The present decision contains some very interesting statements on the famous three criteria fixed by T 279/89 for selection inventions. The Board comes to the conclusion that the third criterion, which conceptually is the most obscure, is not needed for a novelty assessment.
Claim 1 as granted read as follows:
1. Method for the preparation of a colloidal silicate dispersion containing silica and alumina, comprising
− dissolving a particulate mineral material containing silica and alumina in a molar ratio in the range of 2-12 in an aqueous solution, to form a solution containing nucleated re-precipitated particles from the material,
− stabilizing the so obtained solution to form a dispersion, and
− optionally adjusting the dry matter content of the dispersion.
[4.1.1] The contested patent was filed on 19 June 2001 and claims priority of 20 June 2000 […]. Prior art document D5 - filed on 20 June 2000 and published on 4 January 2001 - claims priorities of 24 June 1999 (D6) and 1 October 1999 (D7). Its content - with the exception of the one and only example on page 10, which does not benefit from any of these priority dates - thus forms part of the state of the art pursuant to A 54(3).
[4.1.2] Bearing in mind the above remark regarding the example, document D5 (claim 1) discloses a method for making a binder comprising the following steps:
− dissolving a particulate mineral material having a glassy amorphous structure in an aqueous solution, to form a solution containing nucleated reprecipitated particles from the material,
− stabilizing the so obtained solution to form a sol having the desired particle size, and optionally
− adjusting the dry matter content of the sol.
Claim 8 further discloses that the aqueous solution is acidic.
According to D5 […], the particulate mineral material can be a waste mineral wool product obtained from mineral wool production, or alternatively, a mineral wool product used as heat insulation in constructions.
According to a specific embodiment […], the sol contains predominantly silica in combination with other metal oxides stemming from the starting mineral material, such as calcium oxide, magnesium oxide, aluminium oxide, and possibly further metal oxides in smaller amounts.
[4.1.3] The opponent argued that the disclosure of a sol containing predominantly silica in combination with aluminium oxide corresponded to the implicit disclosure of a sol containing these ingredients in a molar ratio of “at least 1”. As the sol claimed did not give rise to any particular advantage over the one disclosed in document D5, the sub-range of “2 to 12” defined in claim 1 at issue was to be considered as an arbitrary choice in view of the established jurisprudence (T 12/90, T 124/87 and T 279/89).
[4.1.4] The board wants to underline that in order to conclude in favour of a lack of novelty, there must be a direct and unambiguous disclosure in a prior art document (here document D5) which inevitably leads the skilled person to something falling within the scope of what is claimed. In the present case, the sole disclosure in document D5 for the preparation of a silica-based sol containing other metal oxides is […] in the passage reading:
“According to the invention it is thus possible to provide sols containing predominantly silica in combination with other metal oxides stemming from the starting mineral material, such as calcium oxide, magnesium oxide, aluminium oxide and possibly further metal oxides in smaller amounts.”
The question whether this passage is a direct and unambiguous disclosure for a sol containing silica and alumina is - according to established jurisprudence - to be answered positively, because in order to arrive at this combination of features the skilled person has to make only one choice in the list of “other metal oxides stemming from the starting mineral material”.
As to the further question, whether said critical passage directly and unambiguously discloses a sol containing silica and alumina in a molar ratio of 2 to 12, the board notes that document D5 neither discloses explicitly a concrete value nor a range of values regarding the molar ratio between silica and any other metal oxide.
[4.1.5] As to the [opponent’s] argument that a silica to alumina molar ratio of “at least 1” was implicitly disclosed in the passage […] of D5, the board examined whether the alleged molar ratio of “at least 1” would be novelty-destroying with respect to the molar ratio of “2 to 12” defined in the subject-matter of claim 1 at issue.
According to decision T 279/89 [4.1] (see also T 198/84), a selection of a sub-range of numerical values from a broader range is to be considered as novel when:
− the selected sub-range is narrow (criterion 1);
− the selected sub-range is sufficiently far removed from the known range illustrated by means of examples (criterion 2);
− the selected area does not provide an arbitrary specimen from the prior art, i.e. is not a mere embodiment of the prior description, but another invention (purposive selection)(criterion 3).
In the present case, as regards criteria 1 and 2, the board comments as follows:
(a) the open-ended range “> 1” defined by [the opponent] is unquestionably broad in comparison to the narrow range “2 to 12” defined in claim 1 at issue;
(b) the upper (infinite) limit of the range “>1” is far away from the upper limit “12” of the range “2 to 12” defined in claim 1 at issue;
(c) the lower limit “1” of the range “>1” is well below the lower limit “2” of the range “2 to 12” claimed (in terms of percentages, a silica to alumina ratio of 1 corresponds to 50% of each component, while a ratio of 2 corresponds to 66.6/33.3 % of alumina and silica, respectively, which values are far removed from the value 50% of a silica to alumina ratio of 1).
It follows from the above comments that the selected sub-range of “2 to 12” is narrow and far removed from the range “>1”.
