11th Annual Patent Law Institute

Transcription

1 INTELLECTUAL PROPERTY Course Handbook Series Number G th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at (800) Ask our Customer Service Department for PLI Order Number , Dept. BAV5. Practising Law Institute 1177 Avenue of the Americas New York, New York 10036

2 23 Amendments Before the EPO Marco Lissandrini Bugnion S.p.A. If you find this article helpful, you can learn more about the subject by going to to view the on demand program or segment for which it was written. 715

3 716 Practising Law Institute

4 1. LEGAL FRAMEWORK The main provision establishing the right to amend a patent application and, where applicable, a patent is article 123 EPC. Article 123 includes three paragraphs, namely: (1) The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. In any event, the applicant shall be given at least one opportunity to amend the application of his own volition. (2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. (3) The European patent may not be amended in such a way as to extend the protection it confers. Paragraph (1) includes a restriction in time, i.e. when amendments may be carried out, and it allows amendments to the European patent application or the European patent in all proceedings before the European Patent Office; this means that amendments may be permitted during examination, opposition and appeal proceedings. With specific reference to a patent application and to the freedom to amend it, paragraph 1 specifies that the applicant must be given at least one opportunity to amend the application of his own volition. This means that, even when no objections are raised in the Search Opinion and no communication under Rule 70a (i.e. invitation to correct any deficiencies) is sent, the applicant has the right to file voluntary amendments, without the need to ask for the consent to the Examining Division. Paragraph 2 limits the impact of the amendments on the European patent application or the European patent, in the sense that the amendments cannot introduce subject-matter not disclosed in the application as filed. Paragraph 3 applies to granted European patents and limits the impact of the amendments by prohibiting any extension of the scope of protection conferred by the patent as granted. The legal framework for amendments further includes the following auxiliary provisions: - Article 14 paragraph (2), which states that the translation furnished for applications filed in a language other than one of the official EPO languages may be brought into conformity with the application as filed, throughout the proceedings before the EPO; - Rule 137, which specifically sets a time frame for carrying out amendments, namely: (i) no amendments before receiving the Search Report; 3 717

5 (ii) one opportunity to amend within the 6-month period for filing a request for examination (this period is triggered by the publication date of the Euro-direct patent application) or within the 6-month period from a communication under either Rule 161(1) or Rule 161(2) for Euro-PCT applications; - Rule 138, which establishes the right for the applicant/proprietor to amend the European patent application or the European patent in different way for different States. Such a provision allows the applicant or proprietor to tailor the claims, and where appropriate also the description and the drawings, to national prior rights in one or more of the designated States; - Rule 139, which contains provisions for the correction of errors and mistakes in documents filed with the European Patent Office, including the description, claims and drawings; and - Rule 140, which contains provisions for the correction of errors and obvious mistakes in decisions of the European Patent Office. * * * 2. CORRECTIONS : WHAT THEY ARE AND WHEN THEY MAY BE PERMITTED When modifications are to be carried out on a European patent application or European patent, the distinction between amendments and corrections is very important. This is because it affects the choice of the provisions under which the request for modification should be asked, either article 123 (with relating Rules 137 and 138 and specific deadlines for amendments) or Rule 139 (and in case article 14(2), anyway with no deadlines for making the corrections). Rule 139 states: Linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request [socalled first sentence ]. However, if the request for such correction concerns the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction [so-called second sentence ]. Unfortunately, the EPC neither defines the terms amendment and correction, nor establish a relation between them

