Summary:
1. The technical problem to be solved by the invention must be formulated in such a general and neutral manner that the question of which suggestions the skilled person received from the prior art arises exclusively in the examination of the inventive step. Elements belonging to the technical solution are not to be taken into account in determining the problem underlying the invention (following BGH GRUR 2020, 603 (604) - Tadalafil). (para. 10)
2. The content of the application shall be determined from the entirety of the documents originally filed. What is decisive is what the skilled person can directly and unambiguously infer from these documents as belonging to the invention (following BGH GRUR 2015, 573 (574) - Wundbehandlungsvorrichtung). (para. 31)
3. When exhausting the content of the disclosure, generalizations of examples of embodiments disclosed by the origin are admissible if only one or only some of several features of an embodiment, which taken together but also considered individually are conducive to the success of the invention, have been included in the claim (following BGH GRUR 2020, 974 (977f.) - Niederflurschienenfahrzeug). (para. 31)
4. Generalizations are inadmissible if it can be inferred from the documents originally filed that individual features are inseparably connected with each other, but the patent claim does not provide for these features in their entirety. The claiming of protection without a specific feature may in particular be precluded by the fact that in the application all embodiments have a specific feature or a specific combination of several features and it can be inferred from the content of the application that the means provided for in the claim serve to solve a problem which presupposes the existence of the feature or combination of features in question (following BGH GRUR 2018, 175 (177) - Digitales Buch). (para. 31)
Federal Supreme Court, Judgment of February 8, 2022 - X ZR 22/20
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