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Toothpaste
Case law 9 aug 2021

Het ontbreken van een voorkeur in een lijst van mogelijke eindpunten voor een bereik maakt een gewijzigd eindpunt tot een selectie uit een lijst.

-Dit artikel is alleen beschikbaar in het Engels- The case concerns a patent on a tooth whitening product for which in an Opposition Appeal extension of subject matter is disputed. The main request comprises several amended ranges of parameters. The Board investigated each range on its own and investigates the presence of a pointer towards the combination of ranges. Although all the end values of the ranges are in the description, these end values are only present in lists of possible end values without preferential positions (in an ‘or-construction’). Moreover there is no specific pointer to the combination of ranges in the form of examples or specific embodiments. The main request is therefore considered to violate Art. 123(2) EPC.
This passage of the application as filed does not point to concentrations below 20% any more than it points to concentrations above 20%.

The invention is directed to a tooth whitening product. The product concerns a tooth whitening composition that is disposed on a strip of material that can be placed on the teeth. In this way a prolonged exposure to the tooth whitening composition can be realized. The tooth whitening product comprises peroxide. The product is defined by several parameters such as a layer thickness (mm), a peroxide active concentration (%) and a peroxide density (mg/cm2); all relating to the tooth whitening composition.

Claim 1 as filed comprised a peroxide concentration greater than about 7.5% by weight and a peroxide density of less than about 1.3 mg/cm2.

During opposition the patentee filed a main request limiting claim 1 to:

  • A layer thickness between 0.008 mm and less than 0.3 mm
  • A peroxide active having a concentration between greater than 7.5% and less than 20%
  • A peroxide density between greater than 0.5 mg/cm2 and less than 1.3 mg/cm2

This main request was deemed not to extend subject matter during opposition. This assessment was challenged in Appeal. In its decision the Board first provided the general approach for extension of subject matter and translates this towards the current case (reasoning 1.2):

“Under Article 123(2) EPC, amendments can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the application as filed (following the "gold standard" set out in G 2/10). In the present case, the question is not only whether the application as filed discloses each of the claimed ranges for the layer thickness, peroxide concentration and peroxide density, but also whether the application as filed contains a pointer to their combination.”

Subsequently the Board assessed the basis for each separate range in the main request and looked for pointers for a combination of the ranges.

For the layer thickness claim 8 as filed states ‘less than about 0.3 mm’ and claim 9 as filed states ‘between 0.008 mm and 0.1 mm’. The Board deems the combination of a lower limit of claim 9 and an upper limited of claim 8 a first selection, also because the description does not provide for a preferred range for the claimed range of the main request. The description only describes end-points in an ‘or-construction’ (less than about 3 mm, or less than about 2 mm, or …etc.).

The Board also sees no preference for the peroxide active range. The lower limit of 7.5% is already in the claim as filed but the upper limit is – similar as for the layer thickness - only present in the description in an ‘or-construction’. The Board therefore sees no preferred range disclosed. Moreover even though the upper limit of 20% is the narrowest upper limit, there is also a lower limit of 20% in the same passage of the description which leads to the remark that “This passage of the application as filed does not point to concentrations below 20% any more than it points to concentrations above 20%”.

Finally the peroxide density is discussed. The upper limit was already in claim 1 as filed, but again the lower limit is only in the description in an ‘or-construction’. The Board states: “According to this paragraph, the peroxide density is "less than about 1.2 mg/cm, or less than about 1.1 mg/cm2, or less than about 1 mg/cm2, or less than about 0.75 mg/cm2 , or less than about 0.5 mg/cm2 , and/or greater than about 0.01 mg/cm2 or greater than about 0.1 mg/cm2, or greater than about 0.25 mg/cm2 , or greater than about 0.5 mg/cm2 ". Here again, no preference for densities greater than 0.5 mg/cm2 over e.g. densities below this value can be derived.

At last the Board checks if other passages provide a pointer for the combination of ranges. On page 9 of the application figure 9 is discussed pointing to a combination of a peroxide concentration of 20 % and a peroxide density of 0.5 mg/cm2.  The Board does not see a pointer in this passage on page 9 considering the disclosed values fall outside the claimed ranges (claim 1 concerns less than 20% and greater than 0.5 mg/cm2) and considering no layer thickness is provided in the passage. Also the figure does not teach otherwise.

In reason 1.7 the Board concludes: “the subject-matter of claim 1 of the main request results from the combination of features selected from several lists. The application as filed does not contain any pointer to the claimed combination.

Read the EPO decision:

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