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T 198/84 relates to selection inventions. More specifically, the decision deals with selection inventions in which a narrow numerical range is selected from a broader numerical range.
In the underlying opposition/appeal case claim 1 related to a process for the preparation of thiochloroformates from mercaptans with phosgene in which a catalyst was present in an amount of from 0.02 to 0.2 mol%, relative to a starting material.
The prior art (D1) disclosed a process which did not differ with regard to starting materials and end products. The prior art process also used the same catalyst, but specified only that the catalyst was to be used in "substoichiometric amounts". This was interpreted by the Board to mean that less catalyst than starting material is used (on a molar basis) The catalyst is thus present at an amount from >0 to <100 mol% relative to 1 mole of a reactant.
The Board looked at the broad numerical range of catalyst concentrations disclosed in D1 and stated:
"Such an extensive numerical range does not necessarily represent a disclosure, ruling out a selection from it, of all the numerical values between these minimum and maximum values if, as in this case, the sub-range selected is narrow and sufficiently far removed from the known range illustrated by means of examples. The claimed range of 0.02 to 0.2 mol% relative to the mercaptan, which has been specifically singled out, does indeed represent only a small specimen from the known range extending from >0 to <100 mol%. Moreover the essential portion of the known teaching according to D1 (cf. the 22 examples) specifies the use of catalyst concentrations of between 2 and 13 mol% relative to the mercaptan, a range removed by at least a power of ten from the selected range claimed." (point 5 of the reasons)The Board concluded that the singled-out subrange represents a quantitative range which has not yet been individualised and whose application in the production of thiochloroformates by the process according to the contested patent was new.
The Board drew an analogy to selection inventions in in which chemical compounds were singled out from a generically defined group of compounds (T 181/84). The Board remarked that there was a difference between the selection of compounds from the generic group of compounds in T 181/82 and the selection of a narrower numerical range in the present case, because in the former case, there was only a discrete number of chemical compounds in the broader group, whereas the numerical range in the instant case was continuous, thus contained an unlimited number of values between its end points. Neverthelesss, the Board found that the principle of selection inventions should also apply to the selection from numerical ranges (point 6 of the reasons).
The Board pointed out that, for a selected range to be new over a broader range disclosed in the prior art, the selected range must not be arbitrary, but it must be a "purposive selection". They stated:
"To prevent misunderstanding, it should be expressly emphasised that when examining so-called selection inventions as to novelty the Board adheres to the principle that the sub-range singled out of a larger range is new not by virtue of a newly discovered effect occurring within it, but must be new per se (cf. T 12/81 "Diastereomers/BAYER", OJ of the EPO 8/1982, 296, 303). An effect of this kind is not therefore a prerequisite for novelty; in view of the technical disparity, however, it permits the inference that what is involved is not an arbitrarily chosen specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection)." (point 7 of the reasons)The Board considered that in the underlying case the selected range of the catalyst was not arbitrarily chosen, but - due to the observed increased yields obtained with catalyst concentrations in the caimed range - concluded that it was a "purposive selection".
Claim 1 was considered new and inventive and the patent thus upheld.
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Headword:
A fairly broad range of numbers delimited by minimum and maximum values (in this case, >0 and <100 mol%) does not necessarily represent a disclosure, ruling out the selection of a subrange, of all the numerical values between these minimum and maximum values if the sub-range selected is narrow (in this case, 0.02 - 0.2 mol%) and sufficiently far removed from the known range illustrated by means of examples (in this case, 2 - 13 mol%). The sub-range is novel not by virtue of an effect which occurs only within it; but this effect permits the inference that what is involved is not an arbitrarily chosen specimen from the prior art but another invention (purposive selection).The full text of the decision can be found here.
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