components A, B and C”
• “In the Board's view, it is in particular not possible in the present case to treat each of the five features mentioned in claim 1 []t individually as was done by the opposition division and the [opponents] because these features are to some extent interconnected (e.g. the MFI190/5 feature is related to some extent to the amounts of components A to C). Also, a series of selections in several (here 5) ranges amounts to a more severe limitation in terms of the scope of the subject-matter so defined (as compared to each single selection). In that regard the situation of the present case is not that of a single selection made in a range of the prior art but rather that of multiple selections in multiple ranges already disclosed in combination in D1. The fact that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1 do not affect the above conclusion.”
• “he question that the Board had to answer was thus whether from the broader disclosure of generic compositions in [claim 1 of D1], the skilled person would have, in consideration of the whole of D1 and in particular of its examples, directly and unambiguously derived a composition that fell under the scope of claim 1 of the main request. It was not contested to that effect that any of examples 1 to 4 of D1 could be seen as being relevant to answer that question.”
• “It can thus not be concluded from the description of D1 and/or from its examples that polyethylene compositions having a density, amounts in components A, B and C as defined in operative claim 1 and an MFI190/5 in the range of 1.2-2.1 g/10 min were at all prominent in D1 to such an extent that such compositions could be seen as being directly and unambiguously disclosed in that document. In the Board's view, the respondents' objection amounts to create a novel combination of features by cherry-picking within the disclosure of D1 but which combination is not directly and unambiguously derivable from D1.” emphasis added.

T 1095/18 -  -

https://www.epo.org/law-practice/case-law-appeals/recent/t181095eu1.html

1.3 In the present case, the respondents first relied on the disclosure in claim 1 or on column 2, lines 13-46 of a generic composition according to D1 and argued that claim 1 of the main request did not satisfy the accepted criteria required to constitute a selection invention.

1.4 However, in the Board's view, the criteria for selection inventions referred to in the contested decision and by respondent 1 and briefly summarised in T 279/89 of 3 July 1991 (not published in the OJ EPO, point 4.1 of the reasons), have been developed for a so-called "selection" of only one single parameter from a numerical range. It is apparent from the disclosure relied upon by the respondents that beside the necessary selection of a specific value/range in MFI190/5 within the broader range disclosed therein, the skilled reader has to perform further selections in the four ranges defining the density as well as each of the amounts in components A, B and C in the passage of column 2, lines 13-46 of D1 in order to arrive at the ranges defining operative claim 1. In addition, the ultra high polyethylene must be selected to be a copolymer and not a homopolymer. In the Board's view, it is in particular not possible in the present case to treat each of the five features mentioned in claim 1 of the main request individually as was done by the opposition division and the respondents because these features are to some extent interconnected (e.g. the MFI190/5 feature is related to some extent to the amounts of components A to C). Also, a series of selections in several (here 5) ranges amounts to a more severe limitation in terms of the scope of the subject-matter so defined (as compared to each single selection). In that regard the situation of the present case is not that of a single selection made in a range of the prior art but rather that of multiple selections in multiple ranges already disclosed in combination in D1. The fact that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1 do not affect the above conclusion.

1.6 In view of the above, the respondents' arguments based on the concept of selection invention did not convince.

1.7 In the case of a composition allegedly resulting from a multiple selection in the prior art, as it is the case for claim 1 of the main request in view of D1, assessing whether a subject-matter is directly and unambiguously derivable from the prior art requires, beyond the identification of the individual selections made in the composition considered in claim 1 or column 2, lines 13-46 of D1, that a careful comparison be carried out in order to assess whether or not the subject-matter being claimed was made available to the skilled person in the prior art in particular because the parameters defining the composition of claim 1 of the main request are to some extent, interconnected to one another.

1.8 The question of novelty in the case of a multiple selection of parameters in ranges disclosed in a composition of the prior art can thus not be simply answered by considering the ranges of the various parameters separately from one another, it must also be determined whether the combination of these parameters was directly and unambiguously derivable and was made available to them in the relevant document. In that regard, the mere consideration that the ranges of a multiple selection in the parameters of the prior art were as such not excluded from that prior art, as argued by the respondents, is not sufficient to establish lack of novelty as that consideration falls short of showing that the combination of the selected ranges was directly and unambiguously derivable from the prior art.

