1.2. Intermediate generalisation - non-disclosed combinations

The case law of the boards of appeal has to consider what happens when an amendment concerns taking features out of their initial context and combining them with others. The boards of appeal have had to decide under what conditions the resulting amendments fulfilled the requirements of Art. 123(2) EPC. In some decisions, this has been called "intermediate generalisation" (see e.g. T 962/98, T 1408/04, T 461/05, T 1118/10. See also case T 2311/10, which concerned an intermediate generalisation, and in which the board expressed the view, with reference to T 331/87 (OJ 1991, 22) and G 2/98 (OJ 2001, 413), that the three-point or essentiality test was unhelpful or even misleading (see also Guidelines H-V, 3.2.1 - June 2012 edition).

The board in T 962/98 established criteria for the admissibility of an intermediate generalisation. There may exist situations where some characteristics taken from a working example may be combined with other features disclosed in a more general context without necessarily creating an objectionable intermediate generalisation. However, under Art. 123(2) EPC 1973, such an intermediate generalisation was admissible only if the skilled person could recognise without any doubt from the application as filed that those characteristics were not closely related to the other characteristics of the working example and applied directly and unambiguously to the more general context. In other words, in order to be acceptable, this intermediate generalisation had to be the result of unambiguous information that a skilled person would draw from a review of the example and the content of the application as filed (cf. point 2.5 of the Reasons).

In T 219/09 the board noted that, according to established case law, it will, for example, normally not be allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description (T 1067/97, T 714/00, T 25/03). Such an amendment results in an intermediate generalisation, in that it further limits the claimed subject-matter, but is nevertheless directed at an undisclosed combination of features broader than that of its originally disclosed context, see for example T 1408/04 and T 461/05. It is justified only in the absence of any clearly recognisable functional or structural relationship among the features of the specific combination (T 1067/97, see below) and if the extracted feature is thus not inextricably linked with those features (T 714/00, see below).

In T 1067/97 the board confirmed that if a claim was to be restricted to a preferred embodiment, it was normally not admissible under Art. 123(2) EPC 1973 to extract isolated features from a set of features which had originally been disclosed in combination for that embodiment. An amendment of this nature would only be justified in the absence of any clearly recognisable functional or structural relationship among said features.

In T 284/94 (OJ 1999, 464) the board stated that an amendment of a claim by the introduction of a technical feature taken in isolation from the description of a specific embodiment was not allowable under Art. 123(2) EPC 1973 if it was not clear beyond any doubt for a skilled reader from the application documents as filed that the subject-matter of the claim thus amended provided a complete solution to a technical problem unambiguously recognizable from the application. Nor was an amendment allowable under Art. 123(2) EPC 1973 which replaced a disclosed specific feature either by its function or by a more general term and thus incorporated undisclosed equivalents into the content of the application as filed.

In T 714/00 the board stated that extracting an isolated feature from an originally disclosed combination and using it to delimit claimed subject-matter could only be allowable in connection with Art. 123(2) EPC 1973 if that feature was not inextricably linked with further features of that combination.

With regard to isolation and extraction of combined features, T 25/03 first recalled that according to the established case law of the boards of appeal, if a claim was restricted to a preferred embodiment, it was normally not admissible under Art. 123(2) EPC 1973 to extract isolated features from a set of features which had originally been disclosed in combination for that embodiment. That kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features (see for example T 1067/97). In the case at issue the board concluded that since claim 1 resulted from the extraction of isolated steps from the specific combination disclosed as essential in the embodiment of Figure 4, and since the appellant had not referred to other parts of the application as filed that could support the proposed amendment, and no such parts had been identified by the board, claim 1 as amended in accordance with the first auxiliary request did not meet the requirements of Art. 123(2) EPC 1973.

In T 582/91, the respondent (opponent) was of the opinion that when restricting a granted claim by introducing subject-matter from the dependent claims all the features of the dependent claims in question should be incorporated in the new independent claim. Contrary to this opinion the board considered that one feature of a dependent claim could be readily combined with a preceding independent claim as long as the skilled person recognised that there was clearly no close functional or structural relationship between the one feature of that dependent claim and its other features, or between that one feature and the teaching of other dependent claims referred to in that dependent claim. If this was the case, no objections under Art. 123(2) EPC 1973 arose (see also T 938/95 and T 288/89).

In T 3/03 the board decided that an amendment consisting in the generalisation of an effect obtained for particular embodiments was not admissible. In the case in point, the results obtained for particular embodiments could not be generalised since the particular circumstances of use, including the type of additive used, determined whether or not filterability was improved.

