The present decision is certainly not a must-read but it contains a nice paragraph on what is meant by implicit disclosure.
[…] In order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed it has to be examined whether that claim comprises technical information which a skilled person would not have objectively and unambiguously derived from the application as filed (see decisions T 296/96 [3.1]; T 823/96 [4.5]; T 860/00 [1.1]; T 1206/01 [2.1]; T 3/06 [4.1.4]).
The content of an application as filed encompasses what is directly and unambiguously disclosed therein either explicitly or implicitly. In this context “implicit disclosure” means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws (T 860/00). Hence, the term “implicit disclosure” should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content. Whilst common general knowledge (CGK) must be taken into account in deciding what is clearly and unambiguously implied by the explicit disclosure of a document, the question of what may be rendered obvious by that disclosure in the light of CGK is not relevant to the assessment of what the disclosure of that document necessarily implies. The implicit disclosure means no more than the clear and unambiguous consequence of what is explicitly mentioned (see T 823/96). [3.2]
It is matter of fact that the application as filed does not explicitly disclose the step of making an array of spatially segregated organometallic metal ligand compounds (step (a) of the method of claim 1).
As the [opponent] argued, the application as filed comprises four passages disclosing a method for preparing an array of metal ligands, two of which being specifically directed to arrays of spatially segregated metal ligand compounds.
Thus, on page 4, line 29 to page 5, line 11 and on page 14, lines 1 to 13, the method disclosed of making an array of metal ligand compounds comprises synthesizing a spatially segregated array of ligands and delivering a suitable metal precursor to each element of the array to create an array of metal ligand compounds.
The passages of the application as filed on page 13, lines 4 to 10 and lines 18 to 23 and claims 1 and 2 as filed disclose methods of making an array of metal ligand compounds wherein a first metal binding ligand and a second metal binding ligand are first synthesized/delivered on/to a first and second regions on a substrate and then a first and a second metal ion are delivered to the first and second metal binding ligand to form the metal ligand compounds.
Thus, in each method of making an array of metal ligand compounds disclosed in the application as filed there are the process steps of first making an array of ligands and then delivering a metal ion or precursor to form the metal ligand compound whereas claim 1 only requires making an array of spatially segregated (organometallic) metal ligand compounds, thereby omitting those two particular process steps. [3.3]
A generalisation of the specific disclosures referred to above has thus been made, as argued by the [opponent], since step (a) of claim 1 covers any method of making the array of metal ligand compounds while a method of making an array of metal ligand compounds is disclosed in the application as filed only as the result of two process steps, which are no longer required in present claim 1.
The mere disclosure in the application as filed of a particular method of making an array cannot form the basis of a generalisation to any method of making an array of metal ligand compounds since such generalisation provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed.
As a consequence the method claim 1 comprising the step (a) which covers any method of making the array of metal ligand compounds cannot be based on the disclosure of the original application, but is an undue generalisation thereof, which extends beyond its content. [3.4]
[…] The [patentee] argued that it was clear that an array of organometallic compounds must comprise spatially segregated compounds in predefined regions on a substrate and therefore the disclosure of the summary of invention on page 4 relating to the synthesis of arrays of organometallic was a clear support for a method for preparing an array of organometallic metal ligand compounds comprising the step (a) of making an array of spatially segregated organometallic metal ligand compounds in predefined regions of a substrate, wherein a first organometallic metal ligand compound was in a first region on said substrate and a second organometallic metal ligand compound was in a second region on said substrate, wherein said first organometallic metal ligand compound and said second organometallic metal ligand compound were different.
However, this argument is not relevant because it addresses the structure that an array must comprise based on its intended use. It therefore does not address its method of preparation, while the contested feature specifically relates to process step (a) of this method. Furthermore, at a first glance, it would not appear adequate that the disclosure of one single line in the application as filed could constitute the proper support for some nine lines full of technical features in claim 1. [3.5.1]
[…] Hence, the Board concludes that the subject matter of claim 1 as amended provides the skilled person with technical information which is not derivable from the application as filed.
Consequently, claim 1 extends beyond the content of the application as filed justifying the ground for opposition pursuant to A 100(c), so that the request must be rejected. [3.8]
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