T 0886/15 -Technical considerations required when extracting features from drawings

The appeal in this case is against the decision of the Opposition Division to revoke European Patent EP-B-2012388. The patent was revoked under Art. 100(c) EPC, extension of subject matter.

Claim 1 of the Main Request in appeal included the added feature:

"wherein a first portion of the coil element does not overlap with the radiation plate (20) in a plan view of the power supply circuit board (10; 50)".

This feature was not literally disclosed in the claims nor in the description of the application as-filed. The applicant argued that the feature found basis in the figures, e.g., could be taken from Figure 23.

The Board disagreed. They were sceptical as to the technical significance of this feature, because the description emphasised that the radiation plate (20) was made of a non-magnetic material, such as copper or aluminum, which have a magnetic permeability close to the one of air. Hence, the technical relevance of the added feature was questionable. Also the description did not state any effect of the extracted feature.

The Board considered that - generally - selected features could only be taken from a drawing, if the selected and the omitted features shown in a drawing were neither structurally or functionally related:

17. 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 present case, because the techical effect of the features selected from Figure 23 was questionable and not mentioned anywhere, the Board found that it was impossible check whether the above criterion was met:

20. In the absence, in the drawing and the corresponding portion of the description, of any indication as to the effects resulting from a first not overlapping and second portion overlapping the radiation plate, it is impossible to recognise whether the conditions for selecting a feature from its context, recalled above, are fulfilled.

Since it was inpossible to verify whether the relevant conditions for extracting features from the drawings were fulfilled, they concluded that the amendment was not allowed under Art. 123(2) EPC:

21. 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 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.

22. The introduction of the features directed to the coil element having a first portion not overlapping the radiation plate and a second portion overlapping the radiation plate defines new subject-matter in contravention of Article 123(2) EPC.

Regarding the concept that a technical purpose is required for extracting some  features shown in a drawing from the entirety of features disclosed therein, the Board in T 886/15 referred to T 398/00 (see r. 21, above). Also in that decision the Board considered it necessary that the selection of features which can be taken from a drawing must be a "deliberate result of technical considerations directed to the solution of the technical problem involved".