b) Selection of starting substances from different lists 

According to T 12/81 (OJ 1982, 296), an end product resulting from the reaction of a specific pair of starting substances may be seen as a novel selection for patent purposes if its preparation requires using entities from two classes of starting substances given in two lists of some length. This criterion has been applied to mixtures of two substances, selected from two lists (T 401/94) and confirmed in subsequent decisions (T 211/93, T 175/86, T 806/02, T 2436/10).

In T 401/94 the board again adopted one of the criteria for selection inventions laid down in decision T 12/81 (OJ 1982, 296), namely, that if two classes of starting substances were required to prepare the end products, and examples of individual entities in each class were given in two lists of some length, the substance resulting from the reaction of a specific pair from the two lists could be regarded for patent purposes as a selection and, hence, as new. The board stated that, although T 12/81 concerned the synthesis of a chemical product, and the case in question involved the preparation of a mixture, the claimed subject-matter was defined on the basis of two chemical entities, each of which had been selected from a list of compounds. Hence the criteria defined in T 12/81 were applicable here too. By analogy, the board held that, in this case, the claimed composition had to be viewed as a selection, and therefore as novel, as it corresponded to a specific combination of constituents, each of which had been selected from a relatively long list.

In T 366/96 the board held that if, when selecting two components of a composition from two known lists of possible ingredients, a skilled person had, as soon as one component was taken from the first list, no choice in selecting the second component from the second list in view of compelling technical necessities which made the particular second component mandatory, then this could not be considered to be a "twofold" selection which could render the resulting combination novel.

In T 754/10 the board came to the conclusion that contrary to the appellant's arguments, the novelty objection was not based on an unallowable selection from different lists, namely the presence or absence of a coating layer combined with the ranges for granule size, core size, total enzyme content and percentual coating content. In fact, there were no lists at all in prior art D15, but rather ranges of values for granule and core sizes and enzyme and coating contents. The need to refer to distinct parts of D15 derived from the fact that the granules as claimed and the granules of D15 were defined by different parameters. A further argument of the appellant was that none of D15's examples fell within the scope of claim 1; in particular they did not work within the area of overlap of the enzyme-content range. Hence the skilled person would not seriously contemplate working within this area of the disclosed range, and this was also in line with the usual practice in the field, which favoured the use of less concentrated enzyme (thus lower percentual enzyme content) in e.g. powder formulations. As regards to these arguments, the board noted that novelty is to be assessed vis-à-vis the whole disclosure of a prior art document, the examples being only a part thereof: it is therefore sufficient that the general part of the description of a prior art document discloses embodiments which are novelty destroying, even if the embodiments disclosed in the examples are not. Claim 1 of the main request lacked novelty over D15.