6 Such a relation would have been particularly important with reference to the second sentence of Rule 139, whose legal effects potentially overlap with those of article 123, since it deals with fundamentals part of the application/patent, namely the description, claims and drawings. Fortunately, through the EPO case-law (decision J8/80), it is possible to figure out meaningful definitions for amendment and correction. On one hand, an amendment to a document should be interpreted as a change of mind of the applicant/proprietor or as a subsequent development of plans for improving the applicant s/proprietor s position. On the other hand, a correction of a document should be interpreted as a restoration into conformity with the true intention of the applicant/ proprietor, e.g. for putting right an incorrect statement or adding omitted matter. Hence, dealing with an unexpressed volition ( an intention ), in principle a correction might include something not disclosed in the filed documents (e.g. an omitted priority claim). For this reason, the proposed correction must be examined very carefully, in order to ascertain whether it hides a change of mind of the applicant/proprietor or it represents an actual restoration of the document into conformity with his true intention. Furthermore, a correction is assessed differently, depending upon the fact that it affects the application/patent (claims, description, drawings) or collateral documents (e.g., the request for grant). The correction can be requested at any stage of grant and opposition proceedings. As stated above, depending upon the fact that the correction does or does not concern the claims, description or drawings, the following alternative conditions must be met to make the correction allowable. Where errors or mistakes concern documents other than the claims, description or drawings for example a missing priority claim, an erroneous withdrawal of patent application, an erroneous name of the applicant the proposed correction may be derived from a global assessment of the circumstances involved and it should be presented to the EPO in such a way that the latter is able to check and be convinced that: (i) a mistake was made; (ii) what the mistake was; and (iii) what the correction should be. The above mentioned test, that I usually named first sentence correction-test has been developed by the case-law in order to avoid that a correction under Rule 139 first sentence be used to implement a change of mind of the person on whose behalf a document is filed with the EPO, rather than a real restoration, notwithstanding the fact that the correction does not directly affects the application/patent. Instead, where errors or mistakes concern the claims, description or drawings, the error must be obvious, in the sense that the skilled person 5 719

7 must be in no doubt that the information is not correct and, at the same time, in no doubt on what the correction is ( is and not should be ). Hence, the correction must be self-evident. In this regard, a good rule of thumb (or second sentence correction-test ) is the following: if the error becomes apparent only in the light of the proposed correction, then the correction is not self-evident and must be ruled out (G3/89). Therefore, at the end of the day, a correction under Rule 139 second sentence must have a declaratory nature. In fact, only if the skilled person can derive the correction from the application as filed, such a correction does also comply with the provision of article 123 paragraph 2 (G3/89). Attention should be paid to the fact that an apparently obvious mistake might not be so obvious indeed. For example, assume that the description contains the following expression: 2+2=5. Probably, the most of us would immediately propose the following correction: 2+2=4. Are we sure that such a correction is self-evident, which means that it has a declaratory nature, whereby it satisfies the second sentence correctiontest? Not so sure. What about these: 2+3=5 or 3+2=5 or 2+2<5? If more than one possibility of correction can be foreseen, then the error is not that obvious. In this situation, the proposed correction might still be admitted, but as long as it is proposed as an amendment complying with article 123 (no more Rule 139!), meaning that the amendment must be derivable from the application as filed. Whenever an error in the claims, description or drawings is not selfevident, the correction under Rule 139 second sentence is ruled out. * * * 3. AMENDMENTS : THE DISCLOSURE TEST OR GOLD STANDARD FOR ASSESSING THE EXTENSION OF SUBJECT-MATTER The EPO is known for being very strict in assessing the provision of article 123(2) EPC, i.e. the prohibition to amend the patent application or patent in such a way as to extend the subject-matter beyond the content of the application as filed. The principle for such a strict interpretation can be found in the task of the EPO to guarantee legal certainty to third Parties, who can rely only upon the application as filed, being the file estoppel not available under the EPC

8 Furthermore, the EPO aims to prohibit unwarranted advantages for the applicant, who is supposed to be rewarded with an exclusive right for what was invented at the time of filing and not afterwards. In this regard, the EPO wants to prevent the applicant being rewarded for an invention made ex-post, e.g. after a critical review of the state of the art that usually emerges during examination or post-grant proceedings. Consistently, the decision G1/93 of the EPO Enlarged Board of Appeal states that an applicant is not allowed to improve its position by adding subject-matter not disclosed in the application as filed, which would give the applicant an unwarranted advantage and could be damaging to the legal security of third parties relying upon the content of the original application. In view of these principles, the case-law of the EPO Boards of Appeal (e.g. G11/91; G3/98; G1/03; G2/10) has established the use of the so-called disclosure-test or gold standard. Hence, for the time being, the disclosure-test is the generally accepted test for any amendment. Getting down to brass tacks, the formulation of the disclosure-test is the following: an amendment should be regarded as introducing subjectmatter which extends beyond the content of the application as filed, if the overall change in the content of the application results in the skilled person being presented with information which is not directly and unambiguously derivable - seen objectively and relative to the date of filing - from the whole content of the application as filed, even when account is taken of any feature which is implicit to a person skilled in the art using common general knowledge. I think that a good way to appreciate the disclosure-test is to cut it down into single concepts, with the help of the WH-questions. Let s get the analysis started: An amendment should be regarded as introducing subject-matter which extends beyond the content of the application as filed, if: - What: the overall change in the content of the application, i.e. the outcome of an amendment in terms of the technical information presented; - Who: the skilled person being presented with information, which means that the outcome of an amendment must be assessed from the point of view of the skilled person; - How: information which is not directly and unambiguously derivable, which means that the outcome of an amendment must be a priori straightforward and explicit in view of the disclosed invention; in other words, if additional technically relevant information become 7 721

