7. 8. Selection inventions

Selection inventions deal with the selection of individual elements, subsets, or sub-ranges, from a more generic disclosure in the prior art, see also G‑VI, 5. which have not been explicitly mentioned, within or overlapping with a known set or range.

For determining novelty, it has to be decided which subject-matter has been made available to the public by a prior-art disclosure and thus forms part of the state of the art. In this context, it is not only examples, but the whole content of the prior-art document which has to be taken into consideration. Matter that is "hidden" in a prior-art document, in the sense of being reconditely submerged rather than deliberately concealed, is not considered to have been made available to the public (see T 666/89).

Assessment of the novelty of selection inventions is dependent on the number of selections identified compared with the prior art, leading to one of the following two scenarios:

(i)One selection identified

In the case of one single selection, the following scenarios may arise:

(a)The selection is a selection of individual elements or of subsets of a larger set.

A selection of one or more elements from a single list of specifically disclosed elements does not confer novelty.

(b)The selection is a selection of a sub-range selected from a broader numerical range disclosed in the prior art. Whether the selection of a sub-range can be considered novel depends on the specific circumstances:

A claimed selection of a sub-range is not considered novel if any specific value disclosed in the prior art falls within the claimed range, irrespective of whether the value stems from a concrete example or is disclosed as the endpoint of a range.

(i)In determining the novelty of a selection, it has to be decided whether the selected elements are disclosed in an individualised (concrete) form in the prior art. A selection from a single list of specifically disclosed elements does not confer novelty. However, if a selection from two or more lists of a certain length has to be made in order to arrive at a specific combination of features then the resulting combination of features, not specifically disclosed in the prior art, confers novelty (the "two-lists principle"). Examples of such selections from two or more lists are the selection of:

(a)individual chemical compounds from a known generic formula whereby the compound selected results from the selection of specific substituents from two or more "lists" of substituents given in the known generic formula. The same applies to specific mixtures resulting from the selection of individual components from lists of components making up the prior art mixture;

(b)starting materials for the manufacture of a final product;

(c)sub-ranges of several parameters from corresponding known ranges.

(ii) A sub-range selected from a broader numerical range of the prior art is considered novel if both of the following two criteria are satisfied (see T 261/15):

– the selected sub-range is narrow compared to the known range;

– the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art.

The meaning of "narrow" and "sufficiently far removed" has to be decided on a case by case basis.

In this context, it must be assessed whether the skilled person, in the light of the teaching of the prior art, would seriously contemplate working in the selected sub-range. If it can be fairly assumed that the skilled person would do so, the selected sub-range is not novel. Novelty is also destroyed by explicitly mentioned intermediate values or a specific example of the prior art in the selected sub-range. Further, it is not For this reason, it may not be sufficient to exclude specific novelty-destroying values known from the prior-art range to establish novelty.

The concept of "seriously contemplating" is fundamentally different from the concept used for assessing inventive step, namely whether the skilled person "would have tried, with reasonable expectation of success", to bridge the technical gap between a particular piece of prior art and a claim whose inventiveness is in question (see G‑VII, 5.3), because in order to establish anticipation, there cannot be such a gap.

For example, claim 1 defines a range of 3.0-6.0 wt% of a surfactant in a liquid detergent composition. D1 discloses a liquid detergent composition comprising a surfactant in a general range of 1-30 wt% and one concrete example of 25 wt%. The selection of the claimed sub-range will be novel since the claimed range is narrow compared to the prior-art range but also far removed from the concrete example. However, if a concrete example from D1 discloses a value of 4.5 wt% of surfactant or if a more preferred range of 5-20 wt% is disclosed in D1, then D1 takes away novelty of claim 1. If D1 discloses an example with 2.8 wt% surfactant instead, it has to be assessed if the value 2.8 wt% is sufficiently far removed from the claimed range of 3.0-6.0 wt%. This is done by assessing whether the skilled person would seriously contemplate working in the claimed range.

For example, in In T 1571/15, regarding an alloy defined by its composition, it was held that the skilled person would not seriously contemplate working in the selected sub-range, despite it falling in the centre region of a range disclosed in the prior art document, since said prior art document contained a pointer to another region.

The same principle applies to Markush formulae. For example, a claim may define a chemical compound with a substituent being an alkyl chain with 5 to 10 carbon atoms. This claim is not new in view of a prior-art chemical compound having 8 carbon atoms. For a prior-art document disclosing an alkyl chain with an unspecified length and one concrete compound having 11 carbon atoms, it has to be assessed if the claimed range is sufficiently far removed from the known example.

(ii)Multiple selections identified

In the case of multiple selections identified, the situation becomes more complex to assess. Depending on the type of the selections, this generally leads to one the following three scenarios:

(a)The identified selections lie in the selection of individual elements or in the selection of subsets of multiple larger sets. This amounts to a selection from two or more lists of a certain length. A list is a description of equal, i.e. non-convergent, alternatives.