In T 1408/04 concerning an absorbent interlabial device, the respondent/opponent alleged inter alia that the terminology introduced into claim 1 was an intermediate generalisation of the original disclosure, since a topsheet defining the top surface and a backsheet defining the opposite surface was only disclosed in the embodiment of Figures 1 to 3 and was not generally applicable to the broad definition of the device according to the other features of claim 1. The board stated that the terminology introduced into claim 1 according to the main request was not disclosed expressis verbis in the filed application. From the broad range of topsheet/backsheet structures within the scope of claim 1 as granted, a specific selection had now been made. The board considered that, to avoid an intermediate generalisation (i.e. an undisclosed combination of selected features lying somewhere between an originally broad disclosure and a more limited specific disclosure), all the necessary features of the specific selection must be included in the claim. The selection in this case came from the drawings, which, however, also showed a particular (albeit commonly used) type of topsheet/backsheet connection. This particular connection was lacking in the claim. Thus an intermediate generalisation was present. The board disagreed not only with the appellant's understanding of what "the claims must be interpreted by a 'mind willing to understand'" meant, but also concluded that the amendment to claim 1 resulted in an intermediate generalisation of the original disclosure and therefore that the subject matter of claim 1 did not meet the requirements of Art. 123(2) EPC 1973.

With regard to the third auxiliary request, concerning the respondent's objection under Art. 123(2) EPC 1973 on the basis of the alleged presence of an intermediate generalisation, the board in T 1408/04 concluded that the particular definition of the topsheet/backsheet sealed connection was not a generalisation of the content of the originally filed application. Whilst it was correct that Figures 1 to 3 represented a preferred embodiment, it was clear that they represented only a "preferred" embodiment of one way of assembling the topsheet, backsheet and core. In fact this was the only way which was clearly and unambiguously disclosed. The skilled person would immediately realise that the specific topsheet/backsheet sealed configuration as shown in the Figures was generally applicable also to other aspects of the invention and was not limited only to the set of features shown in Figures 1 to 3. In this regard, the other elements present in these Figures were not inextricably linked to the topsheet/backsheet sealed configuration, as also confirmed by the description, which categorised these features as optional. Thus the skilled person understood unambiguously that these features were not part of the topsheet/backsheet structure, and could be omitted from the embodiment in Figures 1 to 3. The topsheet/backsheet structure as specifically indicated in the Figures and as defined in claim 1 of this request was consequently applicable generally to the invention as defined by the other features in claim 1. Therefore, the requirements of Art. 123(2) EPC 1973 were met.

In T 461/05, according to the examining division which had refused the patent application, claim 4 concerned generalisations of particular embodiments, each of which constituted an indissociable bloc, which extended the subject matter of the application beyond its original content, contrary to the requirements of Art. 123(2) EPC 1973. The board ordered that the decision be set aside. The board in this case found that claim 4 as amended defined subject matter which was less general than that defined by claim 1 in the original version but more general than the particular embodiment corresponding to case 2a as disclosed in the description and the subject matter of claim 6 as originally filed. Claim 4 thus represented a generalisation, also referred to in patent jargon as an intermediate generalisation. Here, the board emphasised that an intermediate generalisation was different from a simple generalisation (see e.g. T 910/03, T 404/03), since in the former case a definition of the invention in general terms formed part of the original disclosure. The expression intermediate generalisation conveyed the idea that the amended subject matter was a generalisation of a particular embodiment, disclosed in the original application, which was at an intermediate point between that particular embodiment and the definition in general terms of the invention as originally disclosed. In the view of the board, the expression "intermediate limitation" would in fact be more apt, since it emphasised that the amendment was also a restriction of an original disclosure in general terms.

The case at issue in T 461/05 involved a restriction of an originally filed main claim in general terms by adding part of the features of a combination of features originally disclosed as a particular embodiment. The amendment therefore comprised the omission of certain characteristics of the combination of features of the particular embodiment. The board held that the provisions of Art. 123(2) EPC 1973 precluded such an amendment only where the amendment presented the skilled person with new information which did not follow directly and unambiguously from the application as originally filed. A restriction of a claim by adding a number of features from a particular embodiment originally disclosed did not in itself introduce such new information. By contrast, the omission of the remaining features of the embodiment would introduce new information if the omitted features were necessary to carry out the particular embodiment of the invention. In this case, the omission of these features would present the skilled person for the first time with the information that, contrary to what had originally been disclosed, these features were not necessary in order to carry out the particular embodiment of the invention. The board found that the contested decision contained no reasons why these omitted features would be necessary to carry out the invention. Nor were the reasons why each of the embodiments constituted an indissociable bloc apparent from the decision. Nor could the board itself see any such reasons.

In T 273/10, the proposed amendments consisted of adding to the subject­matter of claim 1 characteristics derived from a particular embodiment but, at the same time, omitting other characteristics which had been described in close combination with those added. It therefore had to be established whether those amendments were allowable even though they entailed a limitation of the subject­matter originally described. Referring to the boards' case law, in particular that established in T 461/05, the board concluded that, in the case before it, the omission of the characteristics from the claimed subject­matter was contrary to Art. 123(2) EPC since there was no indication in the application as filed that they served no purpose, were optional or could be replaced by other technically equivalent means.

