Case Law of the Boards of Appeal

In this introductory section, a recent decision may be cited which draws a distinction between two cases: the removal (or replacement) of a feature and the addition of a feature. In T 404/03 the board considered that the decisions of the boards of appeal describing and using the current palette of "tests" in connection with various types of amendments might lead to some confusion. As far as the disclosure of a group of features was concerned, as distinguished from their scope, the generalisation of a feature in a claim and the isolation of features from embodiments in the description essentially both involved a deletion of a feature, namely the specific feature and the remaining features of the embodiment respectively. The board therefore considered that these cases could be subject to the same criteria as a pure deletion, and hence, in principle, the three point test. Rather than requiring a specific statement or suggestion in the original disclosure, the three point test was more generous to the applicant because it essentially allowed the deletion of a feature if the skilled person realised from the common general knowledge in that field that the feature had nothing to do with the invention. Moreover, in the board's view, the cases of deletion of features and addition of features had to be distinguished with respect to the allowability of amendments under Art. 123(2) EPC 1973, since the former only removed elements that were originally disclosed and hence might be judged by a skilled person to be inessential to the invention, whereas the latter added new elements lacking any basis whatsoever in the original disclosure.