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T 0961/09: Legal framework w.r.t. Article 76(1)

T 0961/09 and T 0962/09 relate to decisions by the Examining Division refusing a divisional application for non-compliance with Article 76(1). To refresh the memory, Article 76(1) reads:

A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.

In both decisions, the Board of Appeal summarizes the legal framework with respect to this Article :

In summary, as follows from reasons 5.1 of G 1/05 (OJ EPO 2008, 271) and G 1/06 (OJ EPO 2008, 307) the main criterion for assessing compliance of Article 76(1) is essentially the same as that applied when assessing compliance to Article 123(2) EPC. 

Thus, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier, parent application as originally filed, as determined by the totality of its claims, description and figures when read in context. 

Moreover, it is normally not admissible to extract isolated features from a set of features originally disclosed in combination, see T 1067/97, T 714/00 or T 25/03.

Following T 770/90, an unduly broad filed claim cannot justify new feature combinations. Nor, the Board adds, can the content of a document be regarded as a reservoir for combining features from separate embodiments, see e.g. T 296/96. 

The Board further refers to decisions T 1500/07, T 1501/07 and T 1502/07 in particular reasons 2 thereof.

Although specifically directed to Article 76(1) I'd say this is a very useful summary.

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