Combination of features pertaining to separate embodiments; application as filed is not a "reservoir"  

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, and more recently see e.g. T 1206/07, T 1239/08, T 1648/11, T 1799/12, T 1853/13). 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). The fact that features in question have been mentioned in the description as "preferred" may act as a pointer (T 68/99, T 1799/12).

The same applies in the case of divisional applications in respect of the earlier application as filed, see T 2118/08, 961/09.

In T 1206/07 the board considered that, in the absence of the least indication concerning this particular combination, the selection of the two characteristics was not clearly and unambiguously evident from the application as filed. For a further case concerning an unallowable combination of features see T 2044/07.

In T 770/90 the board ruled that an unduly broad claim not supported by the description as originally filed was not a suitable "reservoir" for amendments.

In T 296/96 the board stated that, when assessing whether a feature had been disclosed in a document, the relevant question was whether a skilled person would seriously contemplate combining the different features cited in that document. That was not the case in the application as filed.

According to T 1120/05, the original drawings cannot be considered as a reservoir of features on which the applicant or a patent proprietor can draw when amending the claims.

In T 2363/10 the board held that the selection of features disclosed in six out of one hundred and forty three bullet points represented a particular selection which was not disclosed as such. The skilled person had no hint or incentive to choose exactly such a combination of features. The general statement "any such apparatus, means or method has or may have any of the following features" did not change this conclusion, since for a combination of selected elements to form a disclosure, additional information was required which directed the skilled person to this combination.

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