1.10.4 Multiple arbitrary selection

In T 1919/11 the board considered that the subject-matter of amended claim 1 of the main request (method for producing taxanes) resulted from a multiple arbitrary selection of three features (selection of one particular species and of a specific range of silver concentration and a restriction of "auxin-related growth regulator" to "auxin" for the enhancement agent). The board observed that the subject-matter of amended claim 1 related to Taxus chinensis only. In contrast, the summarising text of the parent application described the subject-matter as relating to a plurality of Taxus species. In addition, any particular mention of Taxus chinensis was followed by an endorsement that Taxus chinensis might be the best in many issues, but that the important subject-matter of the application equally was the teaching to use any member of the list of Taxus species. Some of the examples related to different Taxus species and some used Taxus chinensis as a model substance to show particular effects of the cultivation conditions. The board concluded that, on this basis, there was no direct and unambiguous disclosure that the subject-matter of the overall content of the application related to nothing else than a method using Taxus chinensis.

On unallowable multiple selection, see also above in this chapter II.E.1.6. "Combination of features pertaining to separate embodiments or lists".