9 apparent to the skilled person after the amendment is carried out, then the amendment must be ruled out; - Where: from the whole content of the application as filed, which means that the outcome of an amendment must be found in the application as filed and it cannot be derived from the priority document, the abstract, the title or the documents cross-referenced in the description (in the latter case, unless no doubt exists for the skilled person that such documents are part of the application); - When: seen objectively and relative to the date of filing, i.e. the content of the application must be read bearing in mind the technical knowledge and the state of the art available at the date of filing, and not afterwards. In other words, if a new technology has been invented after the date of filing, none of its technical implications can be kept in the background for interpreting the content of an application/patent. In this regard, the so-called common general knowledge can be used to interpret the teaching of the technical information presented in the application/patent and to put them in the context, but it cannot be used to bridge any gap in the technical information. In view of the concepts embedded in the disclosure-test, it emerges that the assessment of amendments must be carried out focusing on the actual teaching conveyed by the original disclosure, the structure of the claims not being detrimental to what is really disclosed (T2619/11). As an immediate consequence, the literal support is not required (T667/08, T583/09, T2296/08), contrary to the misconception widely spread outside Europe. An example. A patent concerning an aircraft system for providing differential motion to wing high lift devices (so-called flaps ) was granted at the EPO on the basis of a set of claims amended during the examination stage. In the specification, a control system to activate a drive system for moving the inboard and outboard flaps is described, said control system having three configurations: - a first configuration, wherein the inboard and outboard flaps move together through large angles during takeoff and landing; - a second configuration, wherein the inboard and outboard flaps move together by relatively small amount during high speed flights; - a third configuration, wherein the inboard flaps move relative to the outboard flaps

10 During examination, the independent claim was amended and then it was granted so that to include, inter alia, the first and third configurations only, i.e. the second configuration was omitted. In other words, the overall change in content, i.e. the outcome of the amendment in terms of the technical information presented, consists in the fact that the control system can be operated in order to activate two different configurations (the first and the third), the remaining configuration (i.e. the second) not being essential. Basis for omitting the second configuration was indicated by the Proprietor in a passage of the specification saying that, if it is desired to move only the inboard flaps, the control system can be operated without first moving the inboard and outboard flaps together. The EPO Board of Appeal (after post-grant proceedings) decided that the subject-matter of such a granted independent claim extends beyond the content of the application as filed, thus contravening article 123(2) EPC. According to the Board s opinion, from the whole content of the application as filed the above mentioned passage is not a manifestly general statement to the extent that the second configuration could be entirely dispensed with, in all the flight conditions. Even though the third configuration could be autonomously activated by the control system, however it is readily apparent that the control system still maintains its second configuration. In this regard, in fact, a previous passage contained in the same paragraph of the specification states that, once the inboard and outboard flaps have been moved together to their target positions by relatively small amount (second configuration), the inboard flaps can be moved relative to the outboard flaps (the third configuration). Therefore, an embodiment wherein the control system has the first and the third configuration, but not the second, cannot be directly and unambiguously derivable from the application as filed. On the contrary, from reading the application as filed, the skilled person understands that the three configurations of the control system are equally necessary for the proper functioning of the aircraft wing system. A further example. A patent concerning a levelling device to be used in relation to the parking of a vehicle, such as a caravan, was maintained in amended for by the EPO Opposition Division. The independent claim was amended, inter alia, with the addition of the feature the levelling device is a single piece. Basis for such an amendment was indicated by the Proprietor in the figures of the patent

