3. Amendments in claims
3.3 Deletion of part of the claimed subject-matter
It is permissible to delete parts of the claimed subject-matter if the corresponding embodiments were originally described, e.g. as alternatives in the claim or as embodiments explicitly set out in the description.
Example:
Original application: |
"A polymer blend XY ... containing, as a filler, graphite, talc, asbestos or silica" |
Prior art: |
"A polymer blend XY ... containing asbestos". |
Limited claim: |
"A polymer blend XY ... containing, as a filler, graphite, talc or silica". |
The deletion of alternatives from more than one list is only allowable if this does not result in the creation of new technical information that is not directly and unambiguously derivable from the application as originally filed.
In particular, limitations that do not result in the singling out of a particular combination of specific features but maintain the remaining subject-matter as a generic group which differs from the original group only by its smaller size will normally fulfil the requirements of Art. 123(2) EPC.
Deletion of part of the claimed subject-matter resulting in a combination of specific features may be allowable if the application as filed provides a pointer towards that particular combination, e.g. by reference to particular embodiments.
These principles also apply to the combination of features resulting from dependent claims.
Example
Original claim 1 |
"A composition for therapeutic use comprising a therapeutic agent and a glass-forming carbohydrate." |
Original claim 22 |
"A composition according to claim 1 wherein the therapeutic agent is selected from the group enzymes, biopharmaceuticals, growth hormones, growth factors, insulin, monoclonal antibodies, interferons, interleukins and cytokines." |
Original disclosure |
In the description, inhalation is listed as one of several ways of administration. In the description, insulin is listed as one of several therapeutic agents. |
Limited claim 1 |
"A composition for therapeutic use suitable for administration by inhalation comprising a therapeutic agent and a glass-forming carbohydrate". |
Dependent claim 10 |
"A composition according to claim 1 wherein the therapeutic agent is insulin" |
The limitation to inhalation in claim 1 results from a choice from one list and has a basis in the application as originally filed.
The combination of the subject-matter of dependent claim 10 with the subject-matter of claim 1 results from a selection from multiple lists which is not disclosed directly and unambiguously in the application as originally filed.
The number of amendments held to have been combined to arrive at the amended claimed subject-matter is not decisive in order to assess whether the claimed subject-matter extends beyond the content of the application as filed. What is required is an analysis of whether the claimed subject-matter is explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.
Wherever possible, the claim should be limited by a positive indication of what subject-matter remains instead of stating what is being deleted from the subject-matter (as a disclaimer would do).
Example:
– "... a polyether of molecular weight from 600 to 10 000" restricted to "... above 1 500 to 10 000" (T 433/86).