The provision has been considered recently in the case of Thermal printing mechanism/Electronic Postage Meter. In this case, the question before an Appeal Board was whether or not it was permissible to amend a main claim to incorporate in it two further features that were disclosed in the original application only in the description of a specific embodiment that was described with reference to a particular figure. The Board stated:
Under these circumstances, a careful examination is necessary in order to establish whether the incorporation of isolated technical features, having a literal basis of disclosure but being disclosed in a specific technical context, results in a combination of technical features which is clearly derivable from the application as filed, the technical functions of which contributes to the solution of a recognizable problem.
In the case before it, the Board concluded that incorporation of the features in question would not meet the requirements set out and so the proposed amendment was not permissible. The official headnotes read as follows:
1. An amendment of a claim by the introduction of a technical feature taken in isolation from the description of a specific embodiment is not allowable under Article 123(2) EPC if it is not clear beyond any doubt for a skilled reader from the application documents as filed that the subject matter of the claim thus amended provides a complete solution to a technical problem unambiguously recognizable from the application.
2. Nor is an amendment allowable under Article 123(2) EPC which replaces a disclosed specific feature either by its function or by a more general term and thus incorporates undisclosed equivalents into the content of the application as filed.
2. Nor is an amendment allowable under Article 123(2) EPC which replaces a disclosed specific feature either by its function or by a more general term and thus incorporates undisclosed equivalents into the content of the application as filed.
August 1999 Index