1.9.2 Examples regarding the requirement "no clearly recognisable functional or structural relationship"

In T 25/03 the board stated that extracting isolated features from a set of features which had originally been disclosed in combination would only be justified in the absence of any clearly recognisable functional or structural relationship among said features (see e.g. T 1067/97). The board concluded that since claim 1 at issue resulted from the extraction of isolated steps from the specific combination (here a sequence of steps) disclosed as essential for obtaining the desired result in the embodiment of Figure 4, and since the appellant had not referred to other parts of the application as filed that could support the proposed amendment, and no such parts had been identified by the board, claim 1 as amended in accordance with the first auxiliary request did not meet the requirements of Art. 123(2) EPC 1973. An example with the opposite conclusion, that is, in which the board held that the skilled person would consider the omitted features to be non-essential for the identified technical effects, can be found in T 1601/16 (albeit without reference to the criterion stipulated in T 1067/97).

In T 582/91, the respondent (opponent) was of the opinion that when restricting a granted claim by introducing subject-matter from the dependent claims all the features of the dependent claims in question should be incorporated in the new independent claim. Contrary to this opinion the board considered that one feature of a dependent claim could be readily combined with a preceding independent claim as long as the skilled person recognised that there was clearly no close functional or structural relationship between the one feature of that dependent claim and its other features, or between that one feature and the teaching of other dependent claims referred to in that dependent claim (see also T 3240/19). If this was the case, no objections under Art. 123(2) EPC 1973 arose (see also T 938/95).

In the consolidated cases T 1500/07, T 1501/07 and T 1502/07, the board applied 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 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 criterion that this subject-matter had to be directly and unambiguously derivable by the skilled person from the original disclosure was met if there was no clearly recognisable functional or structural relationship between the features, i.e. when they were not inextricably linked. What was decisive was determining which specific combinations of features were originally taught by the parent, and whether the skilled person recognised immediately and unequivocally from the totality of the disclosure when read contextually and using common general knowledge that, and which, certain features were incidental to the proper functioning of these specific embodiments, and that these could 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.

A further example of a clearly recognisable functional or structural relationship between the isolated feature(s) and the other features of a set of features originally disclosed in combination can be found in T 833/16. In this case the features in question were the two characteristics defining a type of magnetic signal generated by the coil disclosed in the application. There was no disclosure, explicit or implicit, that the omitted feature was merely optional or preferred.

In T 886/15 the board examined whether the embodiments disclosed in certain figures could constitute, on their own, a sufficient basis for the features added in claim 1 of the main request. The board recalled that the selection of some features from a group of features originally disclosed in combination is allowable under Art. 123(2) EPC if the selected and omitted features are neither structurally nor functionally linked. The board held that, in the case in hand, in the absence of any indication, in the drawing and the corresponding portion of the description, as to the effects resulting from the relevant feature, it was impossible to recognise whether the above conditions for selecting a feature from its context were fulfilled. According to the board, a further consequence was that it was impossible for the skilled person to recognise what purpose was meant to be achieved by the selected features in the context of the invention. They thus could not be considered to be the deliberate result of technical considerations directed to the solution of the technical problem involved (see also T 398/00, see chapter II.E.1.13.2 "Schematic drawings" below). However, in T 2027/18 the board explained that the approach of T 398/00 and T 886/15 de facto made a distinction between features in the drawings which were related to the solution of the technical problem and features which were not. In the board's view, such a distinction was problematic in the context of Art. 123(2) EPC as it introduced a degree of legal uncertainty considering that technical problems often completely changed in the course of the proceedings, for example if new prior art was considered (see G 2/98, reasons 8.3; T 2311/10; T 910/03).

In T 1762/21, the board explained that the skilled person was presented with subject-matter extending beyond the application as filed when an amended claim included only some features of an originally disclosed combination and the features left out of the claim were understood by the skilled person to be inextricably linked to the claimed ones. This was the case if the skilled person would have considered the omitted features as necessary to achieve the effect associated with the added features. In such a situation, the amended claim conveyed the technical teaching that the effect could be obtained with the claimed features alone. This was in contradiction with the original disclosure, according to which the whole combination of features was needed.