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IV.3. Individual cases
The board in T 176/90 applied the principle that the parent application should disclose the invention claimed in the divisional application in a manner sufficiently clear and complete for it to be carried out by the skilled person. For an invention relating to a generic class of chemical compounds, this required the disclosure of the structure of the class, usually by means of a general formula, and an indication of a method of preparation.
In T 118/91 the board considered the argument that the filing of a divisional application led to the abandonment of its subject-matter in the parent application, which accordingly could no longer be considered as having originally disclosed that subject-matter. The board found that there was nothing in Art. 76 EPC 1973 or any other provision of the EPC to support that contention, stating clearly that the content of the application as filed cannot as a matter of logic be reduced by the subsequent filing of a divisional application.
In T 211/95 the examining division had refused a divisional application on the grounds that a set of features from the original claim 1 of the parent application was entirely missing from claim 1 of the divisional application. This omission was said to violate the provisions of Art. 76(1) EPC 1973. The board was unable to accept this. There were two technically unconnected teachings which could be claimed separately. The skilled person would clearly see that the set of features according to the subject-matter claimed in the parent application was not essential to the subject-matter claimed in the divisional application. The subject-matter of the divisional application was directly and unambiguously disclosed in the parent application.
In T 1088/06 an appeal was filed against the decision of the Examining Division refusing the European patent application, which had been filed as a divisional application on the ground that the application extended beyond the content of the earlier application as filed. The expression "10-4 to 10-9" occurred six times in the earlier application. The expression "104 to 109", which differed from the above expression by a reversal of the sign of the exponents, also occurred six times in the divisional application as filed. The question raised was whether the range of the electrostatic dissipation capacity and the range of the ability to dissipate electrostatic energy indicated as being "between about 104 to 109 Ohm/cm2" extended beyond the content of the earlier application as filed. The Examining Division had held that the correct range could not be "directly and unambiguously derived from the parent application as originally disclosed." In the board's view, if information in the earlier application is objectively recognisable by the person skilled in the art as information that is incorrect, and if the person skilled in the art would derive the correct information directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents of the earlier application as filed, then the correct information belongs to the content of the earlier application and may be used to decide whether a divisional application extends beyond the content of the earlier application as filed (Art. 76(1) EPC). In the case before it, the board concluded that the range of 104 to 109 Ohm/cm2 did not introduce subject-matter extending beyond the earlier application as filed.
The thrust of the appellant's (opponent's) submission in T 341/06 was that the subject-matter of claim 1 as per the opposition division's contested interlocutory decision extended beyond the content of the parent application as filed and therefore did not meet the criteria set out in decision G 1/06 (OJ 2008, 307). This claim related to a roof component with an integrated sunroof; it had therefore to be compared with claim 3 of the parent application, which also related to a roof component of that type, to ensure compliance with the requirements of Art. 76(1) EPC 1973. The respondent (patent proprietor) argued that a second teaching concerning the attachment of the sunroof to the roof component was disclosed directly and clearly in the parent application. However, the board held that there was nothing in the parent application to suggest to the person skilled in the art that it contained an invention – in addition to the one already claimed – corresponding to claim 1 of the main request. The passages cited by the patent proprietor did not refer to the attachment of the sunroof frame to the reinforcement frame, nor did they contain any reference to the purpose of the same or any formulation of the problem posed by such attachment. The board saw these passages as being merely the description of the third embodiment of the invention disclosed in the parent application in connection with a sunroof unit. The respondent possibly recognised subsequently that it could be in its interest to patent certain features of the means of attaching the sunroof frame, irrespective of the form of the roof liner. However, the independence of these features was not apparent in the parent application. The subject-matter of claim 1 was not therefore directly and clearly apparent as a combination of features in its own right on the basis of the disclosure in the parent application.
In T 1387/05 the parent application disclosed two different branches of video signal transmission. The first branch related to broadcasting from an encoder on a transmitter side to a decoder on a receiver side and was the invention for which protection was sought by the application before the board. The alternative branch disclosed a recording means, for instance a video cassette recorder, on the encoder side and a playback means, for instance a video cassette player, on the decoder side and had been pursued in the parent and root applications. The appellant's (applicant's) argument was based on the underlying understanding that the parent application disclosed two distinct branches as alternatives, and that the claims of the divisional application at issue concerned only the first branch. The board stated, however, that the parent application did not directly and unambiguously present alternative apparatuses corresponding to these two alternative branches. Instead it disclosed a recording/reproducing processing apparatus with the functionality that a broadcast wave might be transmitted and/or received. The board accepted the appellant's argument that decision G 1/06 (OJ 2008, 307) did not state that subject-matter had to be separately derivable from what was disclosed in each of the preceding applications as filed. However, this did not mean that features which were disclosed in a given context might be claimed in a different context or specific features might be generalised without a proper basis in the parent application as filed. As the same principles were to be applied for both Art. 76(1) EPC and Art. 123(2) EPC 1973, it followed that it was normally not allowable under Art. 76(1) EPC 1973 to extract features from a set of features which were originally disclosed only in combination in a parent application and to claim such extracted features in a divisional application isolated from their context, namely the combination disclosed in the parent application.
Following the established case law of the boards of appeal, the board stressed in the consolidated cases T 1500/07, T 1501/07 and T 1502/07 that, where newly claimed subject-matter is based on the extraction of features in isolation from a set of features originally disclosed in combination (e.g. in a specific embodiment in the description) the criterion for compliance with Art. 76(1) EPC 1973 is met, if there is no clearly recognisable functional or structural relationship between the features, i.e. if they are not inextricably linked. What is decisive is determining which specific combinations of features were originally taught by the parent, and whether the skilled person recognizes immediately and unequivocally from the totality of the disclosure when read contextually and using his common general knowledge that, and which, certain features are incidental to the proper functioning of these specific embodiments, and that these can be dispensed with without consequence for the remaining features. In the case before the board, the fact that the claimed features were not given any special prominence, and that they were functionally and structurally bound to the other, remaining features indicated that these criteria were not met.