A list is usually considered to have a "certain length" if it has a length of at least two or three elements. Whether a list has the required length has to be decided on a case-by-case basis. If a selection from two or more lists of a certain length has to be made to arrive at a specific combination of features, then the resulting combination of features, not specifically disclosed in the prior art, confers novelty (the "two-list principle"). On the other hand, novelty is not conferred if there is a pointer in the prior art to the specific combination. Similarly, the mere reduction in length of lists does not generally confer novelty when the length of the lists is not reduced below the required length.

For example, a claim may define the use of sodium chloride (NaCl) as catalyst in a chemical reaction. If D1 describes the use of an alkaline metal halide as catalyst, the alkaline metal being selected from Li, Na, K and Rb and the halide being selected from F, Cl, Br and I, a selection from two lists needs to be made to arrive at the specific combination of the claim. In the absence of any further information in D1, the claim is new over D1.

The same principle is also applicable to chemical compounds described by a Markush formula. This includes individual chemical compounds from a known generic formula whereby the compound selected results from the selection of specific substituents from two or more lists of substituents given in the known generic formula. The same applies to specific mixtures resulting from the selection of individual components from lists of components making up the prior-art mixture. Similar considerations also apply to starting materials for the manufacture of a final product.

(b)The identified selections lie in the selection of multiple sub-ranges from broader numerical ranges. In this context a sub-range is a range that either lies completely inside the prior-art range or overlaps with an endpoint of the prior-art range, thereby creating a range of overlap with the prior-art range. These two scenarios are illustrated below, where the area of overlap is marked as "xxxx".

The two-list principle mentioned above applies in the same way here. In contrast to the situation involving a single selection as described in (i)(b), it is not sufficient that, for each claimed range taken individually, the prior art discloses a specific value or a range endpoint falling within said range to anticipate the subject-matter of the claim. That is, the selection of multiple sub-ranges will, in the absence of any pointers to the combination of the specific sub-ranges, be novel over the broader ranges. If a concrete example falls slightly outside the claimed ranges, it has to be assessed if the skilled person would seriously contemplate working inside all of the claimed ranges.

If the selections of the multiple sub-ranges concern elements that interact with each other, which is generally the case for the constituents of alloys and compositions, the different selections must not be considered in isolation but in combination (T 261/15, Reasons 2.3.1).

For example, claim 1 defines an alloy comprising 5-8 wt% Mg and 12-16 wt% Zn and other metals. D1 discloses a similar alloy but defines the ranges as 7-20 wt% Mg and 14-22 wt% Zn and specifies one concrete example of an alloy having 16 wt% Mg and 21 wt% Zn. In the absence of any pointers or further information in D1 there is no reason why the skilled person would seriously contemplate a working example of an alloy falling within both claimed ranges.

(c)The identified selections lie in a combination of selections from lists and sub-ranges. In this case, both principles described above under (ii)(a) and (ii)(b) need to be applied. This situation occurs frequently in the field of chemistry when a compound is described by a Markush formula. For example, one difference over the prior art may be the selection of a specific substituent out of a list of substituents and another difference may be in the selection of a numerical sub-range out of a broader numerical range of repeating units disclosed in the prior art.

(iii)In the case of overlapping numerical ranges between claimed subject-matter and the prior art, the same principles apply for the assessment of novelty as in the cases discussed in (i) and (ii) above.

Novelty is destroyed by an explicitly mentioned end-point of the known range, explicitly mentioned intermediate values or a specific example of the prior art in the overlap. As with the selection of a sub-range, it is not sufficient to exclude specific novelty-destroying values known from the prior-art range, it must also be considered whether the skilled person, in the light of the technical facts and taking into account the general knowledge in the field, would seriously contemplate applying the technical teaching of the prior-art document in the range of overlap.

(iv)These principles also apply to overlapping chemical formulae. Novelty is acknowledged if the claimed subject-matter is distinguished from the prior art in the range of overlap by a new technical teaching, see T 12/90, point 2.6 of the Reasons. There is a new technical teaching if certain technical elements are new in comparison to the prior-art disclosure. An example of a new technical element is a specifically selected chemical residue which is covered in general terms by the prior art in the overlapping area, but which is not individualised in the prior art document. If this is not the case, then it must be considered whether the skilled person would seriously contemplate working in the range of overlap and/or would accept that the area of overlap is directly and unambiguously disclosed in an implicit manner in the prior art (see for example T 536/95). If the answer is yes, then novelty is lacking.

Analogous considerations apply if the claimed chemical formula defines a sub-range of a chemical formula known from the prior art.