Patent EP 3 384 061 relates to an Al-Li alloy having improved mechanical strength and improved toughness.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
In this blog we will concentrate on N and the criterion of “seriously contemplating”.
The opponent’s point of view
The subject matter of claim 1 lacks N over D10. Some of the claimed alloys are already disclosed in D10.
The skilled person would seriously contemplate working in the area of overlap of D10 with claim 1 as there are no reasons to deter him from doing so cf. see T 26/85, headnote, .
The board’s decision
Starting from D10 in order to arrive at the alloy of claim 1, the skilled person must make several choices from the specific ranges and values disclosed in D10, which is not considered to be a direct and unambiguous disclosure.
The combination of different limit values from different ranges of values is not considered to be disclosed. The board referred to T 900/18, Reasons 4.1 citing T 1634/13, Reasons 3.2.
Furthermore, the ranges of values must not be compared separately but together. The board referred to T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1.
The test to be applied in assessing the novelty of ranges of value is a direct and unambiguous disclosure, cf. T 1688/20, Reasons 3.4 and 3.3.1 citing G 1/03 and G 2/10.
The concept of “seriously contemplating” cited by the opponent was first described in decision T 26/85. Reasons 9 and repeated in decision T 666/89, Reasons 7 and 8 and used in many other decisions concerning overlapping ranges, cf. Case Law of the Boards of Appeal, 10th edition, 2022, I.C.6.3.2. In T 666/89, the Board held that the concept of “seriously contemplating” was a concept of novelty.
However, in the meantime it is well established that direct and unambiguous disclosure is the indisputable criterion for assessing novelty.
The board was of the opinion that the concept of “seriously contemplating” implies that the skilled person must assess whether the technical teaching of the prior document is to be applied within the common range of values, see T 26/85, Reasons 9 and T 666/89, Reasons 7 which is, in the opinion of the present board, directly related to the effect sought.
That is why the concept of “seriously contemplating” is difficult to reconcile with the overriding criterion of direct and unambiguous disclosure in the case of multiple ranges of value.
It should also be noted that in T 26/85, the board concluded that novelty was given because the state of the art clearly deterred the person skilled in the art from working within the claimed range of values.
In the present case, even if the “seriously contemplating” criterion were accepted, it would be noted that all the alloys according to the invention of D10 given as examples have concentrations of Mg > 0.7 and Li > 1 in % by weight. It seems unlikely that a person skilled in the art would then seriously contemplate working at lower concentrations..
The subject matter of claim 1 and claims 2 to 15, incorporating directly or indirectly the subject matter of claim 1, are therefore new.
Comments
As the board, are not bound by the Guidelines, it is understandable that the opponent did not refer to them.
Although the board did not say so, the present decision seems to contradict the Guidelines G-VI, 7 and G-VII, 12, when it comes to the notion of “seriously contemplating”.
G-VI, 7
In G-VI, 7, it is stated that when selecting a sub-range from a broader numerical range of the prior art is considered novel if both of two criteria are satisfied (small, sufficiently away from the end values or any value disclosed within the range), whereby a possible effect within the range has been deleted when it comes to N.
In this context, the guidelines say the following: 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. For this reason, it may not be sufficient to exclude specific novelty-destroying values known from the prior-art range to establish novelty.
The Guidelines add that “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”.
The Guidelines add that “In the case of multiple selections identified, the situation becomes more complex to assess. Depending on the type of the selections, this generally leads to one three possible scenarios.”
- The first one “amounts to a selection from two or more lists of a certain length”.
- The second one states that “the identified selections lie in the selection of multiple sub-ranges from broader numerical ranges”.
- The third one states that “the identified selections lie in a combination of selections from lists and sub-ranges”.
G-VII, 12
In G-VII, 12, it is specified “that the criterion of “seriously contemplating” mentioned in connection with the test for novelty of overlapping ranges must not be confused with the assessment of inventive step.
For inventive step, it has to be considered whether the skilled person would have made the selection or would have chosen the overlapping range in the expectation of some improvement or advantage. If the answer is negative, then the claimed matter involves an inventive step.
The unexpected technical effect must apply to the entire range as claimed.
If it occurs in only part of the claimed range, the claimed subject-matter does not solve the specific problem to which the effect relates, but only the more general problem of obtaining, for example, “a further product X” or “a further process Y” (see T 939/92)”.
The different view of the present board
For the present board, the concept of “seriously contemplating” is difficult to reconcile with the overriding criterion of direct and unambiguous disclosure in the case of multiple ranges of value.
The present board wants manifestly to disregard the line of case law based on T 26/85 and T 666/89, as in its opinion, those decisions relate to an effect.
The present decision can, for the time being, be considered as a “one-off”. Should more decisions like this one come, should we be prepared to an amendment of the Guidelines as it happened when the third criterion “the effect” was deleted from the Guidelines G-VII, 7?
https://www.epo.org/fr/boards-of-appeal/decisions/t220989fu1
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