8. Selection inventions 

Selection inventions deal with the selection of individual elements, subsets, or sub-ranges, which have not been explicitly mentioned, within or overlapping with a larger 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).

(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 (see T 12/81). 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 and T 279/89):

(a)the selected sub-range is narrow compared to the known range; 

(b)the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range.

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 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, 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.

(iii)In the case of overlapping numerical ranges (e.g. numerical ranges, chemical formulae) of 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. 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).

As to overlapping ranges or numerical ranges of physical parameters, novelty 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 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. If it can be fairly assumed that the skilled person would do so, it must be concluded that no novelty exists. In T 1571/15, regarding an alloy defined by its composition, the skilled person would not seriously contemplate working in the area of overlap, despite it falling in the centre region of the ranges disclosed in the prior-art document, since said prior-art document contained a pointer to another region.

(iv)These principles also apply to As far as overlapping chemical formulae. are concerned, novelty 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.

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 (T 666/89).

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