Added Matter (4) – Intermediate generalisation

At some point in almost every discussion of added matter the term "intermediate generalisation" will be used, but the meaning of the term is often not clearly understood. 

As we have discussed in the previous articles in this series the EPO requires there to be 'direct and unambiguous' basis for all amendments. A key requirement of this is that the scope of an amended claim must match precisely the scope from which basis for the amendment is taken. If there is a difference in scope then there is no basis for the amendment. To continue my bicycle-themed analogies, if there is disclosure of a bicycle frame made of stainless steel, an amendment to specify the frame is steel would not be permissible because "steel" is broader than "stainless steel" such that the scope of the amendment is different to the basis. Similarly, the amendment would also be unallowable if there was disclosure of "a frame made of ferrous metal" because "steel" is narrower than "ferrous metal". 

An intermediate generalisation occurs if an application contains both of these disclosures. A disclosure of "ferrous metal, for example stainless steel" does not give basis for "steel" because that is intermediate in scope between the broad (ferrous metal) and narrow (stainless steel) disclosure. The amendment is a generalisation of the narrow example, but intermediate between the two examples in scope, and so does not find basis. 

In this example, although it is clear that steel is a type of ferrous metal, and stainless steel is a type of steel, there is no direct and unambiguous basis for steel in either of the examples. It is important to remember that the objection is still that there is no basis for the desired amendment; "intermediate generalisation" is simply a phrase to describe why there is no basis but it does not represent a different objection. 

The only way to avoid this type of problem is to ensure the application as filed has disclosure at the generality you are likely to want to claim. This often means a description needs to include lots of examples to make sure you have all aspects covered, but it is an investment worth making. In our example we would want to include disclosure of ferrous metal, steel, and stainless steel, plus any other ferrous and non-ferrous metals that may be required in the claim. 

Another situation in which this type of objection arises is when trying to add or delete features to/from an example. If the description describes an embodiment with features A, B, and C, and the original claim 1 only included feature A, it may not be possible to add only feature B to claim 1. The combination of only A & B is intermediate between the broad disclosure of the claim (feature A only) and the narrow disclosure of the description (A, B, and C). 

This type of objection is best avoided during drafting by including text to make clear that not all features are essential to an embodiment and that selected features may be omitted. Ideally this should include specific examples of what can be omitted, otherwise it can be argued the basis for removing features is not unambiguous for each feature individually. Particular care should be taken not to describe an essential feature as optional as this can call into question all optional statements. 

One drafting style that we see quite commonly is to introduce every feature of every embodiment with the word 'may' - ie every feature is optional. This almost always fails because the excessive use of 'may' makes it unclear which specific combinations are disclosed so it is not possible to omit any feature. I have even had an examiner count up the occurrences of 'may' and calculate the number of combinations disclosed (a few million) to argue there can’t possibly be direct and unambiguous basis for each of those. It is therefore important to think about the combinations you may wish to claim and ensure there is specific disclosure of those combinations. 

As with other areas the use of multiple dependencies can be helpful with these issues as they provide a simple route to disclosing lots of combinations. This is not failsafe, and there have been decisions finding that even direct combinations of dependent claims can lack basis if there are too many options, but it is better than nothing. 

Overall the key is to take care during drafting and think carefully what combinations might be desirable to overcome the prior art while not being forced into a narrower claim than desired. Of course, this requires speculation, but that is the very nature of drafting. A shortcut using boilerplate text or not including all examples may well be fatal. As we have noted previously, including all this thought in the priority application is also valuable to avoid loss of a priority claim. 

Next week we will look at whether basis can be taken from the figures of an application.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.