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Case Law of the Boards of Appeal

 
 
1.1.3 Technically unconnected teachings

In T 211/95 the examining division had refused a divisional application on the grounds that a set of features from the original claim of the parent application was entirely missing from the claim of the divisional application. The board was unable to accept this. It held that the requirements under Art. 76(1) EPC 1973 would be met if it was obvious for the skilled person that there were two technically unconnected teachings which could be claimed separately, and if the skilled person clearly saw 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. In the case at hand, the subject-matter of the divisional application was directly and unambiguously disclosed in the parent application.

In T 341/06 the board addressed the issue whether the divisional application met the requirements set out in T 211/95 and G 1/06, i.e., in particular, whether the parent application included a second teaching, which was not technically connected to the first teaching claimed in the parent application and which was directly and unambiguously disclosed in the parent application. The case concerned an invention of a roof component on a vehicle with an integrated sunroof. The 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 this claim. The respondent may have subsequently recognised 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 board concluded that the subject-matter of claim 1 was not directly and clearly apparent as a combination of features in its own right on the basis of the disclosure in the parent application.