1.6. Combination of features pertaining to separate embodiments or lists

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 under Art. 123(2) EPC (see e.g. T 727/00). However the board noted that most decisions following this well-established 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 (non-converging) alternatives as an allowable restriction of the scope of protection under Art. 123(2) EPC, 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, each alternative represented a distinct feature and therefore selecting specific elements from such lists lead to a singling out of an invention from among several distinct alternatives, which might provide an unwarranted advantage if there was no way to anticipate which of the different inventions would eventually be protected. 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 and broader options. Consequently, the elements of such a list represented more or less restricted versions of one and the same feature. 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. There was thus an analogy between selecting an element from a list of converging alternatives and 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 multiple selections from lists of converging alternatives necessarily met the requirements of Art. 123(2) EPC. It needed to be assessed whether the specific combination resulting from the multiple selections 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, that is, no unwarranted advantage should be derived from linking the specific combination of more and less preferred alternatives to an inventive selection which was not supported by the application as filed; 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.