1.9 The question that the Board had to answer was thus whether from the broader disclosure of generic compositions in column 2, lines 13-46 (or claim 1), the skilled person would have, in consideration of the whole of D1 and in particular of its examples, directly and unambiguously derived a composition that fell under the scope of claim 1 of the main request. It was not contested to that effect that any of examples 1 to 4 of D1 could be seen as being relevant to answer that question.

[...]

1.17 It can thus not be concluded from the description of D1 and/or from its examples that polyethylene compositions having a density, amounts in components A, B and C as defined in operative claim 1 and an MFI190/5 in the range of 1.2-2.1 g/10 min were at all prominent in D1 to such an extent that such compositions could be seen as being directly and unambiguously disclosed in that document. In the Board's view, the respondents' objection amounts to create a novel combination of features by cherry-picking within the disclosure of D1 but which combination is not directly and unambiguously derivable from D1.

1.18 The respondents further argued that the skilled person would have seriously contemplated preparing a composition as defined in said claim 1. However, for the same reasons as indicated in above section 1.17, in the absence of a direct and unambiguous disclosure in D1 of the combination of features defined in operative claim 1, it cannot be concluded that it was shown that D1 provides a teaching or a good reason for the skilled person to prepare specifically such a composition. In particular, all the arguments submitted by the respondents in that respect involving the examples of D1 amount to artificially modify the disclosure of D1 in order to (possibly) arrive at the subject-matter according to claim 1 of the main request, whereby D1 provides no indication in that sense (see in particular the above arguments regarding the modification of the process conditions used in example 3 of D1 in order to achieve the desire MFI190/5 feature). Also, no evidence was provided that in doing so, the other features of claim 1 of the main request would still be satisfied. For these reasons, the respondents' objection did not convince.

1.19 It follows that the subject-matter of claim 1 of the main request must be seen as being novel over D1.

T 1581/12 - Only limits, thus disclosed

Key points

• The pending claim is based on two SEQ ID NOs from lists, and an amino acid length taken from a list of lengths. Does this involve added subject-matter under the two lists principle?
• The Board finds it does not. " The case law referred to by appellant II is exclusively concerned with a combination of specific members from two, fully independent lists. []  However, the present situation, with a list with amino acid sequences and a list with fragment lengths, is different. " "The disclosure of an amino acid sequence, although inherently, makes available all possible fragments of this sequence, []. [] The board does not see that the list of fragment lengths is actually independent from the list of amino acid sequences disclosed in the parent application. The combination of the value "20 or more consecutive amino acids" with the amino acid sequences SEQ ID NOs 4, 6, therefore only limits the original disclosure in the parent application. This limitation does not provide any new information and does not create new subject-matter." 

EPO T 1581/12 - link

6. With reference to the case law of the Boards of Appeal concerning a selection from two lists, appellant II has argued that there is no basis in the parent application for a combination of the sequences SEQ ID NO 4, 6 and a length of "20 or more consecutive amino acids" for fragments derived from these amino acid sequences and comprising an epitope (cf. point XI supra).

[Argument of appellant II: (point XI: )In the parent application, sequences SEQ ID NO 4, 6 were disclosed as members of a list of several hundreds of sequences. Likewise, the fragment length indicated in claim 1 was disclosed in the parent application within a list of a plethora of lengths to be selected "depending on the particular sequence". Nothing in the parent application could be seen as a basis for singling out the combination of claim 1. Claim 1 required a further selection of those fragments having a functional feature (epitope; accessible to the immune system). All this was not in line with the case law established by the Boards of Appeal with regard to the selection of combinations from two or more lists (see, inter alia, T 583/09 and T 2134/10, supra). Indeed, this was the reason given in T 583/09 (supra) for not allowing a combination of a specific SEQ ID NO with a fragment length, independently whether or not the fragment was characterized by a functional feature. In the present case the question whether the list of SEQ ID NOs and the list of fragment lengths were independent was irrelevant because the combination present in claim 1 resulted from a selection that was neither disclosed nor derivable from the parent application.] 

