1.9. Intermediate generalisations

Catchword:

For assessing an intermediate generalisation in an amended claim for compliance with Article 123(2) EPC it has to be established whether, because of this generalisation, the subject-matter of the claim extends beyond what was, be it explicitly or implicitly, directly and unambiguously disclosed to the person skilled in the art using common general knowledge in the application as filed. This is the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC (G 2/10, point 4.3 of the Reasons). If an amended claim comprises only some features of an originally disclosed combination and the features left out of the claim were understood, by the person skilled in the art, to be inextricably linked to the claimed ones, the claim includes subject-matter extending beyond the application as filed. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features. In such a situation the amended claim conveys the technical teaching that the effect can be obtained with the claimed features alone, which is in contrast with and extends beyond the original disclosure that the whole combination of features was needed. The criteria for assessing the validity of a priority for the subject-matter of a claim as set out in G 2/98, no matter whether or not the claim includes intermediate generalisations, correspond to the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which the priority is claimed. In the passage in point 4 of the Reasons of G 2/98 these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents. (Reasons, points 2.4 and 3.2)

Abstract

In T 1084/22 the patent concerned insulating glazing units, which typically consist of two glass sheets separated by a perimeter spacer. Specifically, it related to a method for creating such units. This involved providing a spacer body with adhesive on both sides in a storage container. Claim 1 was amended during examination to specify that the adhesive was a pressure sensitive adhesive.

The board was not convinced by the argument put forward by the appellant (patent proprietor) which aimed to show that the feature was implicitly derivable from the description.

The board found that the second line of argument submitted by the appellant was not convincing either. The appellant had submitted that the reference in the description of the application as filed to HBP8 (a US patent), which mentioned pressure sensitive adhesives, also provided an original basis for the added feature.

The board explained that the appealed decision referred to conditions developed in the case law for being able to incorporate features from a cross-referenced document (see in particular T 689/90). Thus, only under particular conditions would adding features from a cross-referenced document to a claim not be contrary to Art. 123(2) EPC, namely if (a) the description of the invention as filed left the skilled reader in no doubt that protection was sought or may be sought for those features; (b) that they implicitly clearly belonged to the description of the invention contained in the application as filed and thus to the content of the application as filed; and (c) that they were precisely defined and identifiable within the total technical information contained in the reference document.

The board viewed these conditions, along with alternative or reformulated criteria found in the cases cited in Case Law of the Boards of Appeal, 10^th ed. 2022, II.E.1.2.4, as different applications of the "gold standard". While different tests had been developed, they could only assist in determining whether an amendment complied with Art. 123(2) EPC, but did not replace the "gold standard" and should not lead to a different result. Thus, the board considered it sufficient and appropriate to apply the "gold standard" principle to this case.

In a case of incorporating features from a cross-d document, the "gold standard" essentially required that the skilled reader had to be able to directly and unambiguously derive which subject-matter of the incorporated document was part of the original application. In other words, which features of the application were to be taken from the referenced document.

Therefore, the question that the board needed to answer was whether, in the absence of any hindsight or knowledge of the amended claim, the skilled person reading the original documents would directly and unambiguously derive from the cross-reference to HBP8 that the adhesive's pressure sensitive nature was a feature to be incorporated from HBP8 into the original application. This required that when the skilled reader of the application as filed consulted HPB8 as instructed it was immediately clear to them that it was that feature and that feature alone that was to be included. If that feature was disclosed in a certain technical context in the cross-referenced document, then, applying the same standard as for intermediate generalisations, isolation of the feature was justified only in the absence of any clearly recognisable functional or structural relationship.

In the board's view it was neither immediately clear to the skilled person from the cross-reference to HBP8 that it was the feature of the adhesive being pressure sensitive that was to be included, nor that that feature could be taken out of its context in HPB8.

Hence, the board concluded that the amendment to claim 1 specifying the adhesive as "pressure sensitive" extended the patent's subject matter beyond the content of the original application.