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 of Appeal. 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 of Appeal in G 2/98 (OJ 2001, 413) and G 1/03 (OJ 2004, 413). In line with these decisions of the Enlarged Board of Appeal, more recent decisions of the boards of appeal, e.g. T 868/04, T 725/08 and T 903/09, had 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 had considered that this criterion is not automatically fulfilled by the term "comprising" alone. In the case at issue in T 759/10, the replacement of the word "comprising" by "consisting essentially of" was found to contravene Art. 123(2) EPC, but the replacement of the word "comprising" by "consisting of" was allowed.

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 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 299/12 the board held that introducing a restriction in claim 1 to components (a) to (e) by the expression "consists essentially of", which was not explicitly mentioned in the application as filed, added subject-matter. The board noted that the respondent's (proprietor's) arguments relied on a preliminary selection of embodiments which would leave out of the scope typical compositions lacking any of the ingredients now considered as essential by claim 1. Moreover, by defining cross-linking agents as optional, claim 1 encompassed subject-matter which extended beyond the content of both the application and the parent application as originally filed. All of the selected examples on which claim 1 would be based appeared to contain triethanolamine (i.e. a cross-linking agent), thereby suggesting that, for the particular combination of components defined in claim 1, triethanolamine would be an essential feature.

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.

On issues of clarity raised by the terms "comprising (substantially)", "consisting (essentially) of", "containing", see chapter II.A.6.2.

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