1.6. Combinaison de caractéristiques qui se rapportent à des modes de réalisation distincts ou à des listes

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).

Catchword: 

Following the explicit reference in G 2/10 to the applicability of the existing jurisprudence regarding the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed (see G 2/10, section 4.5.4), the Board understands the notion of  "the remaining generic group of compounds differing from the original group only by its smaller size" versus "singling out an hitherto not specifically mentioned sub-class of compounds" and the notion of  "mere restriction of the required protection" versus "generating another invention" or "suitable to provide a technical contribution to the originally disclosed subject-matter"  as developed in the jurisprudence (see in section Case Law of the Boards of Appeal, supra, section II.E.1.6.3) not as modifications of the "gold standard" for the assessment of amendments in the form of additional or alternative criteria, but rather as considerations which may arise from the application of this standard when assessing amendments by deletion of options from multiple lists and which may affirm the result of such assessment. In particular, the observation that a deletion of options from multiple lists is an amendment suitable to provide a technical contribution to the originally disclosed subject-matter, can be used to support the assessment that this amendment is not in compliance with the "gold standard".

Résumé

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.