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Guidelines for Examination

 
 

3.2.1 Intermediate generalisations

Extracting a specific feature in isolation from an originally disclosed combination of features and using it to delimit claimed subject-matter may be allowed only if there is no structural and functional relationship between the features.

When evaluating whether the limitation of a claim by a feature extracted from a combination of features fulfils the requirements of Art. 123(2), the content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate embodiments can be combined in order to artificially create a particular combination.

When a feature is taken from a particular embodiment and added to the claim, it has to be established that:

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the feature is not related or inextricably linked to the other features of that embodiment and 
the removal of the omitted features from the embodiment passes the three-point or essentiality test described in H‑V, 3.1 above, and
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the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim. 

These conditions should be understood as an aid to assessing, in the particular case of an intermediate generalisation, if the amendment fulfils the requirements of Art. 123(2). In any case it has to be ensured that the skilled person is not presented with information which is not directly and unambiguously derivable from the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art using his common general knowledge.

Example 1 

The amended claim relates to a heddle for the harness of a loom. The original claim was limited by introducing features that were disclosed only in connection with a specific embodiment in which the eyelet of the heddle had the shape of a spindle. This shape was not included in the amended claim. In the general part of the description it was also mentioned that the eyelet could also have other shapes such as an elliptic shape. Therefore the Board concluded that the amendment was allowable under Art. 123(2) (T 300/06).

Example 2 

The subject-matter of new independent claim 4 relating to a method of telepayment was limited with respect to original independent claim 1 by adding only some features of a specific embodiment disclosed in the application as originally filed. This was defined by the Board using the term "intermediate generalisation" or "intermediate restriction". The Board held that omitting features of an embodiment would introduce new information if these features are necessary for carrying out this embodiment. In the present case, the omitted features were considered to have their own recognisable function independent from the functioning of the rest of the system. Since they were neither presented as essential in the original application nor recognised as essential by the skilled person to carry out the invention, the Board considered that the requirements of Art. 123(2) were met (T 461/05).

Example 3 

Claim 1 relates to a water dispersible and flushable absorbent article. Amended claim 1 specifies that each of the first and second fibrous assemblies is a wet laid tissue. The application as filed referred, in connection with the first fibrous assembly, to a wet laid tissue in combination with other features (tissue is apertured; tissue is provided with fibrils or sufficient inherent porosity).

Since the first fibrous assembly is disclosed in the application as filed as being a wet laid tissue only in combination with other features which are not present in claim 1, the amendments made constitute a generalisation of the originally disclosed technical information and thereby introduce subject-matter extending beyond the content of the application as filed (T 1164/04).

Example 4 

Original claim 1 relates to a coating composition comprising at least one rosin compound, at least one polymer and an antifoulant.

After amendment a new claim was introduced relating to a method for preparing a coating composition comprising the mixing of at least one rosin compound, at least one polymer and an antifoulant. The only basis for the method is the examples. The Board observed that for some solutions the amount of added rosin was extremely low whereas for others it was extremely high. The subject-matter of the amended claim was considered to be an unallowable generalisation of the examples, since nothing in the description indicated to the person skilled in the art that the observed variations were not essential to make a coating composition (T 200/04).

Example 5 

Original claim 1 relates to a multi-processing system comprising a shared memory, a directory and a serialisation point. The serialisation point is defined in functional terms. Claim 1 was amended by adding features that were addressed in the description as part of the cache coherence strategy. The Board held that the incorporated features, albeit disclosed as such, had been isolated in an arbitrary manner from the overall disclosure of the cache coherent memory access architecture. At least one feature had been omitted although its function was presented as being essential to achieving cache coherence. Therefore amended claim 1 was not directly and unambiguously derivable from the original application (T 166/04).