1.8.1 Replacing specific feature with more general term – no inclusion of undisclosed equivalents

In T 416/86 (OJ 1989, 309) it was held that the fact that a technical means was known did not take away the novelty of its equivalents even if the equivalents were themselves well known. It followed that the equivalents of a disclosed technical means had to be considered new and therefore not disclosed if they were not mentioned in the original documents. In accordance with these principles, the board decided that the replacement of a specific feature disclosed in the invention by a broad general statement was to be considered as an inadmissible amendment under Art. 123(2) EPC 1973 when this general statement implicitly introduced for the first time specific features other than that originally disclosed. Therefore, the substitution in the claim of a structurally defined element by its known function (or disclosed function) was considered contrary to Art. 123(2) EPC 1973. See also T 694/07 and T 2537/10.

In T 265/88 the board refused to allow originally undisclosed equivalents to be added by using a wider technical term in place of the single technical means originally disclosed. Similarly, in T 284/94 (OJ 1999, 464) the board stated that an amendment which replaced a disclosed specific feature either by its function or by a more general term and thus incorporated undisclosed equivalents into the content of the application as filed, was not allowable under Art. 123(2) EPC 1973.

In T 157/90 and T 397/89 it was stressed that it was insufficient for the generalisation of a feature to have only formal support in the application as filed. If, for example, the application as filed only described specific embodiments, and the feature's general applicability was not evident to the skilled person, then generalisation could not be allowed.

In T 685/90 the board stated that specific equivalents of explicitly disclosed features did not automatically belong to the content of a European patent application as filed, when this content was used as state of the art according to Art. 54(3) and (4) EPC 1973 against a more recent application. It therefore concluded that such equivalents could not belong to the content of a European patent application either, when this content was assessed to determine whether an amendment was admissible under Art. 123(2) EPC 1973. On the prohibition of including equivalents, see also T 673/89.

In T 40/97 the board considered that in a case where a number of generally similar embodiments were discussed in equivalent terms, the person skilled in the art would, in normal circumstances and when nothing pointed to the contrary, notionally associate the characteristics of an element of one embodiment described in some detail with the comparable element of another embodiment described in lesser detail.

In T 653/03 the original term "diesel engine" in claim 1 was replaced by the term "combustion engine". The board decided that the treatment of exhaust gas in the original application was always related to a diesel engine, and it could not be inferred by the skilled person that the subject-matter of the granted patent extended to a method which was suitable for any type of combustion engine. The generalisation was not admissible.

In T 868/07 the board allowed the replacement of an undisclosed feature by a more general feature disclosed in both parent and divisional applications. The board found that the general feature had been disclosed in the same context in the description and in the figures of the parent application as filed; Art. 76(1) EPC had therefore been complied with. Since the more general feature was disclosed in the same context in the divisional application as filed, the board saw also no reason for an objection under Art. 123(2) EPC.

In T 714/08, with regard to the second auxiliary request, it was not disputed that the application as filed did not disclose in general terms the association of the three particular compounds. The appellant nonetheless asserted that amended claim 1 was supported in example 6 in the application as filed by the disclosure of a particular composition incorporating these three compounds. The board considered that, while example 6 in the application as filed certainly described a composition incorporating the three particular compounds defined in amended claim 1, it was still necessary to establish whether a specific example of that kind could constitute an adequate basis for the generalisation adopted in amended claim 1, which provided in particular that the three compounds could be present in any quantities and possibly in association with other couplers and oxidation bases. The board concluded that, in the light merely of the information made available to the skilled person by the disclosure in this example, the amendment introduced technical information which the skilled person would not have been able to derive, directly and unequivocally, just from the disclosure in example 6 in the application as filed. This was also in line with the conditions set out in T 962/98. The board concluded that Art. 123(2) EPC had been contravened.

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