EP 3 400 316 B1 relates to new 6xxx aluminium alloys and a method of producing the same. 6xxx aluminium alloys are aluminium alloys having silicon and magnesium to produce the precipitate magnesium silicide (Mg2Si).
Brief outline of the case
The OD decided that the new MR=MRn was lacking N over a PPU from opponent 3. The same applied to AR1.
The patent was maintained according to AR2.
Proprietor and opponent 1 appealed this decision.
The board held that claim 1 of the MRn lacked IS over D1/D1t=JP 2007-009262 A.
The board confirmed the maintenance according to AR2.
The opponents’ point of view
D1/D1t=JP 2007-009262 A discloses an alloy C1 falling within the scope of claim 1 except that alloy C1 contains 1.00 wt.% Si. The opponents mainly argued that the lower endpoint of the claimed range, 1.03 wt.%, could not establish N since it was not far removed from the example. Reference was made to decision T 673/12.
T 538/04 was also cited by opponent 1
The board’s decision
No lack of N
The concept that a claimed sub-range must be “narrow” compared to the known range and “sufficiently far removed” from any examples disclosed in the prior art originates from decisions T 198/84, Reasons 5, which is summarised briefly in T 279/89, Reasons 4.1. It has been accepted as a kind of novelty test for selection inventions.
The present board agreed with T 1688/20, Reasons 3.2.1, that this concept is not in agreement with direct and unambiguous disclosure, which is the uncontested criterion established later on in the case law for evaluating novelty, cf. the “gold standard” in G 2/10.
As explained in T 1688/20, the relative terms “narrow” and “sufficiently far removed” do not provide objective, solid and consistent criteria for establishing the novelty of a selected sub-range.
Therefore, these terms are dependent on the case and context and involve considerations linked to the technical effect of the range.
Consequently, the concept cannot be reconciled with direct and unambiguous disclosure. It is instead considered to be relevant for inventive step.
In fact, neither T 198/84 nor T 279/89 even mention direct and unambiguous disclosure.
Furthermore, T 198/84 and T 279/89 did not relate to multiple ranges as the case in hand but to a singular range.
In the case in hand, the ranges cannot be regarded individually but only in combination, see T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1). In addition, an example is an embodiment that cannot be combined with the description, see T 210/05, Reasons 2.3. T 538/04 cited by opponent 1 also followed the criteria established in T 198/84 and T 279/89 but did not deal with direct disclosure.
For multiple ranges, the concept of “seriously contemplating” as described in T 26/85 is not in line with direct and unambiguous disclosure. Instead, when multiple ranges are involved, “seriously contemplating” is linked to the desired effect, which implies considerations known for inventive step, see T 989/22, Reasons 1.
Decision T 673/12 also relied on the criteria established in T 198/84 and T 279/89 but did not deal with direct and unambiguous disclosure.
To conclude, the alloy C1 of D1/D1t does not directly and unambiguously disclose an alloy according to claim 1.
D1/D1t, cf. paragraphs [0012] to [0017] of D1, discloses the following preferred ranges in wt.%: Si 0.4 to 1.1, Mg 0.4 to 0.8, Cu 0.02 to 0.2, Fe 0.2 to 0.3, Mn 0.02 to 0.15, Cr 0.02 to 0.15, Ti <= 0.03.
The alloy claimed can only be arrived at by choosing several endpoints, in bold, from the disclosure of D1/D1t.
This cannot be considered direct and unambiguous disclosure.
Lack of IS
D1/D1t and in particular alloy C1 was considered a suitable starting point for IS.
The problem to be solved by the patent is to provide an alloy having an improved combination of strength, formability and/or corrosion resistance, cf.paragraph [0002] of the patent.
The patent proposes to solve the problem by an alloy according to claim 1 characterised in that the alloy contains 1.03 to 1.40 wt.% Si.
For the board, it was not credible that the problem is successfully solved since D1/D1t also relates to an improved combination of properties. There is no evidence that a small change in Si compared to alloy C1 of D1/D1t would lead to an improved combination of properties. Such an improvement is also not apparent from the data in the patent.
The solution to this not very ambitious problem is obvious.
If the problem to be solved is the provision of an alternative, the presence of an incentive towards the solution is not mandatory, cf. T 1102/00, Reasons 14.
Starting from alloy C1, the skilled person has many options to vary the components, including Si and Mg in view of the general teaching given in claims 1 and 2 of D1/D1t.
The skilled person understands that working in the preferred ranges of Si and Mg already implies the right balance. When working within these ranges, some of the possible alloys will not fall within the scope of the claim, but many others will. However, a mere arbitrary choice made from the possible solutions cannot be regarded as involving an IS.
Comments
Like for the “three-point test”, cf. Guidelines H-V, 3.1, the boards can be held to have launched an attack on the notions “narrow” and “sufficiently far removed” when it comes to selection inventions, cf. Guidelines G-VI, 7(i, b).
It can however be agreed with the present board that ranges should not be regarded individually but only in combination and that in the present case, there was a multiple selection of end points. Novelty was thus given.
The criteria “narrow” and “sufficiently far removed” should thus only be applied for single ranges.
As long as the Guidelines are not amended in this respect, those criteria can still be applied for single ranges before first instance divisions, but cautiously before the boards. Will the Guidelines be adapted?
On the procedure
The OD held claim 1 of the MRn lacking N over a PPU from opponent 3. The same applied to AR1.
D1/D1t=JP 2007-009262 A is a document which was mentioned neither in the ISR/KR nor in the SESR.
The patent is classified in C22C 21/02, B22D 11/00
The SES was carried out in C 22C, C 22F, B22D.
D1/D1t is classified in B21B1/22, B21B3/00, C22C21/02.
The KR search was carried out in C22C 21/02, C22F 1/05, C22C21/16, C22F 1/04, C22C 1/04, C22C 1/08, C22C 21/08, B22D 11/00.
It is thus rather surprising that neither the KPO nor the EPO did not find D1/D1t.
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