1.9. Intermediate generalisations

According to established case law (as summarised e.g., in T 219/09 or T 1944/10), it will normally not be allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description (T 1067/97, T 714/00, T 25/03, T 2095/12).

Amended subject-matter that amounts to a generalisation of a particular embodiment disclosed in the original application but is still more specific than the original definition of the invention in general terms is often called an "intermediate generalisation" (see e.g. T 461/05, T 191/04; see also T 2311/10) and sometimes an "intermediate restriction" (see T 461/05, T 879/09, T 2537/10). Other decisions understand "intermediate generalisation" to refer to an undisclosed – and thus unallowable – combination of selected features lying somewhere between an originally broad disclosure and a more limited specific disclosure (T 1408/04). An intermediate generalisation is different from a simple generalisation (as e.g. in T 910/03, T 404/03), since in the former case a definition of the invention in general terms forms part of the original disclosure (T 461/05).

In T 1238/08 the board observed that it would be contrary to the purpose of Art. 123(2) EPC to allow undisclosed intermediate generalisations only because the application as originally filed had not been drafted to contain appropriate fall-back positions.

An intermediate generalisation is justified only in the absence of any clearly recognisable functional or structural relationship among the features of the specific combination (see e.g. T 1067/97, T 25/03, T 1561/14, T 2003/14) or if the extracted feature is not inextricably linked with those features (see e.g. T 714/00, T 2154/11 and T 2287/11). See also e.g. T 2095/12, T 2489/13 and T 152/16 referring to both criteria, and the abstracts on T 1500/07 and T 500/11 below.

The board in T 962/98 held that an intermediate generalisation was admissible only if the skilled person could recognise without any doubt from the application as filed that those characteristics were not closely related to the other characteristics of the working example and applied directly and unambiguously to the more general context (often cited, see e.g. T 144/08, T 313/09, T 879/09, T 2185/10, T 2489/13). In other words, in order to be acceptable, this intermediate generalisation had to be the result of unambiguous information that a skilled person would draw from a review of the example and the content of the application as filed.

In T 1906/11 the board emphasised that classifying an amendment as an "intermediate generalisation" or otherwise, for example as an "omission of an originally claimed feature" or a "multiple selection from two groups of alternative features" did not permit, as such, the drawing of any conclusion about the allowability of this amendment under Art. 123(2) EPC. According to that decision, the only relevant question would be whether a skilled person faced with the amended version of the application or patent, as compared to a skilled person having seen only the version originally disclosed, would derive from that amended version any additional technically relevant information. Only if such additional information was derivable can there be an infringement of Art. 123(2) EPC (cited in T 802/13). In T 248/12 the board stated that in respect of the "technical relevance" of the added information, case T 1906/11 could not be understood to define a new standard for judging amendments with respect to Art. 123(2) EPC since this would be at odds with the "gold standard" in G 2/10, OJ 2012, 376. See also T 1791/12 where the board considered that no divergent interpretations of the principles contained in G 2/10 for judging amendments were apparent in T 1906/11. The board in T 1471/10 considered that the ultimate standard for assessing compliance with the requirements of Art. 123(2) EPC in the case of an intermediate generalisation remains the "gold standard" (as set out in chapter II.E.1.3.1; see also T 2392/10, T 1791/12).

In T 2311/10 the board held that, in the case of an intermediate generalisation, the three-point or essentiality test was unhelpful or even misleading. See also T 1840/11, T 2095/12 and T 2489/13. On the three-point or essentiality test in general see in this chapter II.E.1.4.4 above.

According to the appellant in case T 99/09, the added feature was to be regarded as an invisible term without any additional technical content. The board observed that the feature had been disclosed in the application as filed only in combination with other structural or functional features. It was never disclosed in isolation. The application as filed provided no basis for a generalisation. Furthermore, the board pointed out that this feature had a generally established technical meaning in the relevant field. Finally, the board concluded that the term in question, although vague, did make a technical contribution to the claimed subject-matter and could not be regarded as "invisible" (in breach of Art. 123(2) EPC).

In T 284/94 (OJ 1999, 464) the board stated that an amendment of a claim by the introduction of a technical feature taken in isolation from the description of a specific embodiment was not allowable under Art. 123(2) EPC 1973 if it was not clear beyond any doubt for a skilled reader from the application documents as filed that the subject-matter of the claim thus amended provided a complete solution to a technical problem unambiguously recognizable from the application (see also T 1644/11).

