T 1067/97 - Intermediate generalisation - #65

Citation rank: 65
No. of citations: 78

T 1067/93 concerns "intermediate generalisations". This term was developed by case law and it refers to amedments by which features taken from a specific embodiment are added to a broader claim in isolation, i.e., without adding the remaining features of that specific embodiment to the claim. Such amendents result in claims, which are more restricted than the original claim, but broader (i.e., more generic) than the specific embodiment. Their scope is in between ("intermediate") the specific embodiment and the broader claim.

In the underlying opposition case the proprietor amended claim 1 of the Main Request by introduction of the the feature

"a molar ratio [SiO2]/[M2O], which ranges from 1.0 to 1.5"

to claim 1. This feature was taken from a "particularly preferred embodiment" in which the above feature was part of the definition of a photographic developer solution, which further included  "a concentration of SiO2 of 1 to 4% by weight" and "a replenisher having alkali strength equal to or more than that of the developer".

The Board referred to established case law and stated that:

"... if a claim is to be restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features" (point 2.1.3 of the reasons)

Since the added feature of claim 1 of the Main Request had a functional relationship with the remaining features of the embodiment from which it was taken, the amendment was not allowed (Art. 123(2) EPC).

The proprietor also filed an Auxiliary Request, which contained the "molar ratio" feature above, and also the remaining features of the preferred embodiment. Since the features of the embodiment were added  to the claim in combination, the Auxiliary Request was found not to infringe Art. 123(2) EPC. The Auxiliary Request, however, lacked inventive step.

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Headnote:

none

The full text of the decision can be accessed here.