7. The case law referred to by appellant II is exclusively concerned with a combination of specific members from two, fully independent lists. In these decisions the competent boards come to the conclusion that, in the absence of a clear pointer to such a combination, it is not possible to associate one member of one list with another member of the other list. Such combination is considered to create new subject-matter. However, the present situation, with a list with amino acid sequences and a list with fragment lengths, is different. The disclosure of an amino acid sequence, although inherently, makes available all possible fragments of this sequence, starting from the shortest peptide with only two consecutive residues up to a peptide having the full-length of the amino acid sequence minus one residue. As stated by appellant I (cf. point X supra), the longer fragments always comprise all shorter fragments, and the full-length sequence comprises all possible fragments. Indeed, the values of the fragment length disclosed in the parent application would be understood by a skilled person to apply to each and every member of the list of disclosed amino acid sequences (SEQ ID NOs), wherein the upper length of these fragments varies "depending on the particular sequence" (cf. page 6, first full paragraph of the parent application). The board does not see that the list of fragment lengths is actually independent from the list of amino acid sequences disclosed in the parent application. The combination of the value "20 or more consecutive amino acids" with the amino acid sequences SEQ ID NOs 4, 6, therefore only limits the orignal disclosure in the parent application. This limitation does not provide any new information and does not create new subject-matter.

8. Likewise, the requirement that the claimed fragments comprise an epitope does not create new subject-matter but also amounts to a limitation concerning the preferred fragments disclosed in the parent application (cf. page 6, first full paragraph, last sentence of the parent application). Indeed, the term "epitope" is understood in the here relevant technical field to define the ability of a peptide, polypeptide or protein to raise antibodies. There is no requirement in the claims that these epitopes have to be protective, neutralizing or that they must have any other property. It is also known in the art that peptides of 8-10 residues may already comprise a linear epitope and that even shorter peptides, when associated with appropriate carrier proteins (haptens), may also have this ability. Therefore, fragments of "20 or more consecutive amino acids from SEQ ID NO 4 and 6" may certainly comprise an epitope and no additional selection is required which would result in the combination of subject-matter not disclosed in the parent application.

9. Contrary to the present case, the protein fragments claimed in the case underlying the decision T 583/09 were always defined by a functional feature ("wherein the fragment has the ability to: i) bind to hyaluronic acid; or ii) bind to extracellular matrix") (cf. T 583/09, supra, page 3, lines 1-4 and page 10, point 4 of the Reasons). In that case this board, in a different composition, considered that there was no disclosure in the application as filed linking fragments of each one of the disclosed lengths with said functional feature. In the present case, no such functional feature is required for the claimed fragments and, therefore, the situations underlying both cases are different.

10. If at all, the present case seems to have some similarity to the case underlying decision T 2134/10 (supra). In that case this board, in a different composition, acknowledged a basis in the application as filed for a combination of a specific amino acid sequence with a particular fragment length, wherein the fragments also comprised an antigenic epitope. This combination was considered not to be a combination of features belonging to different lists. A similar decision was taken for a combination of a specific amino acid sequence with a particular degree of identity. The board considered such a combination to be only "a limitation ... among all the degrees specified" (cf. T 2134/10, supra, page 13, point 11 of the Reasons).

11. Thus, the main request fulfils the requirements of Article 76(1) EPC.

T 2247/11 - Selection from two lists

EPO T 2247/11

For the decision, click here.

Key points

• The issue involves a whether a claim directed to (essentially) feature B + one or more of A, C, and D (each being lists) has basis in a claim specifying one or more of A, B, C and D. Hence, does the application provide basis for singling out B?
• The Board looks what is actually aimed for with the method of the present invention, and notes that the examples only demonstrate B + (particular types of) A. Hence, claim 1 has no basis since it also covers B+C and B+D. The auxiliary request for B+A in contrast has basis. 
• The present case is a good example how the assessment of Art. 123(2) can be not overly formalistic but can be based on the actual technical teaching of the patent. 

Reasons for the Decision

1. The appeal is admissible.

2. The invention concerns a dual-energy X-ray absorptiometry method and device for obtaining, firstly, a three-dimensional representation of the bone mineral density (BMD) of the osseous body (page 1, lines 10 to 28; page 2, lines 5 to 12), and for determining, in addition, the value of a "composite index" using the digitised radiological data and a three-dimensional model of the examined bone (page 2, lines 19 to 31). This composite index allows the evaluation of fracture risks (page 2, lines 2 to 5 and 34 to 38).