Zusammenfassung von EPC2000 Art 123(2) für die Entscheidung T1762/21 vom 14.02.2024

ee also abstract under Article 88(4) EPC. In T 1762/21 the appellant (opponent) argued that claims 1 and 7 of the main request had inadmissibly omitted a number of features which had been presented together with the claimed features in the application as filed and which were important for the functioning of the claimed breast tomosynthesis system. This amounted to an intermediate generalisation. The board explained that when assessing the allowability of an intermediate generalisation, it had to be established whether, because of this generalisation, the claim presented technical information which extended beyond what was directly and unambiguously disclosed in the application as filed, be it explicitly or implicitly, to the skilled person using common general knowledge. This was the "gold" standard for assessing whether any amendment fulfilled Art. 123(2) EPC (G 2/10). G 1/93, referred to by the appellant, dealt with the conflicting requirements of Art. 123, paragraphs (2) and (3), EPC. It did not prescribe any special criteria for the assessment of intermediate generalisations. The skilled person was presented with subject-matter extending beyond the application as filed when an amended claim included only some features of an originally disclosed combination and the features left out of the claim were understood by the skilled person to be inextricably linked to the claimed ones. This was the case if the skilled person would have considered the omitted features as necessary to achieve the effect associated with the added features. In such a situation, the amended claim conveyed the technical teaching that the effect could be obtained with the claimed features alone. This was in contradiction with the original disclosure, according to which the whole combination of features was needed. The passage concerning intermediate generalisations in chapter H-V, 3.2.1 of the Guidelines had to be understood in this context. In the case in hand, the invention as claimed in independent claims 1 and 7 of the main request was directed to a breast tomosynthesis system and a method of acquiring breast tomosynthesis x-ray images with such a system. In the original disclosure, the features of these claims related specifically to optimising the acquired images by acting on the focal spot. Features in the description relating to other aspects of the system, such as the way in which the x-rays were generated or the way in which the breast was fixed in place on the detector, could be left out of the claims as long as they were not relevant to the optimisation, even if they contributed to the general functioning of the tomosynthesis system. Hence, the board concluded that the subject-matter of claims 1 and 7 of the main request did not extend beyond the content of the application as filed.