1.6.1 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, 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). 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; for counter-examples, see however T 2118/08 and T 1306/12).

The same applies in the case of divisional applications in respect of the earlier application as filed, see e.g. T 2118/08, T 961/09, T 1581/12; see also the reference in chapter II.E.1.1. to G 1/05 (OJ 2008, 271).

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 further cases concerning an unallowable combination of features see e.g. T 659/97, T 2044/07.

In T 389/13 the composition of claim 1 was defined on filing in a broad manner, its definition including a few structural features as well as two ranges of parametric values, with an indication in the rest of the application of preferences for said structural features and a definition of additional parameters which might be used to characterise the composition, as well as corresponding ranges of values. Subsequently some limits were introduced on the basis of said preferences or on the basis of said additional parameters and corresponding ranges of values. The board emphasised that allowing those various restrictions without there being any – even implicit – indication in the application as filed that the specific combination was envisaged would be unfair to third parties. It would give an applicant who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of parameters and their ranges of values encompassed by said broad original claim.

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.

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 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.

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.

The following are examples of cases where the boards held the claimed combinations to be allowable under Art. 123(2) EPC:

In T 1241/03 the board came to the conclusion that claims to formulations comprising compounds in specific concentrations did not need to have a literal basis in a single passage of the application as originally filed, as long as the exact concentrations and ranges claimed for the specific substances were disclosed as such in the original application. The claims did not refer to a "patchwork" of parameters disclosed in non-connected parts of the description, nor had specific values been isolated from examples in a non-allowable way. The reference in a claim to a combination of compounds in specific concentrations, explicitly disclosed in different passages of the application, was not considered by the board to be an amendment of the patent which extended beyond the content of the application as originally filed.

In T 330/05 the board considered that the only feature added to the explicit disclosure, namely the concretisation of the polymer material, did not require any "selection" because each of the polymers listed on pages 14 -16 was clearly and unambiguously disclosed as an appropriate alternative material.

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