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Case Law of the Boards of Appeal

 
 
1.7.1 Direct and unambiguous deducibility of amendments from the application as filed

This section gives examples of cases illustrating the test in question ("gold standard"), the essence of which is set out at the beginning of this chapter (see G 2/10).

It emerges in particular from T 288/92 and T 187/91 (OJ 1994, 572) that the decisive question when assessing the admissibility of amendments is whether the amendment can be directly and unambiguously deduced from the application documents as filed:

In T 288/92 the appellant (applicant) contended that the amendment resulted in a limitation of the original claim. The board rejected this argument on the grounds that the expression "subject-matter which extends beyond the content of the application as filed" in Art. 123(2) EPC 1973 prohibited the introduction of any technical information which a skilled person would not have objectively derived from the application as filed, so that the examination of the allowability of an amendment according to Art. 123(2) EPC 1973 was directed to the process of "derivation" (see also T 383/88), as distinct from a simple comparison of the scopes of amended and unamended subject-matters. In the view of the board this provided a definitive method for deciding the allowability of an amendment. Any other "test", such as the "novelty test", necessarily posed hypothetical questions. On the facts of the case the board held that it was not permissible to amend a generic formula defining a class of chemical compounds by restricting an originally disclosed generic definition of a substituent to a specific (individual) one which was arbitrarily selected from chemical entities, such as in the examples, without some support for such restriction in the general part of the description (see also T 859/94).

In T 187/91 (OJ 1994, 572) the appellant had requested that a patent on a fibre optic amplifier be granted. The claims in the application as filed referred to "a plurality of pump light sources", i.e. two or more light sources; the amended claims referred to "a pump light source" and, thus, sought protection for a fibre optic amplifier including one or more light sources. The board conceded that there was clearly a close conceptual correlation between the assessment of novelty and the assessment of what was an allowable amendment under Art. 123(2) EPC 1973. It further explained, however, that two considerations which underlay Art. 123(2) EPC 1973 were different from those that underlay Art. 54 EPC 1973: firstly, a reader of an application published pursuant to Art. 93(1) EPC 1973 after 18 months would be informed of the maximum extent of its subject-matter and therefore its maximum content some time before the text of the application including the claims was finalised, having regard to the drawing up of the European search report and the subsequent examination of the application. Secondly, the relationship between the claims and content of the European patent application was determined by the idea that, after appropriate amendment if necessary, the granted claims should give a fair protection for the inventive subject-matter contained in the application as filed.

The board found that a skilled reader of the application as filed would seriously contemplate the use of only one light source when carrying out the described invention; there was nothing in the application as filed or in his common general knowledge which would cause the skilled person to exclude the possibility of using only one light source. Additionally, on a careful and analytical reading of the whole content of the application as filed, there was no reason to regard the use of a plurality of light sources as essential to the invention in order to achieve its stated aims. On the contrary, the proper interpretation of the content of the application as filed was that it included as one possible practical variation of the preferred embodiment of the invention a fibre optic amplifier having only one light source.

In several decisions, the boards were required to give an opinion on interpreting the term "clearly and unambiguously derivable". These decisions also show how this criterion is applied in practice.

T 367/92 gives an example of an amendment rejected under Art. 123(2) EPC 1973 because it contained a specific term which, in the board's view, could not be considered to be clearly and unambiguously derivable from the originally disclosed generic term. In this case the issue of admissibility under said article boiled down to the question whether the generic term "polyester" could be equated with the specific term "polyethylene terephthalate". The sole document added by the appellant/patent proprietor in support of this interpretation proved only that polyethylene terephthalate was a polyester (which was never under discussion), but did not show that "polyester" could be interpreted as implicitly meaning "polyethylene terephthalate".

In T 823/96, the question whether or not a composition containing zero percent of a UV absorber was disclosed in the application as originally filed had, in the board's judgment, to take account of the whole content thereof and could not solely be based on the isolated parts of the description relied upon by the appellant. The board also observed that the term "implicit disclosure" should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content. In the board's judgment, the term "implicit disclosure" relates solely to matter which is not explicitly mentioned, but is a clear and unambiguous consequence of what is explicitly mentioned. Therefore, whilst common general knowledge must be taken into account in deciding what is clearly and unambiguously implied by the explicit disclosure of a document, the question of what may be rendered obvious by that disclosure in the light of common general knowledge is not relevant to the assessment of what is implied by the disclosure of that document. On the contrary, these two questions must be strictly separated. The board therefore did not agree with the appellant's submission that the decision under appeal was based on an underestimation of the common general knowledge. On "implicit disclosure", see also T 1125/07, summarising the case law and quoting, among other decisions, T 860/00, and G 2/10, in which the Enlarged Board considered this issue at various points.

