T 1500/07 06-05-2008

1. The appeal is admissible.

2. Legal framework: Article 76(1) EPC 1973

2.1 Article 76(1) EPC, second sentence, requires that a European divisional application is filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed. According to established jurisprudence, the same principles for determining compliance with Article 123(2) EPC with respect to an application as filed apply for testing compliance of a divisional with Article 76(1), in relation to the parent application, see G 01/05 "Divisional/Astropower" and G 01/06 "Sequences of Divisionals/Seiko" (both to be published in the OJ), reasons 5.1. Thus, a central criterion for establishing whether subject-matter complies with Article 123(2), namely that it be directly and unambiguously derivable by the skilled person from the original disclosure, as determined by the totality of claims, description and figures when read in context applies also in determining whether a divisional application complies with Article 76(1) EPC 1973 in respect of the earlier application.

2.2 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 above criterion is met, following accepted jurisprudence as developed in T 1067/97, T 0714/00 or T 0025/03 (see also the Case Law of the Boards of Appeal of the EPO, 5th edition, 2006 (hereinafter CLBA), III.A.1.1, page 240), if there is no clearly recognizable functional or structural relationship between the features, i.e. when they are not inextricably linked. In such cases, see CLBA, III.A.1.1, page 239, and T 770/90 mentioned therein, an unduly broad original claim, moreover, does not represent a suitable "reservoir" for amendments, i.e. does not by itself justify claiming new feature combinations which may fall within the scope of an original broad claim but are not explicitly disclosed in the original application. These criteria apply also in determining compliance of a divisional application with Article 76(1) EPC 1973.

3. Parent and divisional application

3.1 The central idea of the earlier, or parent, application concerns the use of strips (in a sheet) in a cleaning article to give a fibre bundle layer forming brush portions increased rigidity and reduce the risk of entanglement so that the brush retains its shape and dust trapping ability (see in particular the last paragraph of page 2 to 2nd paragraph of page 3). This main idea is realized in various embodiments which can be divided into two distinct groups. In that of figures 1 to 6 the various cleaning layers are arranged only on one side of the article, while in figures 7 to 9 cleaning layers are provided on both sides of the article. These groups share some form of holding arrangement in which a holder is insertable into holding space or spaces formed between sheets, see in particular figures 3, 7 and 8.

3.2 The present divisional application, see its sole claim 1 as filed, pursues the idea of a holding arrangement with two holding spaces formed by joining a fusible sheet and a base sheet.

The common parts of the parent and divisional application (which might serve as basis for subject-matter satisfying both Articles 76(1) and 123(2) EPC) concerning two holding spaces are figure 3 with the paragraphs bridging description pages 18 and 19; figures 7 and 8 and the paragraph bridging pages 28 and 29; and the two first complete paragraphs of page 23. These detail two distinct embodiments of the central idea of the parent application which nevertheless share a common holding arrangement. In the Board's view, this commonality between distinct embodiments allows for some degree of generalization. Thus, the fact that they share a particular holding arrangement teaches the skilled person that that holding arrangement is applicable in a broader context, though still within the confines of the parent's basic idea.

4. Main request, first to fifth auxiliary requests

4.1 Turning first to the common holding arrangement, this is described for each embodiment as formed by two holding spaces defined by a central joining line (7 in figure 3, 35 in figure 7) midway between two parallel joining lines 13 or 36, see the last paragraph of page 18 and the penultimate paragraph of page 28 respectively. The joining lines serve to fusion-bond the two sheets and overlying fibre bundle layer or layers, see page 13, final paragraph; page 17, lines 3 to 8; and page 28, lines 14 to 16. The central joining line moreover extends along the centre line of the (elongate) cleaning article, as explicitly stated on page 17, lines 7 to 8, and shown clearly in figures 3, 7 and 8. Figures 3 and 7, see page 14, lines 1-4, show the outer joining lines 13 and 36 as formed along the boundary lines between a central region 2a and strip forming regions 2b.

4.2 The joining lines define the holding spaces while also joining the various layers and thereby forming the brush portions between sheet strips and fiber bundle layer. The above features are thus clearly linked, functionally and structurally. Nor are any of them given prominence over others. The Board concludes that any claim to the holding arrangement must therefore include all the above inextricably linked features. As is immediately evident from their wording this is not the case for any of the versions of claim 1 according to main, first to fifth auxiliary requests. In the main, and first to fourth requests claim 1 lacks detail of the arrangement of joining lines relative to each other or detail of their arrangement with respect to the sheet regions, a feature missing in claim 1 of the fifth auxiliary request.

4.3 Additionally, claim 1 according to these requests also lacks a central feature of the basic idea of the parent application. The general statement of page 7, second complete paragraph, specifies non-woven fabric comprising thermoplastic fibers or a thermoplastic resin film as sheet material, echoed in the first complete paragraph of page 10 describing the sheets of the first embodiment, and (incompletely) in lines 3 and 4 of page 28 for the second embodiment. This feature ensures fusion bonding of the layers forming the holding arrangement as well as the brush portions, and thus inextricably binds the holding arrangement and the underlying central idea of the earlier parent application.

4.4 By omitting the above features the remaining features are lifted out of their original context and raised to prominence. This gives them a special significance where hitherto there was none, thus generalizing them beyond their original context. This results in new subject-matter which extends beyond the content of the earlier parent application as filed.

4.5 The Board stresses that it is immaterial that this new combination of features might fall within the scope of a broad statement of invention in the parent. What is decisive is determining which specific combinations of features where 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 present case the fact that the presently claimed features were not given any special prominence, and that they are functionally and structurally bound to the other, remaining features indicates that these criteria are not met.

4.6 The Board concludes that claim 1 of each of the main and first to fifth auxiliary requests fails to meet the requirements of Article 76(1) EPC 1973.

5. Sixth Auxiliary Request

Claim 1 of this requests includes all the features identified above. The Board is satisfied that it includes all those features that structurally and functionally underpin the holding arrangement common to the two detailed embodiments, as are directly and unambiguously clear to the skilled person from the parent. Similarly, it includes those features that the Board believes the skilled person recognizes as necessary and sufficient for defining the broader context justified by the detailed description of the two embodiments in the earlier (and as filed divisional) application.

In conclusion, claim 1 as thus worded meets the requirements of Article 76(1). The Board adds that given the fact that the parent and the divisional descriptions as filed are identical, the above amended version of claim 1 also has clear basis in the divisional application, and thus also meets the requirements of Article 123(2) EPC.

6. Remittal for further prosecution

6.1 The decision under appeal concerned only the issue of Article 76(1) EPC 1973, and did not consider any of the further requirements of the EPC, in particular those of novelty and inventive step. So as not to deprive the Appellant of a first instance consideration of these remaining requirements, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the department of first instance for further prosecution on the basis of claim 1 of the sixth auxiliary request.

6.2 The Appellant has requested completion of the search, as the search division originally issued a partial search according to Rule 45 EPC 1973, due to "the extremely unclear claim 1" of the as filed divisional application. The Board is satisfied that claim 1 of the sixth auxiliary request meets the requirements of Article 84 EPC. It is therefore now possible to complete the search by carrying out an additional search as provided for in the Guidelines for Examination in the EPO, C-VI, 8.2, third sentence.