T 0886/15 - Technical considerations for extracting features

 Key points

• The Board examines Article 123(2) in opposition.
• The added features have no literal basis in the original application documents. The question is whether the embodiment of Figure 23 provides basis. Figure 23 teaches more features, some of them being omitted from the claim. The typical test in such cases is 'inextricably linked' (CLBA II.E.1.9). 
• The Board: “ The selection of some features from a group of features originally disclosed in combination is allowable under Article 123(2) EPC if the selected and omitted features are neither structurally nor functionally linked. It is only when these conditions are met that the intermediate generalisation resulting from the selection can be considered allowable.” 
• “ In the absence, in the drawing and the corresponding portion of the description, of any indication as to the effects resulting from [the feature now recited in isolation in claim 1], it is impossible to recognise whether the conditions for selecting a feature from its context, recalled above, are fulfilled.”
• “A further consequence is that it is impossible for the skilled person to recognise what purpose is meant to be achieved by the selected features [i.e. now added in claim 1] in the context of the invention. They thus cannot be considered to be the deliberate result of technical considerations directed to the solution of the technical problem involved (cf. T 398/00, point 3.4). In the absence of any identified technical purpose justifying the features in question, their selection in claim 1 is purely arbitrary. Their introduction into claim 1 of the main request results only from the intention of defining an artificial difference with the prior art.”
• The claim does not comply with Article 123(2).
• As a comment, if amendments are based on technical considerations 'post hoc' this can of course also be a ground why the amendments do not comply with Article 123(2). 

EPO T 0886/15 -  link

decision text omitted.