Intermediate generalisation in claim 1: what can still be argued at the third examination report
EP application 3 112 456.7 concerns a coated steel strip. The examining division's third communication under Article 94(3) EPC, dated 10 June 2024 and notified the same day, raises two objections. First, claim 1 lacks inventive step over D1 combined with D4. Second, and for the first time, the division objects under Article 123(2) EPC: the feature 'the coating has a thickness of 5-20 um' was taken from Example 3, which also requires a curing temperature of 180 degrees C and a specific acrylic resin A. The application as filed, at page 12, lines 4-9, states that 'the coating according to the invention may have a thickness of 5-20 um, preferably 8-15 um'. The client wants to argue that the range is allowable, to file an amended claim 1 combining original claims 1, 4 and 7, and to add from Figure 2 the feature that the strip edge is chamfered. The client would prefer to avoid oral proceedings because of cost, but wants to keep the possibility of an appeal.
1. How should the Article 123(2) objection be analysed, and what is the strongest way to answer it?
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The legal test. The question is whether the amended subject-matter is directly and unambiguously derivable from the application as filed, using the common general knowledge only to interpret what is disclosed. The objection is one of intermediate generalisation: the division says you have taken a feature out of a specific example and detached it from the other features that gave it meaning.
The decisive point is the structure of the disclosure, not the wording of the example. Page 12, lines 4-9, discloses the thickness range in general terms about the coating as such, not as a property of Example 3. If that general statement stands on its own - it is not introduced as 'in Example 3 the coating has a thickness of ...' and is not tied to resin A or to the 180 degrees C curing - then the range is disclosed independently and there is no intermediate generalisation. The example merely shows one way of working within the general range.
How to argue it. Quote the passage verbatim, show that the paragraph is a general teaching about the coating layer, and show that the range is not restricted by the surrounding text. Point out that the division has not explained why the general statement should be read as limited to Example 3. If the paragraph is a list of independently applicable preferences, say so explicitly. As a fallback, offer to restrict to the 8-15 um preferred range, which is disclosed in the same general sentence and is even further removed from the example.
Procedural point. The objection is new at the third report, but the division is entitled to raise it as long as you get a proper opportunity to comment (Article 113(1) EPC). Take that opportunity in writing now rather than at the hearing.
2. Can the two proposed amendments - combining original claims 1, 4 and 7 and adding the chamfered edge from Figure 2 - be filed at this stage? Give reasons.
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Combining original claims 1, 4 and 7: yes, in principle. This is a restriction based on claims as originally filed, so there is no Article 123(2) difficulty. Procedurally, Rule 137(5) EPC applies: after the first communication under Article 94(3) EPC, amendments must be occasioned by the objections raised and must not extend the subject-matter. The combination answers the inventive-step objection over D1 and D4, so it is directly occasioned. Expect the division to check whether the combination is genuinely a limitation and whether the description has been adapted; also check that dependent claims have not been left referring to features that no longer make sense.
Adding the chamfered edge from Figure 2: no, or at least not as a matter of right. Rule 137(5) has two limbs and this amendment fails the first: nothing in the outstanding objections concerns the edge of the strip, so the amendment is not occasioned by any ground raised and the division may refuse it for that reason alone. There is a second, independent problem: a feature taken from a schematic drawing must still be directly and unambiguously derivable, and dimensional or geometric features are often not clearly disclosed in schematic figures.
Practical advice. Put the combination into the main request, keep the description consistent, and say expressly that the chamfered-edge feature has been dropped for procedural economy. If that feature is commercially important, tell the client that a divisional, not this application, is the right vehicle. Filing an amendment you know to be inadmissible weakens your credibility on the admissible one.
3. How do you reconcile the client's wish to avoid the cost of oral proceedings with the wish to keep an appeal open, and what should the response to the communication contain?
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File an auxiliary request for oral proceedings. In examination, oral proceedings are held at the request of a party or if the division thinks them expedient (Article 116(1) EPC). A conditional ('auxiliary') request costs nothing, keeps the client out of an unnecessary hearing because it only bites if the division is minded to refuse, and prevents a refusal on the papers. Make the condition explicit: oral proceedings are requested if the division does not grant the main request (and any auxiliary requests).
What the response should contain, in order:
- a main request (claims 1 to n based on original claims 1, 4 and 7), with a marked-up version and a clean version;
- a fully adapted description, including removal of Example 3 material that is no longer within the claimed scope if that is needed for consistency;
- arguments on Article 123(2) following the analysis of the disclosure on page 12, and on inventive step over D1 with D4 on the restricted claim;
- an auxiliary request retaining the 5-20 um range, in case the combination is held to be allowable but the range discussion is decided against you;
- the auxiliary request for oral proceedings;
- a clear statement that the client reserves the right to appeal.
Cost control. Explain to the client that a hearing is not automatic and that the auxiliary request suppresses it whenever the division allows the case. Point out that the appeal route (two months from the decision, appeal fee, Article 108 EPC) only exists if a reasoned decision is issued, and that a well-prepared written file with a fallback request is the cheapest way to keep that option meaningful.