According to [the opponent] the sub-range of “2 to 12” was implicitly disclosed in D5. Document D5, however, does not disclose any specific value as regards the alumina and/or silica content of the prior art sol […].
[4.1.6] The question arises whether a technical effect over the sub-range is decisive for acknowledging novelty or not. In other words, is the presence of an effect only a confirmation of novelty of the sub-range, can or should said effect be ignored when assessing novelty, or is the presence of an effect mandatory for establishing a delimitation vis-à-vis the state of the art?
According to T 198/84 [7], T 666/89 [8] and T 720/96 [2.1.3], such a particular effect is neither a prerequisite for novelty nor can it as such confer novelty, its existence merely serving to confirm a finding of novelty already achieved.
In the board’s view, the question whether the so-called “third criterion” according to decision T 279/89 or T 198/84 is fulfilled or not is for the following reasons of no relevance for assessing novelty of a sub-range singled out of a larger range.
Regarding specifically the condition of novelty for patentability, the board draws the attention to the following passage in decision T 198/84 [7]:
“when examining so-called selection inventions as to novelty, […] the sub-range singled out of a larger range is new not by virtue of a newly discovered effect occurring within it, it must be new per se”,
to which principle the board fully adheres. For the board - in order to avoid any misunderstanding - the effect occurring in the sub-range should not be the decisive condition conferring novelty, because - the board following here decision T 1233/05 [4.3-4] - the presence of an effect falls back upon considerations to be taken into account in the assessment of inventive step, and since inventive step and novelty are two distinct requirements for the patentability of an invention, different criteria are to be applied for their assessment.
The consequence of this conclusion is that the examination of the presence and relevance of an effect occurring in the sub-range is to be made under A 56.
The two criteria, i.e. the narrowness of the sub-range (“the selected sub-range should be narrow”) and the sufficient distance (“the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples”) remain conditional requirements for establishing novelty of a sub-range of numerical values from a broader range. The meaning of the expressions “narrow” and “sufficiently far removed” has to be decided on a case-by-case basis.
[4.1.7] During the discussion relating to the presence or absence of an effect - the so-called “third criterion” – [the opponent] referred to the following citations in document D17: “Al is not incorporated into the silica network”; “the gel network mainly consists of silica with the other cations dissolved in the pore liquid” and argued that the silicate binder claimed would not have the alleged “improved glassiness” disclosed in the contested patent.
The board does not accept this argument because the above citations simply disclose that aluminum is not incorporated into the silica network, what however does not constitute evidence that an improved glassiness was not obtained.
As to the effect underlying the invention, the contested patent […] discloses that the high alumina content of the dispersion provides for improved stability as compared to ordinary alkali water glasses, the alumina providing for improved glassiness and reduced crystallinity of the binder.
The board notes that this technical teaching is however not directly and unambiguously derivable from the disclosure of document D5. This means that even if the criteria laid down in decisions T 279/89 and T 198/84 had been applied, the selected area (molar ratio of “2 to 12”) in the subject-matter of claim 1 ought to be considered as a “purposive selection” in the sense of these decisions, and not as an arbitrary choice from the prior art, as argued by [the] opponent or as concluded by the opposition division.
The board points out that independently of the fact that the third criterion would anyway be fulfilled in the case at stake, it is however not this finding which renders the subject-matter of claim 1 at issue novel, since the technical effect has not been retained as the decisive condition conferring novelty. […]
[4.1.9] It follows from the above reasoning that in the present case, criterion 1 (narrow range) and criterion 2 (sub-range sufficiently far removed from the known range illustrated by means of examples) are met, and the critical passage in D5 […] cannot be considered as a direct and unambiguous disclosure which inevitably leads the skilled person to something falling within the scope of what is claimed.
4.1.10 With respect to the further decisions referred to by [the opponent], the board observes that the present case concerns the selection of a sub-range of numerical values from a broader range, so it is not comparable with T 12/90, where the novelty of a vast family of chemical compounds defined by a general structural Markush formula had to be assessed in the light of a prior art disclosing another family defined by a general structural Markush formula and overlapping with the first family.
For the same reason, the present case is also not comparable with T 124/87, which concerned a further problem of overlapping of classes of compounds.
[4.1.11] Consequently, having regard to the reasons given [above], the subject-matter of claim 1 at issue, in particular the selected silica to alumina molar ratio of 2 to 12, is not directly and unambiguously derivable from the disclosure of document D5.
The subject-matter of claim 1 is therefore novel in respect of document D5 (A 54(1)(3)).
Should you wish to download the whole decision, just click here.
NB: There is a post dedicated to this decision on Le blog du droit européen des brevets.
NB: There is a post dedicated to this decision on Le blog du droit européen des brevets.
10 comments:
I find this decision very interesting, but I wonder why it did not go the full way and also removed the other two criteria.
There are two ways of looking at a range: as a set of points or as an entity in itself.