In T 25/03 the board concluded that since claim 1 resulted from the extraction of isolated steps from the specific combination (here a sequence of steps) disclosed as essential for obtaining the desired result in the embodiment of Figure 4, and since the appellant had not referred to other parts of the application as filed that could support the proposed amendment, and no such parts had been identified by the board, claim 1 as amended in accordance with the first auxiliary request did not meet the requirements of Art. 123(2) EPC 1973.

In T 582/91, the respondent (opponent) was of the opinion that when restricting a granted claim by introducing subject-matter from the dependent claims all the features of the dependent claims in question should be incorporated in the new independent claim. Contrary to this opinion the board considered that one feature of a dependent claim could be readily combined with a preceding independent claim as long as the skilled person recognised that there was clearly no close functional or structural relationship between the one feature of that dependent claim and its other features, or between that one feature and the teaching of other dependent claims referred to in that dependent claim. If this was the case, no objections under Art. 123(2) EPC 1973 arose (see also T 938/95; and T 288/89 which concerns the combination of an independent claim with a dependent claim, without including the features of the higher dependent claim).

In T 1408/04 a specific selection had been made in amended claim 1 from the broad range of topsheet/backsheet structures within the scope of claim 1 as granted. The board considered that, to avoid an intermediate generalisation (i.e. an undisclosed combination of selected features lying somewhere between an originally broad disclosure and a more limited specific disclosure), all the necessary features of the specific selection must be included in the claim. The selection in this case came from the drawings, which, however, also showed a particular (albeit commonly used) type of topsheet/backsheet connection. This particular connection was lacking in the claim. Thus an intermediate generalisation was present. With regard to the third auxiliary request, the board considered that the particular definition of the topsheet/backsheet sealed connection was not a generalisation of the content of the originally filed application. The skilled person would immediately realise that the specific topsheet/backsheet sealed configuration as shown in Figures 1 to 3 was generally applicable also to other aspects of the invention and was not limited only to the set of features shown in these Figures. The other elements present in these Figures were not inextricably linked to the topsheet/backsheet sealed configuration, as also confirmed by the description, which categorised these features as optional.

In T 461/05 the board found that claim 4 as amended defined subject-matter which was less general than that defined by claim 1 in the original version but more general than the particular embodiment corresponding to case 2a as disclosed in the description and the subject-matter of claim 6 as originally filed. Claim 4 thus represented a generalisation, also referred to in patent jargon as an intermediate generalisation. The expression intermediate generalisation conveyed the idea that the amended subject-matter was a generalisation of a particular embodiment, disclosed in the original application, which was at an intermediate point between that particular embodiment and the definition in general terms of the invention as originally disclosed. In the case at issue the amendment comprised the omission of certain characteristics of the combination of features of the particular embodiment. The board held that the provisions of Art. 123(2) EPC 1973 precluded such an amendment only where the amendment presented the skilled person with new information which did not follow directly and unambiguously from the application as originally filed. A restriction of a claim by adding a number of features from a particular embodiment originally disclosed did not in itself introduce such new information. By contrast, the omission of the remaining features of the embodiment would introduce new information if the omitted features were necessary to carry out the particular embodiment of the invention. In this case, the omission of these features would present the skilled person for the first time with the information that, contrary to what had originally been disclosed, these features were not necessary in order to carry out the particular embodiment of the invention. The board saw no reasons why these omitted features would be necessary to carry out the invention. Therefore, claim 4 as amended was in conformity with Art. 123(2) EPC.

In T 1387/05 the parent application disclosed two different branches of video signal transmission. The appellant's (applicant's) argument was based on the underlying understanding that the parent application disclosed two distinct branches as alternatives, and that the claims of the divisional application at issue concerned only the first branch. The board stated, however, that the parent application did not directly and unambiguously present alternative apparatuses corresponding to these two alternative branches. Instead it disclosed a recording/reproducing processing apparatus with the functionality that a broadcast wave might be transmitted and/or received. The board accepted the appellant's argument that decision G 1/06 (OJ 2008, 307) did not state that subject-matter had to be separately derivable from what was disclosed in each of the preceding applications as filed. However, this did not mean that features which were disclosed in a given context might be claimed in a different context or specific features might be generalised without a proper basis in the parent application as filed. As the same principles were to be applied for both Art. 76(1) EPC and Art. 123(2) EPC 1973, it followed that it was normally not allowable under Art. 76(1) EPC 1973 to extract features from a set of features which were originally disclosed only in combination in a parent application and to claim such extracted features in a divisional application isolated from their context, namely the combination disclosed in the parent application.

