1.10.1 Specific term or embodiment derived from generic disclosure

It is a generally established principle in the case law of the boards of appeal that a generic term or embodiment does not disclose a specific term or embodiment unless the application teaches otherwise (T 88/12). In the case in hand in T 88/12 the generic term "a laundry machine" did not disclose the specific term "a drying machine".

In T 367/92 the board rejected an amendment because it contained a specific term which could not be considered to be clearly and unambiguously derivable from the originally disclosed generic term. In this case the issue 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 187/91 the invention and its preferred embodiments had been described throughout the application as filed as having more than one light source. However, there was an indication in the decription that although the preferred embodiment of the invention was shown as having three light sources, "it will be understood that more or less sources [...] may be utilized". The board held that a specific example (one light source) within a generic disclosure (more or less than three light sources) forming part of the description of the invention in an application as filed is part of the content of the application as filed if the skilled reader would seriously contemplate such specific example as a possible practical embodiment of the described invention, having regard to its context in the remainder of the application as filed, and subject to any understanding of the skilled reader to the contrary. In the case at issue the board held that the skilled reader of the application would seriously contemplate the use of only one light source.

For cases where the boards came to the contrary conclusion that the skilled person would not seriously contemplate the respective specific choice which was claimed, see e.g. T 725/99 and T 1038/01.

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