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Case Law of the Boards of Appeal

1.1.5 Extraction of features and combination of features

Since the main criterion for assessing compliance with Art. 76(1) EPC is essentially the same as that applied when assessing compliance with Art. 123(2) EPC, the board in T 961/09 held that it was normally not admissible to extract isolated features from a set of features originally disclosed in combination (referring to T 1067/97, T 714/00, T 25/03). It added that an unduly broad filed claim could not justify new feature combinations (referring to T 770/90); nor could the content of a document be regarded as a reservoir for combining features from separate embodiments (referring to T 296/96).

In T 1387/05 the parent application disclosed two different branches of video signal transmission. The appellant's (applicant's) argument was based on the underlying understanding that the parent application disclosed two distinct branches as alternatives, and that the claims of the divisional application at issue concerned only the first branch. The board stated, however, that the parent application did not directly and unambiguously present alternative apparatuses corresponding to these two alternative branches. Instead it disclosed a recording/reproducing processing apparatus with the functionality that a broadcast wave might be transmitted and/or received. The board accepted the appellant's argument that decision G 1/06 (OJ 2008, 307) did not state that subject-matter had to be separately derivable from what was disclosed in each of the preceding applications as filed. However, this did not mean that features which were disclosed in a given context might be claimed in a different context or specific features might be generalised without a proper basis in the parent application as filed. As the same principles were to be applied for both Art. 76(1) EPC and Art. 123(2) EPC 1973, it followed that it was normally not allowable under Art. 76(1) EPC 1973 to extract features from a set of features which were originally disclosed only in combination in a parent application and to claim such extracted features in a divisional application isolated from their context, namely the combination disclosed in the parent application.

The board in the consolidated cases T 1500/07, T 1501/07 and T 1502/07 recalled that the same central criterion was applicable to Art. 76(1) EPC 1973 as it was to Art. 123(2) EPC 1973. Applying the established case law of the boards of appeal concerning Art. 123(2) EPC to the case of Art. 76(1) EPC 1973, the board also stressed that where newly claimed subject-matter was based on the extraction of features in isolation from a set of features originally disclosed in combination (e.g. in a specific embodiment in the description) the above criterion was met, if there was no clearly recognizable functional or structural relationship between the features, i.e. when they were not inextricably linked. What is decisive is determining which specific combinations of features were originally taught by the parent, and whether the skilled person recognizes immediately and unequivocally from the totality of the disclosure when read contextually and using his common general knowledge that, and which, certain features are incidental to the proper functioning of these specific embodiments, and that these can be dispensed with without consequence for the remaining features. In the case before the board, the fact that the claimed features were not given any special prominence, and that they were functionally and structurally bound to the other, remaining features indicated that these criteria were not met.