11 The EPO Board of Appeal (after post-grant proceedings) decided that the subject-matter of the claim extends beyond the content of the application as filed. In the Board s opinion, several details of the levelling device shown in the figures, namely the teeth, can be seen as either of one piece with the levelling device or indeed simply attached thereto. In this regard, the figures are considered not suited to provide a direct and unambiguous basis for the overall change in content of the patent, namely for claiming that the levelling device is made as a single piece. Looking at the specification, a paragraph states that the levelling device is therefore relatively easy to manufacture from plastics material... as the device can be manufactured in a single mould. Even if the manufacture in a single mould could be considered to encompass a levelling device made as a single piece, however this implicit disclosure takes for granted that the device is obtained from plastic material in a single mould. Since the claim omitted the features relating to the use of plastic material in a single mould, then there is no direct and unambiguous basis in the aforesaid paragraph for the wording single piece. Finally, it is to be noted that, besides the amendments, the disclosuretest also applies to the assessment of: - the content of prior art documents in order to evaluate its impact on the patentability of a claimed invention; - the validity of a priority claim, namely to ascertain whether the features of an invention can be found in the priority application; - the validity of a divisional application (Art 76(1) EPC), namely to ascertain whether the content of the divisional application can be found in the parent application. * * * 4. MAIN ISSUES CONCERNING AMENDMENTS TO THE CLAIMS 4.1 Deletion, replacement and addition of features Sometimes, especially in view of future litigations, but when the European patent application is still pending, it is desirable to delete a feature from a claim, in order to extend the scope of protection. In principle, the deletion of a feature is not prohibited a priori. An amendment by deletion may be permitted, whenever it complies with the provision of article 123 paragraph 2, namely when the overall change in the content of the application does not result in the skilled

12 person being presented with new information, which become apparent after the deletion of the feature is carried out. According to the established case-law, a so-called essentiality-test is currently applied for assessing the allowability of the deletion of a feature from a claim. The formulation of the essentiality-test herein follows. The deletion of a feature does not violate article 123 paragraph 2, if the skilled person would directly and unambiguously recognize that: (i) the feature was not explained as essential in the disclosure; (ii) as such, it is actually not indispensable for the function of the invention in the light of the technical problem solved by the invention; and (iii) the removal requires no real modification of other features to compensate for the change. As far as the deletion of a feature and its simultaneous replacement with another feature, care should be taken. The replacement of a feature with another feature requires, both the satisfaction of the essentiality-test in order to delete the previous feature, and the satisfaction of the disclosure-test on the new claim incorporating the new feature. Straight on point, this means that the new claim relates to an embodiment actually disclosed, or at least directly and unambiguously derivable from the application as filed. In this regard, a specific issue concerns the replacement of a species with a genus and vice versa. Further to the disclosure-test, a species (e.g. iron ) may not be replaced by an undisclosed genus (e.g. metal ) and a genus (e.g. metal ) may not be replaced by an undisclosed species (e.g. iron, copper, etc.). The reason is that, being the species (or genus) undisclosed, the outcome of the amendment would present the skilled person with additional technical information not previously disclosed in the application as filed. Finally, a claim may be limited by inclusion of additional features, provided that the resulting combination of features was originally disclosed in a single embodiment. This means that mosaicking features taken from different embodiments, in order to arrive at the claimed embodiment, is not allowed. Such a prohibition is effectively summarized by the EPO Guidelines (Part H, III-3.2), wherein it is stated that the content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate embodiments can be combined in order to artificially create a particular combination

