1.6.1 Combination of features pertaining to separate embodiments; application as filed is not a "reservoir"
The content of an application must not be considered to be a reservoir from which features pertaining to separate embodiments of the application could be combined in order to artificially create a particular embodiment (T 296/96, T 686/99, T 1206/01; T 3/06, T 1206/07, T 1041/07, T 1239/08, T 1648/11, T 1799/12, T 1853/13, T 1775/14). In the absence of any pointer to that particular combination, this combined selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed (T 686/99, T 1853/13, T 1252/13). The fact that features in question have been mentioned in the description as "preferred" may act as a pointer (T 68/99, T 1869/11, T 394/11, T 1799/12; for counter-examples, see however T 2118/08 and T 1306/12). In T 1728/16 the fact that two of the features introduced in the claim at issue were disclosed as being preferred was seen as a pointer to their combination with the third amendment which introduced generally disclosed percentage ranges.
In T 524/17 appellant 2 had argued that the features of claim 1 were picked from different embodiments. The board however pointed out that in the application at issue the expression "in one embodiment" referred to general teachings of preferred features which were combinable without going beyond the content of the application as filed. See however also T 1442/16.
In T 3142/19 the examining division considered that in the absence of a positive hint to a combination of features that are otherwise presented as optional, any such combination was new technical information. In the board's view however, this argument was valid only in its positive form: if the description indicated that some combination was desirable, or necessary to solve a technical problem, then a clear pointer to disclosure of the combination was provided. If not, however, it did not automatically mean that the skilled person could not derive the combination from the application as filed. But an excessive number of optional features could have an impact on the assessment of compliance with Art. 123(2) EPC, in that, in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this was indeed the case depended on the specifics of the case, e.g. on the level of complexity caused by the optional features.
For examples where the above principles were applied in the case of divisional applications in respect of the earlier application as filed, see T 2118/08, T 961/09, T 1581/12; see also the reference in chapter II.E.1.1. to G 1/05 date: 2007-06-28 (OJ 2008, 271).
- T 1133/21
Catchword:
The mere fact that features are described in the application as filed in terms of lists of more or less converging alternatives does not give the proprietor a "carte blanche" for freely combining features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment will only be allowable under Article 123(2) EPC if it complies with the "gold standard" defined in decision G 2/10 (reasons 2.18 of the present decision).
- T 1809/20
Abstract
In T 1809/20 appellants 1 and 2 (opponents) objected that claim 1 of the main request contained subject-matter extending beyond the content of the application as filed.
Claim 1 of the main request related to a method for producing a certain purified protein. The board agreed that, as submitted by the appellants, claim 1 of the main request comprised multiple selections regarding the type of protein to be purified (antibody, antibody fragment, or Fc fusion protein), the concentration of arginine or arginine derivative in the wash solution (in a range of 0.05-0.85 M), the concentration of the non-buffering salt in the wash solution (in a range of 0.1-2.0 M), and the pH of the wash solution (being greater than 8.0).
The board explained that it is established case law that the content of the application as filed must not be considered a reservoir from which features pertaining to separate embodiments are taken and combined to artificially create a particular embodiment without the presence of a pointer to combine the features of the separate embodiments.
In the case in hand, nothing in the application as filed pointed to the specific combination of selections made in claim 1 of the main request. Firstly, two selections were needed to arrive at the protein to be purified and nothing in the application as filed pointed to any preference for combining these selections. Secondly, the chosen range of the concentration of arginine or arginine derivative in the wash solution was only at an intermediate level of preference in the application as filed, while the most preferred range was narrower. Thirdly, the selected range of the concentration of the non-buffering salt in the wash solution represented the selection of the broadest range out of the list of ranges in the application as filed. Finally, the chosen pH of the wash solution was the broadest range of the pH disclosed in a passage of the description and it did not constitute a preferred embodiment.
Regarding the examples, the board explained that each of the concentration values of arginine and arginine-HCl in the wash solution in the examples of the application as filed fell within the range selected in claim 1 of the main request. However, the board observed that each of these concentration values also fell within the most preferred range disclosed in the application as filed. Moreover, each of the concentration values of the non-buffering salt (sodium chloride) in the wash solution of the examples in the application as filed fell within the range selected in claim 1 of the main request. However, each of these concentration values also fell within one of the other two ranges disclosed in the description of the application as filed. Therefore, the examples in the application as filed did not point to the combination of features resulting from the selections of at least the concentration of arginine or arginine derivative and the concentration of the non-buffering salt in the wash solution.
In view of the above, the board concluded that the combination of the features relating to the specification of the protein to be purified, the concentration of arginine or arginine derivative in the wash solution, the concentration of the non-buffering salt in the wash solution and the pH of the wash solution was based on multiple selections at different levels of preference without any pointer being present in the application as filed for these selections. The skilled person reading the application as filed would thus find no guidance as to which of the preferred features they had to start with and which of the other features were then to be combined.
It followed that claim 1 of the main request did not meet the requirements of Art. 123(2) EPC.
- 2023 compilation “Abstracts of decisions”