EP 3 658 692 B1 relates to a steel strip, sheet or blank for producing a hot formed part; a hot formed part, and a method for producing a hot formed part.
Brief outline of the case
The patent was maintained according to AR2 and the opponent appealed.
The board held that claim 1 as maintained were infringing Art 123(2). The same applied to the AR timely filed. AR6-7 were not admitted under Art 13(2) RPBA.
The discussion centred on the Mn and the Nb content
The patent was thus revoked.
The proprietor’s point of view
There was a literal basis for the amended ranges for Nb and Mn in claim 2 as filed. Narrowing the claimed ranges on this basis merely limited the scope of protection, without introducing new technical information.
The proprietor relied in particular on T 1621/16 and related decisions to support its view that the amendments did not extend beyond the content of the application as filed.
The same arguments applied to AR 1-5.
The board’s decision
The claimed Mn range is formed by the lower limit of the most-preferred range and the upper limit of the general range, and the claimed Nb range is based on the lower limit of the preferred range and the upper limit of the most-preferred range.
Dependent claim 2 as filed was cited as a basis for the amendments. This claim includes a list of the essential alloying elements, all linked by “and/or”, and specifies the respective preferred and more-preferred content ranges.
The board noted that the content ranges of the various alloying elements constitute an essential feature of the claimed invention, and amending the ranges of selected elements on the basis of ranges of different degrees of preference may well present the skilled person with new technical information,
The board held that, according to T 1621/16, Reasons 1.7.3, it cannot be concluded “that amendments based on multiple selections from lists of converging alternatives necessarily meet the requirements of Art 123(2), because even when each individual selection used to amend the claim is as such regarded as a convergent restriction of the scope of protection, it needs to be assessed whether the specific combination resulting from the multiple selections is supported by the content of the application as filed”.
T 1621/16 mentions two conditions which should be met. Those conditions are:
- the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and
- the application as filed includes a pointer to the combination of features resulting from the multiple selections.
Consequently, T 1621/16 does not establish an automatism in the sense that any combination of features resulting from multiple selections would meet the requirements of Art 123(2) in cases in which each individual selection could be regarded as a convergent restriction of the scope of protection, as long as the specified two conditions were met.
That the assessment of whether the requirements of Art 123(2) are met is very case-specific has also been stressed in T 1133/21. According to T 1133/21, Reasons 2.11-2.16, the mere fact that features are described in the application as filed in terms of lists of more or less converging alternatives did not give the proprietor “carte blanche” to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed.
Any such amendment would only be allowable under Art 123(2) if it complied with the “gold standard” defined in decision G 2/10.
In the present case, each of the limitations of Mn and Nb may individually be regarded as a converging alternative in that the corresponding numerical range has been limited towards a more-preferred sub-range.
However, in the application as originally filed, the possible ranges of the other essential or optional alloying elements are discussed in the same manner as those relating to Mn and Nb, indicating ranges of different levels of preference for each, both in the indicated parts of the description and in dependent claim 2 of the application as originally filed.
For the board, the application as originally filed includes the possibility that any arbitrary one of the alloying elements, or, alternatively, any arbitrary combination of alloying elements meets the condition as to one of its respective – more or less-preferred – ranges.
There is no preference, i.e. no pointer, to focus specifically on the contents of Nb and Mn. In particular, the example does not constitute such a pointer. In fact, the only example according to the invention (Example A) illustrates that all the essential alloying elements are present in an amount within the respective most-preferred range.
On this basis, it is not directly derivable from the application as filed that the ranges of Mn and Nb should be limited, and this on the basis of different levels of preference, while the general ranges apply for the other elements.
In the circumstances of the present case, limiting specifically the amounts of Mn and Nb, and doing so on the basis of ranges of different levels of preference, while maintaining the general ranges of the other elements even though these are interdependent, thus involves a multiple arbitrary selection.
Comments
If the selection in a multiplicity of lists stays at the same level of preference (preferred, more preferred, most preferred), the corresponding specific selection does not offend Art 123(2). The level of preference is considered as a pointer towards the specific selection.
T 1133/21 was commented in the present blog.
In the present case, there was not only a selection between different levels of preference, but the selection ignored the other components of the alloys.
Claim 2 as filed with its succession of and/or features is not different from the general “rubber paragraphs“, according to which the specific embodiments shown may be combined in any way within the scope of the claims.
Neither such a “rubber paragraph” nor a succession of “and/or” in a dependent claim as filed does constitute a direct and unambiguous disclosure of combinations of embodiments or generalisations of disclosed features.
The succession of “and/or” in claim 2 was an attempt of the proprietor to justify claim 1 as , but it rightly failed. The OD should never have found claim 1 as maintained as complying with the requirements of Art 123(2). Be it only the combination of degrees of preference should have alerted the OD.
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