T 879/09 gives an example of cases dealing with intermediate generalisation. It concerned a case where the examining division rejected the application as infringing Art. 123(2) EPC. The board stated that a patent application described an invention in general terms together with one or more detailed embodiments. In order to overcome an objection of lack of novelty and/or inventive step the applicant often adds some but not all the features from the detailed embodiments to the general disclosure. This results in an object that lies between the original general disclosure and the detailed embodiments. This is called an "intermediate generalisation" in patent jargon, although a better term would be "intermediate restriction" to make clear that it is in fact a restriction from the more general original disclosure (T 461/05). Such an intermediate restriction or generalisation is permissible under Art. 123(2) EPC only if the skilled person would recognise without any doubt from the application as filed that characteristics taken from a detailed embodiment were not closely related to the other characteristics of that embodiment and applied directly and unambiguously to the more general context (T 962/98). Since the test mentioned above was fulfilled, Art. 123(2) EPC was not infringed.

In decision T 714/08, amended claim 1 individualised 12 specific base-coupler combinations. These specific couples, however, had not been disclosed in the application as filed, which did not indicate which particular base was combined with which particular coupler. Thus, the specific combination of paraphenylene diamine with each of the 12 couplers claimed in amended claim 1 could not be derived directly and unequivocally from the patent application as filed. Furthermore, the board made it clear that the case in question differed from those concerning restrictions applied to lists of substituents in Markush-type chemical formulae, which were the subject of decisions T 615/95 and T 50/97. With regard to the second auxiliary request, it was not disputed that the application as filed did not disclose in general terms the association of the three particular compounds. The appellant nonetheless asserted that amended claim 1 was supported in example 6 in the application as filed by the disclosure of a particular composition incorporating these three compounds. The board opined that, while example 6 in the application as filed certainly described a composition incorporating the three particular compounds defined in amended claim 1, it was still necessary to establish whether a specific example of that kind could constitute an adequate basis for the generalisation adopted in amended claim 1, which provided in particular that the three compounds could be present in any quantities and possibly in association with other couplers and oxidation bases. The board concluded that, in the light merely of the information made available to the skilled person by the disclosure in this example, the amendment introduced technical information which the skilled person would not have been able to derive, directly and unequivocally, just from the disclosure in example 6 in the application as filed. Similarly, in view of the conditions set out in T 962/98 (point 2.5 of the Reasons), the board concluded that Art. 123(2) EPC had been contravened.

In decision T 1206/07, the board considered that the particular combination of two characteristics had not been disclosed in the application as filed. Neither the original claims nor the examples given in the application concerned processes having one or other of these characteristics. Moreover, and although these two characteristics were indeed disclosed as such in the original application, no information was furnished which could have supported their combination. It was possible to arrive at that combination only by associating a posteriori two passages presented independently of one another in the description in the application as filed in order to create the new combination of characteristics claimed. The board took the view that, in the absence of the least indication concerning this particular combination, the selection of the two characteristics "metallocenic catalyst" and "introduction of a diolefin comprising from 4 to 18 carbon atoms into at least one of the reactors" was not clearly and unambiguously evident from the application as filed. The board thus shared the opinion of respondent 2 that it was not sufficient for the combined characteristics to have actually been disclosed individually in the initial application in order to make their combination comply with the requirements of Art. 123(2) EPC. This conclusion is also in line with the EPO's established jurisprudence on this question, which says that the content of the application as filed cannot be regarded as a reservoir from which individual characteristics can be combined for the artificial creation of a particular combination. The subject-matter of claim 7, which is dependent upon claim 3, therefore extended beyond the content of the application as filed and did not meet the requirements of Art. 123(2) EPC.

In T 477/09, the invention was a dental composition based on silicone crosslinkable by a cation process. The appellant had submitted that the amendments filed with auxiliary request V were based on example 3 of the patent in suit. The board concluded that example 3 disclosed nothing more than a very specific combination of technical features and that the application as filed contained no information from which any teaching derivable from example 3 could be generalised to all the compositions defined in claim 1. The appellant had put forward only example 3 as a basis for amendments. The board found no other passage or passages in the application as filed which could have served as the basis for amendments made at such a general level. Auxiliary request V was refused.

A recent decision highlighted that whether an amendment constitutes an intermediate generalisation is irrelevant for the purposes of assessing its admissibility. According to that decision, the only relevant question would be whether a skilled person faced with the amended version of the application or patent, as compared to a skilled person having seen only the version originally disclosed, would derive from that amended version any additional technically relevant information. Only if such additional information was derivable can there be an infringement of Art. 123(2) EPC (T 1906/11, point 4.2 of the Reasons). In T 248/12 the board stated that in respect of the "technical relevance" of the added information, case T 1906/11 cannot be understood to define a new standard for judging amendments with respect to Art. 123(2) EPC since this would be at odds with the "gold standard". The board emphasised that "relevance", as such, of the technical information was not of importance for deciding upon the issue of Art. 123(2) EPC, rather simply whether this technical information received by the skilled person is new having regard to the content of the originally filed application.

On the issue dealt with in this section, see also T 166/04, T 311/04, T 191/04, T 98/05, T 876/05, T 300/06, T 1250/06 and T 1001/01; T 1407/06 and T 911/06; and further T 17/86, T 25/03, T 1004/01 and T 404/03, which are referred to in other sections of this chapter.

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