T 0542/94 07-05-1996

1. The appeal is admissible.

2. Procedural considerations

2.1. The present (divisional) application was rejected pursuant to Article 123(2) EPC because, in the Examining Division's opinion, there was no basis in the parent application for the broadening of the subject-matter to include an automatic flow control in general.

2.2. Considering that the subject-matter of claim 1 as filed in the divisional application remained essentially the same following the filing of the divisional application, Article 123(2) EPC referred to by the Examining Division does not apply.

Rather the issue to be decided in the present case is whether the present divisional application was filed in accordance with the provisions of Article 76(1) EPC, in particular the provision that a divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed.

2.3. It is to be noted that the requirement for admissibility of the claims of a divisional application under Article 76(1) EPC corresponds to that set out in Article 123(2) EPC (see also point 4.3 of the decision T 441/92 of 10 March 1995).

Since the Examining Division's arguments are essentially based on a comparison between the subject-matter of the parent application and that of claim 1 of the divisional application, their findings are in fact based on Article 76(1) EPC. Hence, the imprecise ground for rejection mentioned in the decision under appeal did not put the appellant in a disadvantageous position so that there is no case for reimbursement of the appeal fee under Rule 67 EPC.

3. Admissibility of the divisional application

3.1. In the present case the subject-matter claimed in the divisional application essentially relates to an automatic flow-control faucet which is characterised in that it comprises a particular type of actuator (a latch valve) for fluid control and a self-contained power source that powers the control circuit.

In contrast thereto the claims as originally filed in the parent application were directed to an ultrasonic flow-control system and the sole preferred embodiment described also related to an ultrasonically-controlled system which, in addition to the features of claim 1 of the present main request, also included an ultrasonic flow control, a turbine and a generator assembly, together with a rechargeable battery so that the flow of water itself recharged the battery.

The issue to be decided here is therefore whether, by omitting from the claim the features relating to an ultrasonic flow control, and by not mentioning the turbine and the generator assembly including a rechargeable battery (thereby broadening the scope of the claimed subject-matter), the application offends against the requirements of Article 76(1) EPC, i.e. whether or not the subject-matter of the divisional application thereby was extended beyond the content of the earlier (parent) application as filed.

3.2. In accordance with the case law of the boards of appeal, the requirement that no subject-matter should be introduced which extends beyond the content of the application as filed is interpreted so as to allow an amendment only when there is a clear basis for that amendment in the application as originally filed.

In the present case, it has therefore to be examined whether the parent application comprises a basis for the more general definition of the invention as presented in claim 1 on file.

3.3. It was not disputed that there is no explicit disclosure of the specific combination of features as defined now in claim 1 as a distinct and complete solution to the problems stated in the parent application.

However, the basis for a claim may also be implicit if it would be immediately evident to the skilled person, when taking account of the disclosure of the application as a whole, that the claimed subject-matter provides a complete solution to the problem addressed. In this respect attention is drawn to the decision T 331/87 (supra, reasons points 3 and 5) referred to by the appellant.

3.4. The Board agrees with the appellant that there are two distinct problems addressed in the parent application, page 2, lines 25 to 30, and that the aspect of avoidance of the psychological barrier caused by the use of visible electrical connections to the faucet under consideration is immediately recognised by the skilled reader as being fully independent of the aspect of the ultrasonic flow control.

In the summary of invention of the parent application on page 3, lines 20 to 29, the elimination of the need for electric wires is exclusively related to the use of an energy-storage device, such as a rechargeable battery, as a power source for the automatic flow-control device, which solution does not have a technical link with the specific manner in which the flow of water in the faucet is controlled.

Therefore there is no need to restrict the claim directed to the solution of this further aspect to ultrasonic flow control means.

3.5. Considering the functioning of the flow control and in particular the disclosure of the functioning of the magnetic latching valve described on page 7, lines 13 to 30, the Board also follows the appellant's opinion that the skilled person would immediately realise that the magnetic latching valve is of essential importance for the solution of the problem relating to the avoidance of visible electric wires to the faucet in view of the fact that such a valve requires very little power and is therefore particularly suitable for power supply by a self-contained power source.

In this respect attention can also be drawn to the affidavits filed by the appellant, according to which it was immediately clear to the skilled persons in question, when reading the parent application, that the benefit intended to be obtained by using a latching valve was low energy consumption. Both authors of the affidavits expressed the view that this contributed to the object of avoiding the psychological barrier caused by use of visible electrical connections and at the same time made it practical to use a self-contained power source.

Moreover, also in view of the more general reference to the provision of a self-contained power source mentioned at the end of the detailed description of the preferred embodiment (see page 14, line 9) and the fact that in the circuit shown in Figure 4 the battery (68) is depicted without its recharging generator, the skilled person would, in the Board's opinion, immediately recognise the redundancy of the charging circuit for the proper functioning of the flow control system in its simplest form, when considering the aspect of avoiding the use of visible electrical connections.

3.6. As was emphasised by the appellant, when considering if the requirement of Article 76(1) or Article 123(2) EPC is complied with "it has to be distinguished between what is obvious but not disclosed and what is obviously disclosed but not stated explicitly in the document under consideration".

The Board supports such differentiation and, applied to the present case, it is considered to be immediately apparent to the skilled person from the disclosure of the parent application that for the solution of the second aspect in an automatic flow-control faucet arrangement in accordance with the preamble of claim 1, such as is for example known from DE-B-2 034 877 or from DE-A-2 755 665 (see point 4 of the decision under appeal), the low-energy latching valve and self- contained power source are the sole features which are essential for the elimination of power supply by means of external wired connections.

Therefore, although the combination of features of present claim 1 is not explicitly disclosed in the originally-filed application documents, the skilled person receives sufficient and unambiguous information therefrom to the effect that, for solving the problem related to the second aspect, i.e. avoiding the use of visible electrical connections, it is essentially the combination of the use of a latching valve and a self- contained power source for power supply of the control means which provides the solution to this problem.

3.6. In view of the above conclusions, the Board is of the opinion that claim 1 in accordance with the main request meets the requirements of Article 76(1) EPC and that this claim is formally admissible as a claim in the present divisional application.

No objections under Article 76(1) EPC arise against the description and drawings.

4. Remittal to the first instance

4.1. The present application was rejected for reasons of non- compliance with Article 123(2) EPC only and was based on a claim with a different content to that of claim 1 of the main request.

It is to be noted that the subject-matter of claim 1 of the auxiliary request 2 considered by the Examining Division in the decision under appeal was similar to the subject-matter now claimed. Although also this auxiliary request was rejected for the reason that the claims did not include the ultrasonic sensing means (see point 3 of the decision under appeal), it can be derived from point 4 of the decision under appeal (dealing with auxiliary request 3) that the subject-matter of such a claim, if considered formally admissible, in the view of the Examining Division would appear to meet the requirements of novelty and inventive step. However, in view of the fact that when dealing with the requirements of novelty and inventive step of the auxiliary request 3 the Examining Division merely expressed its provisional opinion, without giving a complete reasoning as to why the subject-matter under consideration should be considered novel and inventive, the Board considers it to be appropriate to remit the case to the first instance for further prosecution of the examination on the basis of claim 1 of the main request.