1.9.3 Further examples of unallowable intermediate generalisations

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. Cited e.g. in T 163/13.

In T 448/16 the board emphasised that the idea of added feature f had to be at least implicitly disclosed in the parent application as a teaching that the skilled person would immediately recognise as distinct and separable for it to be introduced in isolation into claim 1. The board did not consider that the skilled person, without foreknowledge of what they are looking for, would immediately identify the feature in question as a distinct and separable aspect of the embodiment from which it was isolated.

In T 1365/16 the board held that whether and how the skilled person would generalise the embodiment of Figure 8 was neither inherent nor implicit from the disclosure as filed, but concerned matters (if any) related to obviousness. This was however not a sufficient basis to comply with Art. 123(2) EPC (G 2/10, OJ 2012, 376). In the boards view, in particular the considerations of T 1538/12 (regarding general statements at the end of the description burdening the skilled reader with having to work out which combinations of features from the detailed embodiments might be claimed together) applied mutatis mutandis to the general statement that "the invention ... may equally be utilized on symmetric key agreement protocols".

For further examples of unallowable intermediate generalisations, see 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 (feature omitted although its function was presented as being essential to achieving the desired result), T 191/04 (no hint for skilled reader that the claimed robot could be associated with a milking box without having a further feature), T 200/04 (nothing in the description indicating that the features omitted in the claim, as compared to the examples, were not essential), T 1164/04 (isolated feature disclosed only in combination with other features), T 911/06 (omission of a feature that is consistently presented in the application as necessary for a certain function), T 273/10 (no indication in the application as filed that the omitted features served no purpose, were optional or could be replaced by other technically equivalent means), T 775/17 (isolated feature was inextricably linked to the other features defined in the relevant example).