T 0279/89 - Novelty of selection inventions - #61

Citation rank: 61
No. of citations: 79

T 279/89 is one of two decisions, which are frequently cited as having defined the criteria under which novelty of (numerical) selection inventions are to be assessed. It was, however, the other decision (T 198/84) which has defined the criteria. T 279/89 merely cited the criteria developed by T 198/84 and applied them to their case.

In the underlying examination case of T 279/89, the examination division rejected the application for lack of novelty. The invention related to a method of injection molding of an elastomer, wherein one component of the elastomer was defined as containing "more than 10% of the 2,4'-isomer". The invention was considered by the examining division to lack novelty over two prior art documents, which disclosed similar methods using up to 50% of the 2,4'-isomer, and 20 to 95% of the 2,4'-isomer, respectively.

The applicant filed an appeal based on three requests ("A", "B", "C"), in which the amount of the 2,4'-isomer was:

- request A: greater than 10%,
- request B: greater than 10%, less than 20%,
- request C: greater than 10% and up to 15%.

The Appeal Board found and introduced a document D4 disclosing 0.5 to 25% of the 2,4'-isomer. The The applicant/appellant argued that the feature defining the relative amount of the 2,4'-isomer would establish novelty over the prior art in each case, in particular, over D4.

The Board referred to T 198/84 and applied the criteria developed therein for assessing novelty of sub-ranges over the disclosure of a broader numerical range. These were:

A sub-range of numerical values can be regarded novel over the disclosure of a broader range, when each of the following criteria is satisfied:

1. the selected sub-range should be narrow;
2. the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples;
3. the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

Applying these criteria, the Board in T 279/89 found that none of requests "A", "B" and "C" was novel over D4. Non-novelty of request "A" was out of the question. Regarding requests "B" and "C", the Board stated:

4.1.1. The present ranges of 10 to 20% and 10 to 15% in Claim 1 according to requests B and C cannot be regarded as narrow selections, since they correspond to approximately 40 to 80% and respectively 40 to 60% of the range known from the prior art. Moreover, the ranges newly defined are not near the lower or upper end of that known range, but right in the middle thereof. For this reason alone, novelty of the ranges in question cannot be acknowledged.

In addition, it was concluded by the Board that the parameter range chosen in requests "B" and "C" was not a purposive selection, as required by criterion 3, above.

As a consequence, the appeal was dismissed.

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Headnote:

none

The full text of the decision can be found here.