… what the application hath joined together. This is, in a nutshell, what the present decision has to say on the subject of a divisional application which had been refused by the Examining Division (ED) on the ground of a violation of A 76(1), second sentence, EPC 1973. It also contains the correction of a surprising faux pas of the ED and a noteworthy statement on a broad statement intended to create a basis for specific combinations of the disclosed features.
NB: All references to EPC articles refer to the EPC 1973.
[4] According to A 76(1), second sentence, a European divisional application
“may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed”. […]
[5] According to the established jurisprudence of the boards of appeal it is a necessary and sufficient condition for a divisional application to comply with A 76(1), second sentence, that anything disclosed in the divisional application must be directly and unambiguously derivable from what is disclosed in the earlier application as filed (see G 1/06 [order]).
[6] In the present decision according to the state of the file, the ED argued that in order to comply with A 76(1), second sentence, the claims of a divisional application should be derivable from the claims of the earlier application, not merely from the description of the earlier application as filed. The ED based its reasoning in particular on considerations regarding the legal security of third parties.
[7] The board does not agree with the ED’s interpretation of A 76(1), second sentence, EPC 1973. The Enlarged Board of Appeal (EBA) explained in decision G 1/06 [5.3;9.2] why the legal security of third parties is sufficiently protected when A 76(1), second sentence, is interpreted as referring to the whole technical content of the earlier application as filed, rather than only to the claimed subject-matter of the earlier application as filed.
[8] Hence the relevant question in the present case is not, as argued by the ED, whether the subject-matter of claims 1 and 4 of the present application could be derived from the claims of the earlier application as filed, but, as argued by the appellant, whether the subject-matter of claims 1 and 4 was directly and unambiguously derivable from the whole technical content of the earlier application as filed.
Disclosure of the earlier application as filed
[9.1] Disclosure of the claims Independent claim 1 of the earlier application as filed reads as follows:
“A method for calibrating a printing device, comprising the steps of:- printing by said printing device a first wedge (10, 11, 12, 13);- printing by said printing device a second wedge (10, 11, 12, 13), different from said first wedge (10, 11, 12, 13);- determining for at least one patch (21) of said first wedge (10, 11, 12, 13) a first magnitude of a first quantity, wherein said first quantity is selected from the group of a psychophysical quantity and a psychovisual quantity;- using said first magnitude in calibrating said printing device; characterised in that the method further comprises the steps of: - determining for at least one patch of said second wedge (10, 11, 12, 13) a second magnitude of a second quantity, wherein said second quantity is different from said first quantity;- using said second magnitude in calibrating said printing device.”
Independent claim 9 of the earlier application as filed is directed at a system having features essentially corresponding to the steps of the above method of claim 1.
Hence both independent claims 1 and 9 of the earlier application relate to a calibration using a first quantity selected from the group of a psychophysical quantity and a psychovisual quantity, and a second quantity different from said first quantity.
The features of the method of claim 1 according to the present divisional application are found only in claim 7, dependent on claim 1, of the earlier application as filed.
Accordingly, it can be concluded from the above that the claims of the earlier application disclose the features of claim 1 of the present divisional application only in combination with the features of claim 1 of earlier application, i.e. as a further refinement of the invention claimed in claim 1 of the earlier application.
The above conclusion is not disputed by the appellant.
However, the disclosure of the remaining parts of the earlier application as filed, i.e. the description and drawings, must also be considered.
Disclosure of the description and drawings of the earlier application as filed
“Objects of the Invention” section
[9.2] The section of the description entitled “Objects of the invention” […] defines the objects of the invention as follows:
- to provide a calibration method and a system therefor that take into account changes of characteristics of the printing system;
- to provide a calibration method and a system therefor that are robust with respect to printer instability.
“Summary of the Invention” section
The section entitled “Summary of the invention” […] starts […] by stating that
“The above mentioned objects are realised by a method and a system in accordance with the present invention as claimed in the independent claims. The dependent claims set out preferred embodiments”.
