1.9.4 Further examples of allowable extractions of isolated features from a set of features

In the above-mentioned decision T 1408/04, the board considered, with regard to the third auxiliary request, 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 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. 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 further cases when a range is formed by taking an isolated value from an example, see also chapter II.E.1.5.2.

For further examples where the board considered that the extraction of isolated features from a set of features was not an unallowable intermediate generalisation, see e. g. T 300/06 and T 266/12.