T 0524/17 - Embodiments

Key points

• The opponent argues that claim 1 is based on a combination of features that are disclosed only individually in the application. In particular, the features would be picked from different embodiments.
• The Board: “The argument relating to the alleged "picking" from different embodiments essentially boils down to applying the literal meaning of the expression "embodiment", i.e. relating to a specific combination of features disclosed in the application, such as a working example. Conversely, in the application as filed underlying the patent in suit, the expression "embodiment" does not relate to such a specific set of features, but rather refers to preferred features of the invention described therein”
• The  Board: “[In the application as filed] the expression "in one embodiment" refers to a general teaching. This construction is supported by the fact that in these passages the expression "in one embodiment" is not followed by a specific combination of features, but discloses instead preferred shapes such as a sheet or to preferred values of a single feature such as the brass texture intensity etc. Thus, these passages relate to general teachings of the preferred features of the invention as disclosed in the application as filed which are combinable without going beyond the content of the application as filed.”

EPO T 0524/17 -  link

Reasons for the Decision

Main request (patent as granted)

1. Article 100(c) EPC

1.1 While there is agreement amongst the parties that all the features of claim 1 are disclosed individually in the application documents as originally filed, appellant 2 submits that: (i) the features were picked from different embodiments, (ii) claim 1 contained a specification of a general observation, and (iii) a feature presented in the originally filed documents as inextricably linked with one of the features now present in claim 1 was not present therein.

1.2 Ad (i)

The argument relating to the alleged "picking" from different embodiments essentially boils down to applying the literal meaning of the expression "embodiment", i.e. relating to a specific combination of features disclosed in the application, such as a working example. Conversely, in the application as filed underlying the patent in suit, the expression "embodiment" does not relate to such a specific set of features, but rather refers to preferred features of the invention described therein, i.e. at least in the passages referred to by appellant 2 (e.g. paragraphs [0051], [0080] and [0081]), the expression "in one embodiment" refers to a general teaching. This construction is supported by the fact that in these passages the expression "in one embodiment" is not followed by a specific combination of features, but discloses instead preferred shapes such as a sheet or to preferred values of a single feature such as the brass texture intensity etc. Thus, these passages relate to general teachings of the preferred features of the invention as disclosed in the application as filed which are combinable without going beyond the content of the application as filed. This is also supported by the examples: in particular Sheet 1 of Example 1 (according to the invention) is fully encompassed by the set of features now present in claim 1.