13 This statement introduces us to the next concept: the so-called intermediate generalization. * * * 4.2 Intermediate generalization The intermediate generalization is typical of the practice before the EPO and consists in extracting a specific feature in isolation from an originally disclosed embodiment and using it to delimit claimed subject-matter, thus arriving at a new embodiment which is intermediate between the subject-matter claimed at filing and the aforesaid originally disclosed embodiment (which actually includes a greater number of features). Seen from another perspective, an intermediate generalization can also be interpreted as an intermediate restriction, because one or more additional features are taken in isolation from a first group of features and then added to a second group of features, thus defining a further embodiment having a higher degree of restriction with respect to the first group of features, even though not a full degree of restriction. And here lies the problem: since not all the features were taken from said first group of features to be inserted in the second group, the further embodiment is the result of an incomplete restriction, thus representing an isolated combination of features, which was not actually disclosed in the application as filed. This being said, taking a feature from a particular embodiment and adding it to the claim is not prohibited a priori, but it may permitted on the following conditions: (a) the feature is not related or inextricably linked to the other features of that embodiment; and (b) the overall disclosure justifies the generalizing isolation of the feature and its introduction into the claim. Let s have a closer look at these requirements. With regard to point (a), I believe that a good assessment can be based on the essentiality-test, this time applied to the embodiment from which the desired feature should take away. As previously mentioned, the essentiality-test is used for assessing the possibility to delete a feature from a claim but, in my opinion, it may represent a promising starting point for assessing the possibility to remove, i.e. to delete, a feature from a given embodiment which, in turn, is a combination of features like a claim

14 Once point (a) has been verified through the application of the essentiality test, point (b) enters the arena. In fact, the isolation of a feature from an embodiment and its introduction into the claim must not be accidental, but they must be the result of technical considerations of the skilled man to solve the technical problem involved, in the light of the whole content of the patent application. In other word, both the problem and the solution must be directly and unambiguously recognizable from the application as filed, thus ultimately satisfying the gold standard prescribed by the EPO ( disclosuretest ). * * * 4.3 Amendments taken from drawings The reasoning is the same applied for the intermediate generalization, i.e. the isolation of a features from the drawings must not be accidental. The skilled person must be able to clearly and unmistakably recognize from the drawings, in the context of the whole description, that the feature is the deliberate result of the technical considerations directed to the solution of the technical problem involved. An example. A patent concerning a levelling device to be used in relation to the parking of a vehicle, such as a caravan, was maintained in amended for by the EPO Opposition Division. The independent claim was amended, inter alia, with the addition of the feature the levelling device is a single piece. Basis for such an amendment was indicated by the Proprietor in the figures of the patent. The EPO Board of Appeal (after post-grant proceedings) decided that the subject-matter of the claim extends beyond the content of the application as filed. In the Board s opinion, several details of the levelling device shown in the figures, namely the teeth, can be seen as either of one piece with the levelling device or indeed simply attached thereto. In this regard, the figures are considered not suited to provide a direct and unambiguous basis for the overall change in content of the patent, namely for claiming that the levelling device is made as a single piece. Looking at the specification, a paragraph states that the levelling device is therefore relatively easy to manufacture from plastics material... as the device can be manufactured in a single mould. Therefore,

15 even if the manufacture in a single mould could be considered to encompass a levelling device made as a single piece, this possible implicit disclosure takes for granted that the device is obtained from plastic material in a single mould. However, the omission from the claim of the features relating to a levelling device made of plastic material in a single mould has the consequence that there is no direct and unambiguous basis in the aforesaid paragraph for the wording of the claim, in relation to the feature single piece. * * * 5. MAIN ISSUES CONCERNING AMENDMENTS TO THE DESCRIPTION The main issues concerning amendments to the description are: - introduction of new examples, effects or technical advantages of the invention; - reformulation of the technical problem. The introduction of new examples, effects or technical advantages of the invention are assessed with a strict approach. Hence, my suggestion is not to try to insert them. More advantageously, further examples or new effects may be used during prosecution as evidence in support of the patentability (namely, the inventive step) of the claimed invention. Anyway, an additional example may be accepted as evidence that the invention can be readily applied, on the basis of the information given in the originally filed application, but this additional example must extend over the whole set of claims. Similarly, a new effect may be considered as evidence in support of inventive step, provided that this new effect is implied by, or at least related to, an effect disclosed in the originally filed application. A reformulation of the technical problem may be permitted, if the related effect is directly and unambiguously derivable by a person skilled in the art from the application as filed. However, as a safer approach, in practice it is better not to change the stated technical problem but, in case, submitting the reformulation to the examiner in support of the patentability (namely, the inventive step) of the claimed invention. * * *

