5.3.3 Subject-matter of amendment not combining with the originally claimed invention

In T 442/95 the appellants submitted new claims, based on subject-matter which did not appear in the claims as filed. They submitted that the description of this newly claimed subject-matter was to be found in the description. In the board's judgment, the subject-matter claimed had not been searched and did not combine with the originally claimed and searched groups of inventions to form a single general inventive concept. There was no need at this stage to investigate whether the application as filed provided support for such a claim, because under R. 86(4) EPC 1973 the claim was not admissible. The only path open to the appellants was to pursue the subject-matter of said claim in the form of a divisional application.

In T 353/03 the examining division had stated in its decision of refusal that the new feature in claim 1 had not been searched and that, for that reason, the application was refused according to Art. 97(1) EPC 1973 in conjunction with R. 86(4) EPC 1973. The board found that in its decision the examining division did not take into account the fact that R. 86(4) EPC 1973 mentioned another condition which also had to be fulfilled for amended claims to be rejected, namely that the unsearched subject-matter did not combine with the originally claimed invention to form a single general inventive concept (lack of unity). There was no discussion in the appealed decision as to why the subject-matter of new claim 1 was not in unity with original claim 1. The board came to the conclusion that the appealed decision was not reasoned within the meaning of R. 68(2) EPC 1973.

In T 333/10 the board found that the subject-matter of amended claim 1 could not be considered to have been searched and it did not combine with any of the originally claimed inventions to form a single general inventive concept. The appellant referred to T 2334/11 and argued that, in a case like the one before it, no "a posteriori" unity judgment was to be made; rather, it was to be generally examined if the added feature taken from the description combined with the originally claimed invention to form a single general inventive concept focused on in the claims and description as originally filed. The board noted that the claims as originally filed had been found to lack unity by the search division. It also stated that the case in hand concerned the replacement of some of the features from the combination of features on which the search was based by features which might not be considered as corresponding special technical features within the meaning of R. 44(1) EPC and which could not be expected to constitute a pure limitation of one of the searched inventions. In contrast, T 2334/11 concerned a factual situation in which added features restricted the scope of the searched subject-matter. This difference had also been addressed in T 2334/11, which essentially stated that the case law concerning R. 137(5) EPC distinguished between cases in which the claimed subject-matter was substantially changed, in particular by replacement or omission of a feature in a claim, and which could give rise to an objection under R. 137(5) EPC, and cases which concerned the pure limitation or concretisation of a claim by adding a feature disclosed in the application as originally filed, and which did not normally cause lack of unity with the originally claimed invention within the meaning of R. 137(5) EPC. In the case in hand, the board did not see a limitation or concretisation of any of the four inventions which had initially been searched and which could have been pursued by the appellant. The board noted that T 2334/11 could not be understood to the effect that the amendment of an independent claim by a feature extracted from the description was generally admissible under R. 137(4) EPC if the subject-matter of the independent claim had been searched and lacked novelty with respect to a prior-art document. Instead, the board in T 2334/11 emphasised that – in such cases – it always had to be examined whether the added feature was linked to the general inventive idea that can be deduced from the claims and description as originally filed. Hence, the amended set of claims was not admissible.