In situations where an invention relates to a selection of a sub-range within a larger known range of a piece of prior art the EPO applies a specific novelty test originally developed in the Boards of Appeal decision T 198/84 of February 28, 1985, which has been adapted in the recent past and corresponds to what is outlined in the draft EPO Guidelines for Examination 2023 as per the following wording:

 A sub-range selected from a broader numerical range of the prior art is considered novel if both of the following two criteria are satisfied (see T 261/15):

            1. the selected sub-range is narrow compared to the known range;
            2. the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art. 

The meaning of “narrow” and “sufficiently far removed” has to be decided on a case-by-case basis.

However, said test for novelty of sub-ranges is no longer valid in view of the recent decision T 1688/20 of October 19, 2022.

In said decision, the Board started with the general statement that “the Board is not convinced that the relative terms `narrow´ and `sufficiently far removed´ provide objective, solid and consistent criteria for establishing novelty of a selected sub-range”, and then ignored said criteria (a) and (b) completely and instead directly applied the EPO’s “gold standard” novelty test questioning whether a skilled person can directly and unambiguously derive the claimed sub-range from the piece of prior art.

In the case at hand, the prior art disclosed a range of “55 to 60 degrees”, which was different from the claimed sub-range of “56 to 59 degrees”, and therefore the Board concluded that applying the “gold standard”, the skilled person cannot directly and unambiguously derive the claimed sub-range from said prior art disclosure, i.e. novelty must be acknowledged.

Applicants who have pending or new applications at the EPO which would fail the EPO’s sub-range novelty test as cited from the EPO Guidelines for Examination above, even though the prior art does not cite the specifically claimed sub-range as such, may take the advantage to refer to decision T 1688/20 applying the “gold standard” test in their favour. This makes in particular sense as said decision is not considered for publication in the EPO’s Official Journal, nor for internal distribution in the EPO, and may even be unknown to EPO examiners only looking up the above cited (and insofar outdated) Guidelines for Examination.