T 1271/13 - Consisting essentially of, and basis

Key points

• "[The] board cannot endorse [patentee's] argument that, in accordance with decision T 472/88, the original term "comprising" did, in itself, provide a sufficient basis for the amended wording "consisting essentially of". " 
• Edit 16.07: now with the correct case number T 1271/13. 

EPO T 1271/13  -  link

2.2 It is undisputed that the wording "consisting essentially of" is not explicitly present in application as filed. Consequently, it has to be established whether or not the original application contains an implicit but unambiguous disclosure of these features.

Following the jurisprudence of the boards of appeal, the terminology "consisting essentially of" in claim 1 has a particular meaning and is to be understood in the sense that, apart from the components (i), (ii) and (iii) explicitly listed, only certain types and amounts of other components may be present in the resin composition that do not materially affect the essential characteristics of the composition (cf. for example T 472/88, Reasons 3 and T 759/10, Reasons 3.2). Already in view of this understanding, the board cannot endorse appellant I's argument that, in accordance with decision T 472/88, the original term "comprising" did, in itself, provide a sufficient basis for the amended wording "consisting essentially of". 

Moreover, it has to be taken into account that in the light of the Enlarged Board's jurisprudence in cases G 2/98 (OJ EPO 2001, 413) and G 1/03 (OJ EPO 2004, 413), which established the criterion of a direct and unambiguous disclosure, the case law of the boards of appeal on added subject-matter has developed further and that today it is settled that the term "comprising" is not generally accepted as a direct and unambiguous basis for an amendment to "consisting essentially of" (for a comprehensive summary of the development of the boards' case law on this issue see decision T 759/10, Reasons 5).

As an alternative line of argument, appellant I puts forward that the application as filed (cf. page 41, lines 10 to 16), in fact, disclosed not only the explicitly claimed components (i) to (iii), but also a fourth component in the form of blending polymers, which justified the wording "consisting essentially of" as interpreted by the boards of appeal. In this regard, the board observes that according to the generally accepted understanding of the wording "consisting essentially of", the possible fourth or further unnamed components must not materially affect the essential characteristics of the polypropylene-based resin composition. This criterion is not fulfilled even if the blending polymers were considered a fourth component, since it is exactly the purpose of blending polymers to alter the characteristics of the resin composition. Consequently, the board endorses not only the opposition division's finding that the original application does not contain a fourth component different from components (i) to (iii), which does not materially affect the essential characteristics of the polypropylene-based resin composition, but also its conclusion that a direct and unambiguous basis for the amended wording "consisting essentially of" is not apparent in the original application.

For these reasons, the subject-matter of claim 7 of the main request goes beyond the content of the application as filed, Article 100(c) EPC 1973.