EP 3 235 916 B1 relates to a casting alloy based on aluminium, magnesium and iron, in particular for use in structural components of vehicles.
Brief outline of the case
Claim 1 of the patent as granted and of AR1 was lacking N. The patent was maintained according AR2.
The opponent appealed this decision.
The board revoked the patent as AR2 was infringing Art 123(2).
The opponent’s point of view
There is no generic disclosure in the application as originally filed for the combination of the narrower ranges of iron with narrower ranges of magnesium or the other elements, as well as the restriction to die casting. This confronts the skilled person with new technical information.
The application as originally filed discloses four embodiments. The skilled person could not infer from the application as originally filed that alloy variant C was to be the specific pointer for the claimed areas.
The alloy elements of alloy variant C lie both within broader originally disclosed ranges and within narrower originally disclosed ranges. The fact that the claimed range of all things should be relevant constitutes new technical information for the skilled person.
The proprietor’s point of view
All disclosed ranges and also the claimed ranges, which were composed of the end points of the disclosed ranges, were convergent.
Alloy variant C fell within all these ranges and could be used as a pointer towards the limitation.
As the OD correctly held, the mandatory alloying elements could be considered in isolation from the optional alloying elements.
Moreover, the restricted ranges were not associated with any undisclosed technical contribution.
herefore, all requirements of T 1621/16 were fulfilled.
The board in the more recent decision T 1261/21 was also of the opinion that converging lists should not be treated in the same way as non-converging lists.
The board’s decision
The application as originally filed discloses only convergent ranges for the modified alloying constituents. The claimed ranges for iron and magnesium are not disclosed as such in the application as originally filed, but fit into the series of convergent ranges.
The assessment whether the claim infringes Art 123(2) must be made on a case-by-case basis. An overly formalistic application of the concept of multiple selection from lists of alternatives must also be avoided.
Furthermore, this board, in agreement with T 1937/17 and T 1261/21, is of the opinion that the first criterion of point 2) of the headnote of T 1621/16, i.e. “the subject-matter resulting from the multiple selection is not associated with an undisclosed technical contribution”, is not to be used to examine the present multiple selection for the requirements of Art 123(2).
The board also agrees with the view set out in Reasons 4.2.9 of T 1261/21 that the mere fact that the content of disputed alloying elements is described in the original application in the form of lists of converging ranges does not, however, give the proprietor carte blanche to freely combine ranges selected from a first list with ranges selected from a second list.
Rather, there must be an indication of the claimed combination of areas.
The board was of the opinion that in the present case the mere formal fact that one of the four examples originally disclosed as being in accordance with the invention falls within the range now claimed is not sufficient to justify the amendments to the range limits of the four disputed alloying elements.
In particular, when one considers the disclosure of the limits of the disputed alloying elements, one immediately concludes that the amendments have no basis in the application as originally filed.
The present combination of features thus confronts the skilled person with new technical information.
The view of the proprietor and of the OD that the optional alloy components did not change the “technical character” of the alloy and could therefore be amended in isolation is not compatible with the gold standard as defined in G 2/10.
To the extent that a technical contribution is meant by this, it plays no role in the examination of the requirements of multiple selection under Art 123(2).
It is therefore not possible to distinguish alloying elements which make a technical contribution from alloying elements which do not make a technical contribution in the examination under Art 123(2).
Furthermore, silicon and zinc are alloy components that do have an influence on the alloy. According to the original description, a silicon content of 0.2 wt.% should not be exceeded in order to avoid material embrittlement. The reduction of zinc from 10 wt.% to 0.5 wt.% means that higher proof stresses may not be achievable.
In the opinion of the board, the subject-matter of claim 1 is not limited to a three-component system according to alloy variant C.
It is also inconclusive how alloy variant C, in the light of the description, can provide a pointer to each of the magnesium, silicon and zinc ranges.
The alloy variant C, which is intended to serve as a pointer towards the claimed alloy, has a silicon content of 0.04 wt.%, whereas claim 1 of AR 2 still allows a content of up to 0.4 wt.%.
For example, it is not clear why the claimed proportion of silicon should be reduced from 0.8 wt.% to 0.4 wt.%, so that material embrittlement must still be expected and at the same time the upper limit of zinc should be reduced from 10 wt.% to 0.5 wt.%, so that higher strengths may no longer be achieved, while the lower limit for the content of strength-enhancing magnesium is to be raised slightly from 0.01 % to 2 wt.%, but the upper limit is also to be significantly reduced from 9 % to 5 wt.%.
A reference to the combination of the lower limit for magnesium (2.0 wt.%) with the maximum silicon content (0.4 wt.%) and the maximum zinc content (0.5 wt.%) is not disclosed in the original application.
Comments
A key message of the present decision is that a technical contribution plays no role in the examination of the requirements of multiple selection under Art 123(2). What matters when looking at Art 123(2) is what is “directly and unambiguously derivable” has prima facie nothing to do with technical contribution.
For the same token, when deciding on the novelty of a selection within a range, the notion of “purposive selection” previously used to determine novelty has now to be considered under IS, cf. GL G-VII, 12.
A further conclusion to be taken is that, even if the claimed composition falls within a disclosed example, it does not mean that the specifically claimed ranges were originally disclosed.
In any case, it appears quite daring, as the proprietor and the OD did, to allege in case of alloys that, for instance silicon and zinc, are alloy components that do not have an influence on the alloy. Optional alloy components may clearly change the “technical character” of the alloy.
On the procedure
It is surprising that the N destroying document D27=EP 1 698 710, published as WO 2005/061744 (CN) entered the regional phase, but was not found in the original search, which did however mention three documents of category X. D27 is classified in the search files in which the search was apparently carried out.
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