In T 1107/06, quoting T 860/00, the board took the view that when there is a generic disclosure of the invention together with a specific disclosure of an illustrative or preferred embodiment falling under the generic disclosure, the skilled person will normally imply that all the other embodiments comprised in the generic disclosure without being mentioned specifically also form part of the invention. The non-exemplified or non-preferred embodiments are thus implicitly disclosed as the logical complement of the exemplified or preferred embodiments (see also G 2/10, OJ 2012, 376).

In T 917/94 the board decided that the omission of a feature of a claim did not contravene Art. 123(2) EPC 1973, if this feature was implicitly defined by two other features and, being therefore redundant, its omission created no subject­matter extending beyond that of the application as filed.

In deciding on the admissibility of the newly submitted documents of the patent in suit, the board in T 925/98 noted that according to the respondent, the range 30% to 50% given in claim 1 infringed Art. 123(2) EPC 1973, since such a range was not disclosed in the originally filed documents of the patent in suit, which only disclosed a general range of 30% to 60% and a preferred range of 35% to 50%. The board held, however, that, according to the established case law, in the case of such a disclosure of both a general and a preferred range, a combination of the preferred disclosed narrower range and one of the part-ranges lying within the disclosed overall range on either side of the narrower range was unequivocally derivable from the original disclosure of the patent in suit and thus supported by it (see T 2/81, OJ 1982, 394; T 201/83, OJ 1984, 481; see also T 53/82, T 571/89, T 656/92, T 522/96 and T 947/96 all referring to T 2/81; see also T 1107/06). Thus claiming a range from 30-50% did not contravene Art. 123(2) EPC 1973. In the case in point, moreover, graphs indicated that the claimed range was in fact the most efficient one.

T 985/06 concerned amending the upper limit of a range, supported in the description as filed, to a new (lower) value not thus supported, by changing it from 1.05:1 to 1.4:1 to 1.05:1 to less than 1.4:1. The board acknowledged that "1.05:1 to 1.4:1" included all values within the stated range. However, the application as filed disclosed only the range in general; it did not specifically, and thus directly and unambiguously, disclose all values within it. The amendment therefore contravened Art. 123(2) EPC.

In T 329/99 the board stated that a clear distinction had to be made between the questions whether a particular embodiment was disclosed by an application, be it explicitly or implicitly, or/and whether that embodiment was merely rendered obvious by the application's disclosure (see T 823/96). A particular technical embodiment might be rendered obvious on the basis of the content of an application as filed without, however, belonging to its explicit or implicit disclosure and therefore without serving as a valid basis for amendments complying with the requirements of Art. 123(2) EPC 1973.

In the board's view in T 686/99 the application as filed disclosed in an undifferentiated way different categories of base oils without any pointer regarding the selection of one particular category thereof. Priority was not given to ester oils from the original host of equivalent base oils. Therefore the board came to the conclusion that combining in claim 1 a base oil mandatorily comprising ester oils with the hydrofluorocarbons listed in claim 1 resulted from a multiple selection within two lists of alternative features, namely of ester oils from the list of base oils and of hydrofluorocarbons from the list of refrigerants, thereby generating a fresh particular combination. The content of the application as filed was not to be considered to be a reservoir from which individual features pertaining to separate sections could be combined in order to artificially create a particular combination. In the absence of any pointer to that particular combination, this combined selection of features did not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed. (See also T 1206/01 ; and T 1041/07 as a clear reminder about the relevant question when assessing whether a particular combination of features was disclosed in a document.)

In T 962/98 the appellant argued that the claimed subject-matter derived from Example 1D and the content of the application as originally filed. In particular, tests carried out on the composition of Example 1D showed that the "four surfactants" could be applied in a more general context, present claim 1 being, furthermore, consistent with the description. The board did not rule out the possibility that there might be situations where some characteristics taken from a working example could 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.

In the case at issue it was, in the board's view, not possible to conclude without any doubt whether or not those four surfactants either could be singled out of the composition of Example 1D and used with other carriers or were only adapted to the specific composition disclosed in Example 1D. The skilled reader was given no guidance, either in Example 1D itself or in the more general description as to which components of Example 1D should be retained unchanged, and which could be varied at will. This situation of doubt was in contradiction with the requirement that an amendment be directly and unambiguously derivable from the application as filed. Nor could this conclusion be rebutted by the tests carried out on the composition of Example 1D. Contrary to the appellant's submissions, in order to assess whether an amendment complied with the requirements of Art. 123(2) EPC 1973, the question was neither whether or not a skilled person could design other compositions in the light of the directions given by the tests nor whether or not the amended subject-matter was consistent with the description.

