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The test for added subject matter

Incorporation by reference

7.65 The specification may refer to another document, which should be unambiguously identified and should have been published at the date of filing the Singapore application in question, to provide additional background material or further information about the invention, often as an “incorporation by reference” (see subsection iv of Section K in Chapter 5). However, the specification must provide a clear and complete disclosure of the invention at the date of filing (see Section K in Chapter 5). Incorporation by reference of an entire document without indication of the specific features to be incorporated generally will not be permitted. For analogous reasons, features which have not been included in the specification as originally filed but are only described in the document incorporated by reference may subsequently be introduced into the claims of the application by way of amendment as essential features of the invention only under particular conditions (see T6/84 Amendment of claims and T 689/90 Event detector).

7.66 In the case of T6/84, it was considered that the structural features that were included into the main claim by way of amendment were indeed those which unequivocally formed part of the specification and the amendment is thus acceptable. The originally filed Claim 1 had the following wording:

“1. A process for catalytic dewaxing a waxy hydrocarbon oil which comprises contacting said oil with a catalyst at dewaxing conditions, characterised in that the catalyst is synthetic offretite.”

7.67 The text in the original description which identified the features disclosed by reference was worded:

“Synthetic offretite is a well-defined zeolite, with a known X-ray diffraction pattern and a proposed crystal structure … The synthetic offretite useful in the present invention and its method of preparation are disclosed in Canadian patent 934130 …”

7.68 It is thus clear that the catalyst “synthetic offretite” referred toin the characterising portion of the main claim as originally filed was an identified material, and that further characterising parameters of such material were stated in the specification as originally filed to be set out in the cross-referenced Canadian patent.

7.69 The further characterising parameters of such synthetic offretite that were incorporated into the main claim from the Canadian patent during the amendment were the mole ratio of the oxides contained in synthetic offretite and the X-ray powder diffraction pattern. The Board considered that such parameters were already implicitly present in the main claim, and the amendment simply defined in greater detail the synthetic offretite. In other words, the amendment simply introduced that which was already an essential feature of the invention as described and claimed in the specification as originally filed.

7.70 However, the Board also cautioned that all the essential structural features thus disclosed which belong together must be incorporated into the claim during the amendment; it is not permissible to single out a particular essential structural feature.

7.71 It was further established by the Board in T 689/90 that incorporating information by reference is permissible only if the description of the application as filed leaves a skilled reader in no doubt that:

(a) protection is or may be sought for features which are only disclosed in the reference document;

(b) the features contribute to achieving the technical aim of the invention and are thus comprised in the solution of the underlying technical problem of the invention;

(c) the features, implicitly, clearly belong to the description of the invention contained in the application as filed; and

(d) such features are precisely defined and identifiable within the total technical information within the reference document.

7.72 The determination of whether an amendment that sought to incorporate matter from the reference document introduces added matter should take into account all circumstances of the case.