5.4.3 Feature from the description not searched

In T 264/09 the board stated that if a feature which has not been searched and which further defines an element which was already part of a claim which had been searched, is taken from the description and added to this claim in order to overcome an objection under the EPC, e.g. lack of inventive step, this does not result in a claim which has been amended such that it relates to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept. The board thereby followed the well-established case law on the interpretation of R. 86(4) EPC 1973 (see e.g. T 708/00 (OJ 2004, 160), T 274/03, and T 141/04), it being noted that R. 86(4) EPC 1973 has the same wording as R. 137(4) EPC (as in force at the date the examining division took its decision), which, as from 1 April 2010, is included in R. 137(5) EPC. The board noted that the Guidelines for Examination were drafted accordingly; these explicitly mention the possibility of carrying out an additional search in connection with the examination of amended claims (T 2334/11).

In T 789/07 the board held that in order to search a claimed feature completely – as required by Art. 92 EPC and in line with the Guidelines – the search division must as a rule ascertain how the feature is to be interpreted in the light of the description and drawings. Only then can it arrive at a reasoned assessment about the amendments likely to be made to the claims during examination proceedings and within the framework of the original disclosure. This interpretation also forms the basis for comparison, with a view to R. 86(4) EPC 1973, with the originally claimed invention or group of inventions. The board also took the view that a claimed feature falling within the scope of the search must be regarded for R. 86(4) EPC 1973 purposes as searched, even if it was not in fact searched in a specific case (see also T 2334/11).

In T 353/03 the examining division had stated in its decision of refusal that the new feature in claim 1 had not been searched and that, for that reason, the application was refused according to Art. 97(1) in conjunction with R. 86(4) EPC 1973. The board found that in its decision the examining division did not take into account the fact that R. 86(4) EPC 1973 mentioned another condition which also had to be fulfilled for amended claims to be rejected, namely that the unsearched subject-matter did not combine with the originally claimed invention to form a single general inventive concept (lack of unity). There was no discussion in the appealed decision as to why the subject-matter of new claim 1 was not in unity with original claim 1. The board came to the conclusion that the appealed decision was not reasoned within the meaning of R. 68(2) EPC 1973.

In T 442/95 the appellants submitted new claims, based on subject-matter which did not appear in the claims as filed. They submitted that the description of this newly claimed subject-matter was to be found in the description. In the board's judgment, the subject-matter claimed had not been searched and did not combine with the originally claimed and searched groups of inventions to form a single general inventive concept. There was no need at this stage to investigate whether the application as filed provided support for such a claim, because under R. 86(4) EPC 1973 the claim was not admissible. The only path open to the appellants was to pursue the subject-matter of said claim in the form of a divisional application.

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