T 2274/08 – Milky Ways

Claim 1 of the opposed patent differs as follows from claim 1 as filed (click to enlarge):

In its appeal against the decision of the Opposition Division (OD) to reject the opposition, the opponent pointed out that this amendment violated A 123(2).

*** Translated from the German ***

[2.1] During the examining proceedings the feature “flowing out via the floor region” has been inserted into the independent claims.

This process feature is not literally disclosed in the application as originally filed. However, from Figures 2f, 2g and 2h it is apparent that the milk leaves the measuring chamber flowing out via the floor region. From the illustration of the embodiment, the reader skilled in the art can see that the floor region of the measuring chamber consists in a wall having no holes or openings, so that the milk that is in the measuring chamber can only leave the measuring chamber by flowing over the floor region without traversing it.

The yellow highlighting has been added by me.

[2.2] The opponent has pointed out that although this process feature could be extracted from the figures, it represented an inadmissible intermediate generalisation because it had been taken in isolation from the other features disclosed in combination by those figures.

[2.3] According to the established case law of the Boards of appeal, this is only allowable if the corresponding feature has not been disclosed with the other feature such that it cannot be separated from them, i.e. in the absence of any clearly recognisable functional or structural relationship among said features (see, for example, T 1067/97 [2.1.3]).

[2.4] In the present case, Figures 2f to 2h disclose not only the feature objected to but also fill level sensors, a closing body and a discharge edge. The fact that the milk in the measuring chamber can leave the measuring chamber “flowing out via the floor region” only depends on the structure of the floor region, which has no holes or openings. Therefore, there is no relationship between this process feature, the fill level sensors, the closing body and the discharge edge.

As a consequence, the amendments that have been carried out in the independent claims do not violate the requirements of A 100(c).

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Related decisions can be found here and here.