If a range is regarded as an entity, then one range would be new over another simply by being different. If it is regarded as a set, then the criteria of being narrow and sufficiently far removed would not help in making it new.
From the A 123(2) point of view it seems that a range is an entity and not a set, since otherwise all the values of the range would be disclosed and allowed as amendments (otherwise I would have difficulty in understanding why a disclosure of a molecule having between 3 and 5 carbon atoms does not disclose a molecule with 4 carbon atoms).
Overlapping ranges are a different issue, since in that case although the entities are different there is one (or both) end point(s) of one range which fall(s) within the other range (this assumes that a range is in fact a double disclosure: one disclosure concerning the entity and the other the end and/or intermediate points which are specifically disclosed on their own).
May be a nice question to the EBA could be: What the hell is a range?
There is the basic principle that there should not be two patents covering the same subject-matter. When the second application is granted, there is exactly this situation that both patents cover the narrow range. Thus the idea of the "old" case law apparently was to make an exception where the second applicant has discovered something very special that merits a patent. Thus, yes indeed if you abolish the third criterion, why not the other two criteria, too ? I believe they should keep all three. Also note that the first instance divisions are bound to the Guidelines and not to the case law. Thus unless you are in front of a BoA you will still have to deal with all three criteria.
EPO examiner
Good question. Perhaps we could still improve on the wording ... ;-)
@EPO Examiner
You are right. As long as the Guidelines remain unchanged, this new doctrine (if confirmed) will not change the course of examination proceedings.
This being said, my understanding is that the present decision only changes things when the prior art is A 54(3) prior art, where only novelty is examined. As soon as inventive step comes in, the third criterion is back because you have to show that the selection is inventive.
Therefore, I would say that the present decision is a move towards a better distinction between novelty and inventive step matters, whereas the third criterion mixed up the two.
@oliver: I agree with what you are saying regarding Art. 54 (3) and inventive step. This concerns Art. 54 (3) and the point is that double patenting of subject-matter (the narrow range) should be allowed only in the exceptional case when there has been a real contribution from the second applicant. Imagine a claim towards a compound material. One constituent, which is always present in such a compound, is disclosed in the first application in a very broad range, say 1-1.000.000. The second application (the first application being prior-art under Art. 54 (3)) discloses the same constituent and claims say 100-1.000, which is narrow and far removed. The in reality utile range is 200-300. It is evident that the constituent needs to be there and no importance is given to it in either of the two applications. The second application would, applying the two criteria only, be granted and both would cover the same compound material in its utile composition. Double patenting for no good reason, isn't it ?
EPO examiner
Why should double patenting be allowed only if there is a good reason? I've never understood the problem with it. If an applicant is prepared to waste money on multiple applications, that is fine. And if he gets his multiple patents and then uses them abusively, surely that's something for the courts to worry about, not the patent offices? I've always seen this as the reason why the EPC contains no provisions regarding double patenting - it would have been simple enough for the EPC legislators to include double patenting provisions, but they did not.
Thanks for clarifying. I believe the problem you point out is more fundamental than the three criteria of T 279/89. If I understand you correctly, you do not like that the EPC allows for "double patenting" in cases where the invention in the second application is not inventive with respect to the invention disclosed in the first application, but only novel. I agree that the European approach is criticizeable for being a strange compromise. The U.S. approach, where the prior art is more or less the same for novelty and obviousness, is more severe but also more straightforward, I would say.
@pat-agoni-a:
In the case of a subrange of a larger range, I would say the subrange is novelty destroying for the larger range even without the use of end points. The subrange itself is more specific than the larger range.
In the case of overlapping ranges, I agree you have to assume that a range individually discloses its end points in order to get a novelty destroying effect.
I agree it makes sense to get rid of the other two criteria of T 279/89 and to adopt your view. Certainly any novelty approach based on vague criteria such as "narrow" and "sufficiently far removed" is bound to lead to logical inconsistencies.
@EPO examiner:
"This concerns Art. 54 (3) and the point is that double patenting of subject-matter (the narrow range) should be allowed only in the exceptional case when there has been a real contribution from the second applicant."
But a real contribution is not a criterion for allowing double patenting at all. Art. 54(3) only requires novelty. (And "real" double patenting, i.e. same applicant, same effective filing date, not even requires novelty but only "some difference in scope".)
However, I do sympathise with your example. Of course this is why the Boards came up with the three criteria in the first place.
In my view, there is actually quite a lot to be said for criterion (iii), provided one considers that a range not only individually discloses its end points and the range as an entity, but also an "arbitrary specimen". If the "arbitrary specimen" of a range is identical to the "arbitrary specimen" of the subrange (meaning that the subrange does not exhibit a technical effect not already exhibited by the range), the two specimens may be considered identical, so that the range is novelty destroying for the subrange.
@anonymous: sorry for using the expression "double patenting". I did not mean "real" double patenting as Myshkin calls it, what I meant was "two patents protecting the same subject-matter" (the narrow range). EPO examiner
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