a) Principles 

The content of an application must not be considered to be a reservoir from which features pertaining to separate embodiments of the application could be combined in order to artificially create a particular embodiment (T 296/96, T 686/99, T 1206/01, T 3/06, T 1206/07, T 1041/07, T 1239/08, T 1648/11, T 1799/12, T 1853/13, T 1775/14). In the absence of any pointer to that particular combination, this combined selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed (T 686/99, T 1853/13, T 1252/13, T 2680/19, T 1133/21, T 1809/20). The fact that features in question have been mentioned in the description as "preferred" may act as a pointer (T 68/99, T 1869/11, T 394/11, T 1799/12, T 1332/21; for counter-examples, see however T 2118/08 and T 1306/12). In T 1728/16 the fact that two of the features introduced in the claim at issue were disclosed as being preferred was seen as a pointer to their combination with the third amendment which introduced generally disclosed percentage ranges. In T 1199/21, the board held that passages of the application as originally filed, even if they referred to preferred features, could not be combined at will if the combination was not directly and unambiguously derivable from the application as originally filed.

In T 524/17 appellant 2 had argued that the features of claim 1 were picked from different embodiments. The board however pointed out that in the application at issue the expression "in one embodiment" referred to general teachings of preferred features which were combinable without going beyond the content of the application as filed. See however also T 1442/16.

In T 3142/19 the examining division considered that in the absence of a positive hint to a combination of features that are otherwise presented as optional, any such combination was new technical information. In the board's view however, this argument was valid only in its positive form: if the description indicated that some combination was desirable, or necessary to solve a technical problem, then a clear pointer to disclosure of the combination was provided. If not, however, it did not automatically mean that the skilled person could not derive the combination from the application as filed. But an excessive number of optional features could have an impact on the assessment of compliance with Art. 123(2) EPC, in that, in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this was indeed the case depended on the specifics of the case, e.g. on the level of complexity caused by the optional features.

In T 2155/19 the board was not persuaded by the respondent's contention that the repeated use of the word "may" in relation to the disclosure of a plurality of features implied they were all optional. The detailed description as filed disclosed nearly every feature therein as possibly being included in the inventive system with wording such as "may be", "may provide", "may include" etc. The result was a reservoir of features in the description which may or may not be part of the invention. The selection of just one of these optionally disclosed features for inclusion with the other features in claim 1 in isolation from related features described with similar emphasis, and even in the same paragraph as the feature taken-up into the claim, was thus not seen to meet the requirement of a direct and unambiguous disclosure of the claimed subject-matter in the application as filed. See also T 1748/19.

In T 1137/21 the board observed that the appellant had not indicated a single passage of the original application that disclosed – in combination – the features of claim 1 of the main request. Claim 1 of the main request was the result of a multiple selection of a very specific combination of features from different dependent claims as originally filed. These selections were made from among numerous possibilities and different degrees of preference. In view of the sheer number of possibilities, the subject-matter of claim 1 was not directly and unambiguously derivable from the dependent claims, even when the general part of the description was taken into account. It was true that the inventive examples still fell under claim 1 of the main request. However, these examples were not sufficient as a pointer to the specific selection defined in claim 1 since they fell under the most preferred options of the various parameters and ranges. Claim 1 thus corresponded to a multiple selection from a large number of lists and possibilities without a specific pointer.

For examples where the above principles were applied in the case of divisional applications in respect of the earlier application as filed, see T 2118/08, T 961/09, T 1581/12; see also the reference in chapter II.E.1.1. to G 1/05 date: 2007-06-28 (OJ 2008, 271).