16 6. AMENDMENTS AND EXTENT OF THE PATENT PROTECTION: THE TRAP OF ARTICLE 123(2)-(3) EPC As already cited, paragraph 3 of article 123 states that: (3) The European patent may not be amended in such a way as to extend the protection it confers. This provision applies to claims, description and drawings, both in opposition and limitation proceedings before the EPO. The principle at the basis of this provision is to give ultimate legal certainty to third Parties, so that to exclude that an activity or a product not infringing the patent before the amendments, does actually infringe the patent after the amendments have been carried out. Combining the provisions of paragraphs 2 and 3 of article 123, the following awkward situation occurs. Let s assume that a limiting feature that extends the subject-matter be introduced in a claim during the examination and that the patent then be granted. Now, let s also suppose that the feature should be removed in subsequent opposition proceedings, because duly contested by the opponent. But pursuant to paragraph 3 of article 123, the removal of the feature which should actually be removed! - is not permitted. Here it is the so-called inescapable trap of article 123(2)-(3): with or without the removal, the patent is revoked. In fact, if the feature was not removed, the patent would contain subjectmatter which extend beyond the content of the application as filed. On the other hand, if the feature was removed, the scope of patent protection would be extended. The trap is caused both by the examiner, who granted the patent, and by the applicant who introduced fresh subject-matter. Hence, in opposition proceedings, bear in mind that an attack on the ground that the patent contains fresh subject-matter can be strengthened by the use of the provision under article 123 paragraph 3. A similar situation occurs when, during examination, a first feature in a claim is replaced with a second feature that extends the subject-matter and notwithstanding the patent is granted. In opposition, the restoration of the first feature, in place of the second one, is not permitted, because the amended claim would cover a different and alternative embodiment with respect to the embodiment claimed in the patent as granted, thus extending the scope of protection of the patent. Therefore, whenever possible, it is strongly suggested to carry out amendments by grouping together different claims, rather than to develop new esoteric wording for defining an embodiment. In fact, if this wording

17 is found to add technical information not disclosed in the application as filed, there is no way out: in opposition/limitation proceedings the patent is going to be revoked. In view of what above, both the deletion of a feature and an intermediate generalization are far less risky: should the subject-matter extend beyond the application as filed, the solution is merely to restore the deleted feature or to add the features previously left out ( intermediate restriction, see above), thus limiting and not extending - the protection conferred by the patent. Finally, another trap occurs when an amendment is allowed during examination and then the patent is granted, but the claimed embodiment contains an ambiguity in a feature. If the disclosure is not sufficient to enable the skilled man to solve the ambiguity, the claim should be amended, either by replacing that feature with another feature or by introducing additional matter for resolving the ambiguity. However, in the first case, the amendment is not possible because the scope of protection would be extended. In the second case, the amendment is not possible because fresh subjectmatter would be added. Again, there is no way out: in opposition/limitation proceedings the patent is going to be revoked. * * * 7. CONCLUSION AND TAKE-AWAY TIPS The EPO is known for being very strict in assessing amendments and a mistake during examination might lead to the revocation of the patent. Therefore, it is of the utmost importance drafting the European patent application in order to pave the way towards reliable amendments, should there be the need to circumvent prior art cited during examination or postgrant proceedings. First of all, my suggestion is to disclose all the main features of the invention, even though they are not actually claimed. Whenever possible, each feature should be introduced stand-alone, preferably in the summary of invention, for avoiding any objection of intermediate generalization. A possible wording is according to one aspect, according to a further aspect, As a general concept, the invention comprises the following aspect and similar. In my opinion, the word aspect is better than embodiment at least in the summary because embodiment might take for granted the presence of a mutual relation among other features previously introduced. When the figures are described, which surely illustrate embodiments, a good wording might be the drawings illustrate

18 embodiments of the disclosure and, together with the description, serve to explain the principles of the disclosure. Secondly, a good set of dependent claims, in term of scope of protection, clarity and dependency, should be drafted: grouping together the claims is easy and prevent any objection under article 123 paragraphs 2 and 3. Thirdly, avoid any statement that, even implicitly, might depict a feature as an essential feature for an embodiment; should be the case, you may want to delete the feature from an embodiment, but, if that feature is perceived as essential, the deletion would be impossible (see essentiality-test ). Finally, whenever possible, describe the technical effect of each disclosed feature, for smoothing the problem-solution approach during examination and for circumvent the intermediate generalization (see the related paragraph above)

19 NOTES 732