1.14.5 Shift in the information provided by the examples after amendment of claims

T 97/05 concerned an amendment of a claim resulting in a shift in the information provided by examples. During the opposition proceedings, claim 1 was modified by replacing the term "chemically" with "covalently" in order to specify the nature of the bond between the anionic groups and the core. The information provided by the description was that the bonding between the core and the anionic group was "chemical" and that one type or species of "chemical" bonding was "covalent". The term "chemically bonded" as employed in the general description of the application as filed encompassed, but did not specifically disclose, compounds in which the anionic moieties were "covalently" bonded to the core. In the board's view a consequence of the amendment of the claims by replacement of the generic term "chemically bonded" by the specific term "covalently bonded" was that the examples of the patent acquired by association information, i.e. that the anionic groups were covalently bonded to the core, which was not – even implicitly – contained by the same examples in the application as filed. Thus there was a shift in the information provided by the examples in the patent as amended according to the main request compared to that provided by the same examples in the application as filed, even though the examples themselves had not been modified (by analogy with T 1239/03). Therefore the main request did not meet the requirements of Art. 123(2) EPC 1973.

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