In T0989/22 the Board discussed the gold standard of ‘’direct and unambiguous’’ disclosure versus ‘’seriously contemplating’’ in the context of overlapping ranges

The Board of Appeal’s decision T0989/22 concerns an appeal to the Opposition Division’s [OD] decision to reject the opposition against EP 3384061 B1. The OD held that claim 1 directed at an alloy composition comprising weight ranges of amongst others the elements copper (Cu), lithium (Li), zinc (Zn), and magnesium (Mg) was novel and inventive.  The particular composition of the alloy is intended to offer a superior balance between static mechanical properties, damage tolerance, thermal stability, corrosion resistance, and machinability. 

The appellant-opponent argued that the claimed alloy lacked novelty over D10 or lacked inventive merits starting from D11 as closest prior art. A table was provided in which the claimed ranges of claim 1 versus those of the prior art D10 was compared. In said table the ranges of D10 were mostly overlapping (disclosing values within the claimed ranges) yet broader than those claimed. The appellant argued the skilled person would seriously contemplate working in the claimed ranges since there was no teaching away to that end. The patentee argued in response thereto that there was neither a disclosure nor a suggestion of the specific combination of elements of the alloy and referred to evidence that the beneficial properties of the claimed alloy are specifically associated with the claimed ranges. 

The board found that although the claimed ranges overlapped that there is no direct and unambiguous disclosure in D10 of an alloy having a composition as defined in claim 1 of the patent. To arrive at such an alloy the skilled person must make several choices among the specific ranges and values ​​disclosed in D10, which is not considered a direct and unambiguous disclosure. The board emphasizes with reference to T1688/20 citing G1/03 andG2/10 that the criterium to be used to assess novelty of ranges is a ‘’direct and unambiguous’’ disclosure. 

The board explains that the concept of "seriously contemplating" as referred to by the opponent-appellant was initially described in decision T 26/85 (Reasons 9) and taken up again in decision T 666/89. In T 666/89 the board held that the concept of "seriously contemplating" was a concept under novelty (Reasons 8).

The current board is of the opinion that the concept of "seriously contemplating" implies that the skilled person must assess whether the technical teaching of the earlier document is to be applied within the overlapping range of values ​​(see T 26/85, Reasons 9 and T 666/89, Reasons 7) which is, in the opinion of this board, directly linked to the desired effect.

Therefore, the concept of "seriously contemplating" is difficult to reconcile with the primary criterion of direct and unambiguous disclosure in the case of multiple ranges of values.

It is also to be noted that in T 0026/85 the board concluded that novelty was given because the prior art clearly discouraged the skilled person from working within the claimed range of values. In the present case, even if the criterion of "seriously contemplating" were accepted contrary to what has been written above, 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 consider working at lower concentrations. The board therefore considered D10 did not anticipate the novelty of the claims. The board then concluded the claims were also considered to involve an inventive step.

The appeal was dismissed. 

Summary written by the NLO EPO Case Law Team.