1.15. "Comprises", "consists of", "consists essentially of", "contains"

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 refused the request for referral of questions to the Enlarged Board. 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 in G 2/98 (OJ 2001, 413) and G 1/03 (OJ 2004, 413).

In line with these decisions of the Enlarged Board, more recent decisions of the boards of appeal, e.g. T 868/04, T 725/08 and T 903/09, have applied the criterion of clear and unambiguous disclosure to decide on the allowability of the amendment of the term "comprises" to "consists essentially of". These decisions considered that this criterion is not automatically fulfilled by the term "comprising" alone. The board in T 725/08 found that, where the term "consisting of" was not disclosed explicitly, replacing "mixture comprising" with "mixture consisting of" was permitted, provided that the original application had not envisaged any ingredients other than those mentioned in the mixture. In T 1594/21 the board applied the principle set out in decision T 725/08 and concluded that, since the initial application had disclosed at least one other ingredient (triethanolamine) not present in claim 1, the application as filed had not directly and unambiguously disclosed the composition as defined in claim 1.

In T 44/20 the board agreed with the observation in T 759/10 that the terms "comprising" and "consisting of" had different technical meanings, the former allowing the presence of further components and the latter excluding such further components, and that the skilled person was not at liberty to attribute whichever of these meanings they desired when reading the term "comprises". As further pointed out in T 759/10, an amended feature must be directly and unambiguously derivable from the application as filed, which could only be assessed by reference to the application in question. The same standard was also applied in T 1634/13 and in T 957/22.

According to T 1271/13 it is today settled that the term "comprising" is not generally accepted as direct and unambiguous basis for an amendment to "consisting essentially of".

In T 56/08 the board rejected the respondent's argument that the verb "to contain" had a more restrictive meaning than the verb "to comprise"; the board pointed out that the general meaning of the verb "to contain" was "to have in it", "to hold", "to include", "to encompass" or "to comprise".

In T 1170/07 "consisting essentially of" was substituted for "comprising". Before evaluating whether the original disclosure in its entirety specifically disclosed the claimed unit dosage form consisting essentially of tetrahydrolipstatin, 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. In the case at issue, the expression "consisting essentially of" excluded the presence of further active agents useful in the treatment of the specific disease concerned but allowed the presence of additional compounds forming the carrier for the active agent. The board concluded in this case that the substitution of "consisting essentially of" for "comprising" was allowable under Art. 123(2) EPC.

In T 108/14 the board distinguished the case at issue from the one in T 1170/07 because it was not directly and unambiguously derivable from the application as filed, which "active agents" were useful. Furthermore, the board referred to a line of jurisprudence (e.g. T 147/22, T 1095/09, T 759/91, T 522/91, T 472/88) according to which the expression "consisting essentially of" was found to be clear and to allow the presence of other components in addition to the components mandatory in the claimed composition, provided that the essential characteristics of the claimed composition were not materially affected by their presence. However, in the case at issue, the application as filed was silent as regards the components which, in addition to those defined in claim 1 at issue, could be allowed in the claimed refractory without affecting its essential characteristics.

In T 107/14 the appellant (opponent) argued that claim 1 extended beyond the content of the application as filed because it was directed to an alloy "consisting of" the given elements, whereas claim 1 as originally filed related to an alloy "comprising" the given elements. The board held that, since the originally filed claim 1 already disclosed that the rest of the composition consisted of Ni, not allowing for the presence of further elements, and thus was already directed to closed compositions, the composition stipulated by claim 1, "consisting of" the given elements, was already disclosed in the application as originally filed.

In T 1634/13 the claim as granted combined the subject-matter of various claims as filed, with the terms "comprising" and "containing" being replaced by the terms "consisting in" or "consisting of". The board held that specific examples in the application taught that the terms "comprising"/"containing" included the term "consisting" as a particular, originally disclosed meaning. While it was true that the change in wording restricted the subject-matter with respect to the original wording, such a restriction was not objectionable under Art. 123(2) EPC. In particular, there had been no singling out within the meaning of G 2/10.

In T 1173/17 "comprising" was replaced by "consisting of" in claim 1 of auxiliary request 2. The board distinguished its case from T 107/14 and T 725/08 and considered that the subject-matter of claim 1 was not directly and unambiguously derivable from the original application.

Regarding the interpretation of "comprising (substantially)", "consisting (essentially) of", "containing", see chapter II.A.6.2.