d) Lists of converging alternatives 

In T 1621/16 the board observed that it was established case law that, under certain circumstances, amendments based on multiple arbitrary selections from lists represented an extension of the content of the application as filed. However, most decisions following this approach related to amendments based on lists of non-converging alternatives (i.e. mutually exclusive or partially overlapping elements). By contrast, in cases where the amendments were based on selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list), the conclusions had been less consistent (see T 812/09, T 2237/10, T 27/16 and T 615/95). Moreover, the boards had generally regarded amendments based on multiple deletions of elements from one or several lists of alternatives as an allowable restriction, provided that such amendments did not result in singling out particular combinations of specific meaning (see T 615/95 and G 1/93, OJ 1994, 541). The board considered that selections from lists of converging alternatives should not be treated in the same way as selections from lists of non-converging alternatives for the following reasons: In the case of non-converging alternatives, selecting specific elements from such lists led to a singling out of an invention from among several distinct alternatives, which might provide an unwarranted advantage. On the other hand, when fall-back positions for a feature were described in terms of a list of converging alternatives, each of the narrower elements was fully encompassed by all the preceding less preferred options. Thus, amending a claim by selecting one element from a list of converging alternatives did not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature (see also T 933/22). There was thus an analogy to deleting options from a list of non-converging alternatives (as in T 615/95). The board emphasised that the above considerations did not allow the conclusion that amendments based on selections from lists of converging alternatives necessarily met the requirements of Art. 123(2) EPC. It needed to be assessed whether the specific combination was supported by the content of the application as filed. For the board, at least the following two conditions needed to be met: i) the combination should not be associated with an undisclosed technical contribution; and ii) the combination should be supported by a pointer in the application as filed. Such pointers could be provided by the example(s) (as in T 27/16 and T 615/95) or by specific embodiment(s) of the application, as this/these generally represented the most detailed and preferred form(s) of the invention.

Again in T 1482/17, the same board considered the contested amendments to be compatible with Art. 123(2) EPC because the claim in question was based on combinations of more or less preferred options taken from lists of converging alternatives, the resulting subject-matter was not associated with any non-disclosed technical contribution and the original application contained a pointer towards the feature combinations resulting from the multiple selection. In particular, two of the examples in the application fell within the scope of the claimed subject-matter.

In T 1937/17 the respondent (proprietor) argued that the parameter value lists and the list of possible structures in the case in hand were lists of converging alternatives of the kind explained in T 1621/16. Furthermore, the description explicitly linked the features disclosed in these lists in terms of their purpose and effects. This provided a disclosed technical contribution and a pointer, as required by T 1621/16. The board disagreed. It noted that a distinction had to be made between what was possibly rendered obvious to a skilled person in the light of the disclosure with certain pointers, and what was directly and unambiguously, even if implicitly, derivable from the disclosure for the skilled person using common general knowledge. As regards the requirement stated in T 1621/16 that the subject-matter resulting from the combination of convergent options from lists "is not associated with an undisclosed technical contribution", the board, citing G 2/98 (OJ 2001, 413) and G 2/10 (OJ 2012, 376), explained that the distinction in G 1/93 (OJ 1994, 541) had been made explicitly for the addition of undisclosed limiting features limiting the scope of protection and did not provide a criterion for establishing whether or not an amendment extended beyond the content of the application as filed. The board concluded that, other than for the purposes envisaged in G 1/93, a "technical contribution" was of no relevance when deciding on the allowability of amendments under Art. 123(2) EPC. Instead, the "gold standard" set out in G 2/10 was the only criterion that had to be applied. See also T 1465/15, which, in reply to an argument of the appellant (proprietor) based on T 1253/07 and T 1621/16, likewise highlighted the "gold standard" (G 2/10); as well as T 1261/21 and T 1824/22, both of which support T 1937/17.

In T 1133/21 the board recalled that it was established case law that the content of an application must not be used as a reservoir from which features pertaining to separate embodiments could be combined to artificially create an embodiment. In the absence of any pointer to the combination, the combined selection of features did not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed. T 1621/16 did not provide for an exception to this rule. It required, in fact, that a claim amended on the basis of multiple selections from lists of converging alternatives may only be considered to meet the requirements of Art. 123(2) EPC if the application as filed included a pointer to the combination of features resulting from the multiple selections. This meant that the mere fact that features were described in terms of lists of more or less converging alternatives did not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment would only be allowable under Art. 123(2) EPC if it complied with the "gold standard". The assessment of whether this standard was complied with was very case specific. It required taking into account the teaching of the application as filed as a whole, avoiding artificial semantic constructions. Factors which might play a role in the assessment were, inter-alia, the number of alternatives disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features. For instance, if the values in a number of examples were clustered within specific ranges, this might provide a pointer to those ranges. In the current case, the application for the opposed patent was drafted to provide a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments. T 1133/21 was cited and followed in T 1261/21.

In T 1261/21, the board highlighted the "gold standard" and agreed with T 1937/17 that the first criterion in point 2 of the Catchword of T 1621/16 ("the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution") should not be taken into account when establishing whether there was a direct and unambiguous disclosure for the combination of features resulting from a multiple selection. Otherwise, the present board agreed with the conclusion in point 1 of the Catchword of T 1621/16 that the choice of a more or less preferred element from a list of converging alternatives should not be treated as an arbitrary selection because this choice did not lead to a "singling out"; and that in general a pointer to the combination of features resulting from multiple selections was necessary to comply with Art. 123(2) EPC (see second criterion in point 2 of the Catchword of T 1621/16). In this context, the present board preferred the term "converging elements" to "converging alternatives", as "alternatives" seemed to imply that there were real alternatives that did not overlap. Furthermore, the board considered that whether the claimed combination of features merely resulted from the combination of claims having an appropriate back-reference to each other (see T 2237/10) played a role in the assessment of compliance with Art. 123(2) EPC and, in particular, whether there was a pointer to the claimed combination of features.