1.9. Intermediate generalisations
1.9.1 Principles
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 or drawings of the original application (T 1067/97, T 714/00, T 25/03, T 2095/12, T 1365/16).
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 876/05, T 1587/12, T 1561/14, T 2003/14, T 879/18) or if the extracted feature is not inextricably linked with those features (see e.g. T 714/00, T 2154/11, T 2287/11, T 775/17). See also e.g. T 1397/09, T 2172/11, T 2095/12, T 2489/13, T 2313/13, T 1469/15, T 152/16 and T 1365/16, which refer to both criteria; see also 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 1144/08, T 313/09, T 879/09, T 2185/10, T 500/11, T 2489/13, T 1002/14, T 978/15). 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 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. 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 the case in hand, 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. See also T 273/10.
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.
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. This criterion was applied e.g. in T 1644/11, T 1818/11 and T 2561/11.
In T 1387/05 the board noted that 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. See also the abstract for the consolidated cases T 1500/07, T 1501/07 and T 1502/07 in chapter II.E.1.9.2 below.
- T 1762/21
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)
- T 1084/22
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, 10th 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.