In T 1511/07 we read:
[2.1] According to Claim 1 the weight ratio of the citric and lactic acids to calcium hydroxide is from 1:1 to 5:1. This ratio defines a new sub-range which emerges from a combination of the lower value of the broadest range of from 1:1 to 10:1 with the upper value of the especially preferred range of from 2.5:1 to 5:1 as disclosed in the last two lines at page 3 of the application as filed (represented by the WO-publication). This range was combined with the especially preferred range of 1:2 to 2:1 for the weight ratio of citric to lactic acid disclosed at page 3, lines 30/31 of the WO-publication.
Although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub range, is not contestable under A 123(2) when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be disclosed in the application as filed, unless there is a clear pointer to such a combination.
There is, however, no indication in the WO-publication which unambiguously points to the combination of the weight ratio of 1:1 to 5:1 for the citric and lactic acids to the alkaline calcium source with the weight ratio of 1:2 to 2:1 for the citric to lactic acid.
The amendment to Claim 1 is therefore an inadmissible combination from two lists and contravenes A 123(2).
In the present case, the amendment under consideration was somewhat similar but the outcome was not the same.
Claim 1 of the main request (claim 1 as granted ; the amendments with respect to claim 1 as filed are highlighted):
A precipitated silica characterized by
BET: 350 - 550 m²/g
320350 - 400 g/100 g
D50: 5 - 15 µm, and
tamped density: 20 -
The opponent raised an objection under A 123(2) and cited T 1511/07.
[2.1] Claim 1 of the main request has been amended in a twofold way with respect to claim 1 as originally disclosed: The range of the DBP values was limited from 320-400 g/100g to 350-400 g/100g; simultaneously the range of the tamped density was limited from 20-90 g/l to 20-70 g/l.
The DBP value of 350 g/100g and the tamped density value of 70 g/l are disclosed on page 2, lines 13-15 of the originally filed documents, where preferred ranges for the DBP value (350-380 g/100g) and for the tamped density (60-70 g/l) are cited. Thus, in the claim as amended what is claimed is a combination of a general range with the end point of a preferred range.
However, there is no reference in the originally filed documents to the combination of the ranges that have been amended as above. Thus, the situation appears to correspond to [the situation] that had been found to be inadmissible in view of A 123(2) in T 1511/07 [2.1, last paragraph].
However, the Board is of the opinion that decision T 1511/07 cannot be applied to the present case, for the following reasons. The application […] on which [this decision] was concerned a metastable complex that was formed by an interaction between calcium hydroxide and a mixture of citric and lactic acid. This originally claimed subject-matter was not characterised by any parameters such as proportions or mixing ratios (Mengenanteile oder Mischungsverhältnisse) of the components. In view of these circumstances the Board in T 1511/07 considered that the amendment of the claim consisting in the introduction of two preferred ranges for the mixing ratios of the lactic and citric acid with respect to each other and with respect to the calcium source […] was admissible, but not the […] combination of two limited ranges of mixing ratios which had not been referred to in the original application.
In the present case, however, the claimed subject-matter was already characterised by four parameter ranges, two of which have remained unamended and two of which were limited. Thus there was no new characterisation of subject-matter by means of parameter ranges derived from the application, the combination of which was not found in the original application. […]
[2.3] There manifestly is no extension of the scope of protection.
[2.4] Thus the main request […] fulfils the requirements of A 123(2) and (3).
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