Tuesday, 24 November 2015

T 978/15 - Intermediate generalization in a multipurpose fabric

This Examination appeal centers on an intermediate generalization. The main claim concerns a 'multipurpose fabric suitable for home textile, upholstery & apparel textile application'. The fabric had been further limited to have a "cover factor of 14"; this feature was taken from example 2 of the description.

In the statement of grounds the applicant admits that this is an intermediate generalization but also points out that intermediate generalization are nevertheless allowed under some conditions. Unfortunately, the board is not convinced that those conditions are met in the present case.

Reasons for the Decision

1. Main request, Claim 1 - Article 123(2) EPC

1.1 As set out in the communication informing the appellant of the Board's preliminary opinion on this issue, originally filed claim 1 does not include the feature concerning a cover factor of 14. In the description, only Example 2 (page 22, lines 12 to 25) specifies this cover factor for the textile substrate. Example 2 is specific with regard to the nature of the fibres (cotton fibre web) and to the conditions of manufacturing of the fabric ("whole structure is subjected to high pressure water jet streams with jet description of 0.1 mm/23 jets/inch, 0.1 mm/40 jets/inch and 0.1 mm/40 jets/inch results in maximum fibre rolling and pseudo yarn formation as shown in Figure 4, with very few traces of fibres on the bottom side of textile substrates"). The remaining examples (Examples 1, 3 to 14) do not indicate a cover factor for the textile substrate used therein and cannot be compared to Example 2 with regard to the manufacturing conditions.

1.2 Thus, no part of the application as filed provides a direct and unambiguous disclosure of the combination of a textile substrate with cover factor 14 and the further features of claim 1.

1.3 In its grounds of appeal, the appellant referred to T 962/98. In T 962/98 it was indeed decided that there may exist situations where some characteristics taken from a working example may be combined with other features disclosed in a more general context without necessarily creating an objectionable intermediate generalisation. It was further held that under Article 123(2) EPC such an intermediate generalisation is only admissible if the skilled person can recognise without any doubt from the application as filed that those characteristics are not closely related to the other characteristics of the working example and apply directly and unambiguously to the more general context.

1.4 The Board does not see any reason to depart from these principles in this case. It did however ask in its annex to the summons, how, in the present case, the skilled person was to recognise without any doubt from the application as filed that the cover factor specified for Example 2 applied directly and unambiguously in a more general context, i.e. was to ascertain whether the second of the two conditions for an intermediate generalisation being admissible, as set out in T 962/98 (cf. end of the preceding paragraph), was met.

1.5 No arguments in this respect have been submitted by the appellant. The Board considers that the cover factor is only disclosed in relation to Example 2. Therefore the Board is not convinced that the amendment introducing the term "cover factor 14" meets the conditions for an exception to the general rule regarding inadmissible intermediate generalisations as set out in T 962/98.

1.6 Thus, the Board accordingly maintains its view set out in the annex to the summon, i.e. that the subject-matter of claim 1 does not comply with Article 123(2) EPC.

This decision T 0978/15(pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T097815.20151103. The file wrapper can be found here. Photo "Rainbow Chiffon" by  Sherrie Thai obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. This decision, albeit on intermediate generalisation, illustrates one of the three criterions used by the Boards to determine whether there is added subject-matter:
    1) the original disclosure is not a reservoir of features combinable at will, cf. T 296/96 or T 1334/09
    2) the amendment must directly and unambiguously derivable from the original disclosure (the most used one), e.g. T 1724/08: There are plenty of other ones of the same kind
    3) The allowability of an amendment should be beyond any reasonable doubt, cf. T 1006/03 or T 465/07, all those decisions referring to T 383/88