In case T 619/05 the amendment concerned a feature not contributing to the solution of any technical problem by providing a technical effect. It was thus non-technical subject-matter. The term "subject-matter" in Art. 123(2) EPC, without a qualifier, seemed to indicate that this article applied to non-technical as well as technical subject-matter. Thus, any amendments concerning non-technical subject-matter should also be derivable from the patent application as filed. A difficulty in this connection was that a technically skilled person might not have the knowledge necessary in order to determine whether non-technical subject-matter had been added or not. Skills in a non-technical field might be required for deciding this issue. Since the members of a board of appeal were only required to be technically (or legally) qualified under Art. 21 EPC 1973, it would be up to the applicant (or patent proprietor) in such circumstances to provide evidence permitting a board to determine to its satisfaction how a person skilled in the relevant non-technical field would interpret the original patent application and the application (or patent) after amendment. In the present case the appellant did not provide any proof at all that the amendments would be admissible, since it neither replied to the board's communication nor was it represented at the oral proceedings.

In T 495/06 the appellant applicant's argument that the amendments were "not inconsistent" with the original disclosure failed to persuade the board, since the applicant thereby invoked a less stringent criterion for compliance with Art. 123(2) EPC than that developed in the jurisprudence of the boards of appeal, namely the question whether the amendment was "directly and unambiguously derivable" from the application documents as originally filed. In other words, the fact that an amendment was "not inconsistent" with the description was not a sufficient requirement for complying with Art. 123(2) EPC.

In T 824/06 the board stated that for an amendment to be allowable under Art. 123(2) EPC required its direct and unambiguous disclosure; reasonable plausibility was insufficient.

In T 314/07, the question arose whether the amendment of the claim directed to the absorbent material was nevertheless directly and unambiguously derivable from a passage of the application as filed not describing the final absorbent material as such but the preparation of the intermediate film used therefore. The particular characteristics of the intermediate film described in the application as filed could be automatically transferred to the final absorbent material only if these characteristics would remain unchanged throughout the process of preparing the absorbent material, in other terms, if the location of the surfactant in the intermediate film was not altered by the process steps leading to the final absorbent material, such as aperturing and bonding the film to the other parts of the article. The board concluded that Art. 123(2) EPC was infringed.

In T 759/10 it had to be examined whether there was a clear and unambiguous implicit disclosure in the application as filed providing a basis for the amendment from "comprises" to "consists essentially of". The appellant argued that the term "comprising" encompassed three alternatives, namely (i) "comprising", (ii) "consisting of" and (iii)"consisting essentially of", and that each of these alternatives would immediately come to the skilled person's mind when reading the term "comprising". The term "comprises" was therefore in itself already a sufficient basis for the term "consists essentially of". The board could not accept this argument as each term had a different technical meaning, namely (i) that any further component can be present ("comprises"), (ii) no further component can be present ("consists of") and (iii) specific further components can be present, namely those not materially affecting the essential characteristics of the texturizing agent ("consists essentially of"). Therefore the skilled person was not at liberty to choose whichever of the three terms he wished when reading the term "comprises". The board further, on the basis of detailed reasoning, refused the request for referral of questions to the Enlarged Board of Appeal. Although the board agreed with the appellant that the two boards in decisions T 472/88 and T 975/94 appeared to have considered the term "comprises" in itself to be a sufficient basis for the term "consists essentially of", the jurisprudence of the boards had further developed since these two decisions, in particular by way of the two later decisions of the Enlarged Board of Appeal in G 2/98 and G 1/03. In line with these decisions of the Enlarged Board of Appeal, more recent decisions of the boards of appeal, e.g. T 868/04, T 725/08 and T 903/09, had applied the criterion of clear and unambiguous disclosure to decide on the allowability of the amendment of the term "comprises" to "consists essentially of". Consequently, a uniform approach had been developed by the jurisprudence, according to which an amended feature must, explicitly or implicitly, be directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed in order to be allowable under Art. 123(2) and 100(c) EPC.

See also T 1170/07, where it had to be established what the term "consisting essentially of", which could not be found in the original application, meant in the context. The board recalled on this occasion that claims should be read in a technically reasonable way. It concluded in this case that the substitution of "consisting essentially of" for "comprising" was allowable under Art. 123(2) EPC.