In the consolidated cases T 1500/07, T 1501/07 and T 1502/07, the board applied the established case law of the boards of appeal concerning Art. 123(2) EPC to the case of Art. 76(1) EPC 1973. The board stressed that where newly claimed subject-matter was based on the extraction of features in isolation from a set of features originally disclosed in combination (e.g. in a specific embodiment in the description) the criterion that this subject-matter had to be directly and unambiguously derivable by the skilled person from the original disclosure was met, if there was no clearly recognizable functional or structural relationship between the features, i.e. when they were not inextricably linked. What is decisive is determining which specific combinations of features were originally taught by the parent, and whether the skilled person recognises immediately and unequivocally from the totality of the disclosure when read contextually and using his common general knowledge that, and which, certain features are incidental to the proper functioning of these specific embodiments, and that these can be dispensed with without consequence for the remaining features. In the case before the board, the fact that the claimed features were not given any special prominence, and that they were functionally and structurally bound to the other, remaining features indicated that these criteria were not met.

In T 273/10 the proposed amendments consisted of adding to the subject‑matter of claim 1 characteristics derived from a particular embodiment but, at the same time, omitting other characteristics which had been described in close combination with those added. Referring to the boards' case law, in particular that established in T 461/05, the board concluded that, in the case before it, the omission of the characteristics from the claimed subject‑matter was contrary to Art. 123(2) EPC since there was no indication in the application as filed that they served no purpose, were optional or could be replaced by other technically equivalent means.

In T 879/09 the board stated that a patent application described an invention in general terms together with one or more detailed embodiments. In order to overcome an objection of lack of novelty and/or inventive step the applicant often adds some but not all the features from the detailed embodiments to the general disclosure. This results in an object that lies between the original general disclosure and the detailed embodiments. Such an intermediate restriction or generalisation is permissible under Art. 123(2) EPC only if the skilled person would recognise without any doubt from the application as filed that characteristics taken from a detailed embodiment were not closely related to the other characteristics of that embodiment and applied directly and unambiguously to the more general context (T 962/98). The test mentioned above was fulfilled, since the omitted features were not related to solving the problem addressed by the invention.

In T 500/11 the amendment in claim 1 at issue corresponded to the restriction of the range "between 50 to 10000 ppm of chromium" by the lower end value of 550 ppm. It was uncontested that there was a literal basis for this specific value in example 3 of the patent, however not in combination with the other features of amended claim 1. The question to be answered was whether the feature "550 ppm Cr" was inextricably linked to the other features defined in the relevant example of the patent. The board observed that all the features were parameters which might be varied individually and each of these variations would necessarily lead to a different result on the selectivity to TCS. If the feature "550 ppm chromium" was inextricably linked to specific other parameters of example 3, this would mean that the selectivity to TCS would only be achieved in the definite combination of "550 ppm chromium" with the specific other parameters of example 3. This, however, was manifestly not the case here. In the case at issue the aim of the invention – namely increasing the selectivity to TCS – was merely achieved by the addition of selected amounts of chromium to silicon and thus this feature was not "closely related to the other characteristics of the working example and applies directly and unambiguously to the more general context" as required in T 962/98. The current decision was also in line with T 273/10. It followed that the picking out of the value 550 ppm was plainly acceptable in the case at issue, with the consequence that the requirements of Art. 123(2) EPC were fulfilled. (For cases when a range is formed by taking an isolated value from an example, see also chapter II.E.1.5.2 "Forming a range with isolated value taken from example").

On the issue dealt with in this section, see also T 1004/01 (summarised above in this chapter II.E.1.5.2 "Forming a range with isolated value taken from example"), T 166/04, T 200/04, T 311/04, T 191/04, T 1164/04, T 98/05, T 876/05, T 300/06, T 1250/06, T 1001/01, T 1407/06, T 911/06, T 582/08, T 1582/08, T 1397/09, T 2085/09, T 88/10, T 2172/11, T 266/12, T 1587/12, T 2095/12, T 163/13, T 1162/13, T 802/13, T 2489/13, T 389/13.