In the remainder of the “Summary of the invention” section […] except paragraph [0045] discussed in the next paragraph below, the invention is presented as relating to a calibration method or system using a first quantity selected from the group of a psychophysical quantity and a psychovisual quantity, and a second quantity different from said first quantity, i.e. as relating to subject-matter corresponding to the method of claim 1 and to the system of claim 9 of the earlier application as filed. Importantly, the “Summary of the invention” section does not disclose any of the main features of dependent claim 7 of the earlier application as filed, i.e. the mapping of a first value for printing a 100% patch to a second smaller value.
In other words, the “Summary of the invention” section, paragraph [0045] excepted, consistently presents the invention as being what is claimed in independent claims 1 and 9, and does not present the features of claim 7 of the earlier application as filed as an independent invention.
There is however also paragraph [0045] in the “Summary of the invention” section which reads:
“As will become apparent from the following description and drawings, some of the disclosed embodiments do not require all the features of the invention as claimed in the independent claims; some of these disclosed embodiments may be the subject of a divisional application of the present patent application.”
Paragraph [0045], however, does not indicate which features of the invention are not required and for which embodiments. It is thus left open whether or not the expression “some of the disclosed embodiments” was meant to include the third embodiment. The board considers that the broad statement of paragraph [0045] does not by itself render any specific combination of features from the disclosed embodiments directly and unambiguously derivable as a separate invention.
“Detailed Description of the Invention” section
This section […] discloses four embodiments of the invention. The embodiment comprising the features in claim 1 of the present divisional application and in claim 7 of the earlier application as filed is the third embodiment.
The description of the third embodiment in […] the earlier application as filed does not contain any statement making it unambiguously clear that the third embodiment was meant to be more than just an embodiment of the invention.
The third embodiment is also mentioned in [a passage] where it is stated that the mapping of a first value for printing a 100% patch to a second smaller value, which is specific to the third embodiment, could preferably be applied as a first step before carrying out, as a second step, a calibration method according to claim 1 of the earlier application as filed. However, whereas the first step is described as optional […], there is, by way of contrast, no indication in these two paragraphs that the second step might be optional. [Two other paragraphs] which also mention the third embodiment, do not provide such an indication either.
Thus, summarising, the disclosure of the description and drawings is consistent with the disclosure of the claims of the earlier application as filed in presenting the subject-matter of claim 1 of the present divisional application, not as a separate invention, but as features which must be taken in combination with the features of claim 1 of the earlier application as filed. Thus the subject-matter of present claim 1 is not directly and unambiguously derivable from the earlier application.
The [applicant’s] arguments
[10] The appellant’s arguments have been summarised and listed as (a) to (g) […].
NB : Most of these arguments have already been dealt with above or are not really relevant to the case. Argument (g) is more interesting:
(g) In a similar situation in decision T 211/95 [4.3.3;4.4], the board held that it was clear to the person skilled in the art that the earlier application contained two different teachings, the two teachings each pertaining to a different problem, and realised by different, independent technical features. Thus, the claimed invention of the earlier application solved a first problem ([4.1]) and the claimed invention of the divisional application solved a second problem ([4.2]), different from the first one. The two teachings were technically unconnected and could each 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.
In the present case, the invention of claim 1 of the present divisional application solves the problem of […] “a printing device that is not stable due to the fact that the maximum amount of marking particles, that the device applies to the receiving substrate, changes over time for one or more colorants”, whereas the invention of claim 1 of the earlier application pertains to a calibration method that incorporates characteristics of the human visual system and wherein the quantities that are used to calibrate the different colorants of the printing device are optimally chosen […]. Hence the two inventions in the earlier application are based on two unconnected teachings and solved by different, independent technical features. For the reasons underlying T 211/95, the two inventions should be allowed to be claimed separately.
Regarding argument (g), based on decision T 211/95, the present board reaffirms that the necessary and sufficient condition established by the case law of the boards of appeal, in particular by the EBA (see, for instance, G 1/06 [order]), for deciding whether a divisional application meets the requirement of A 76(1), second sentence, is that anything disclosed in the divisional application must be directly and unambiguously derivable from what is disclosed in the earlier application as filed. This strict criterion is the same as is applied for determining whether a claimed subject-matter is novel with respect to a prior art disclosure.
In decision T 211/95, the board reached the conclusion that the earlier application as filed contained two separate inventions, even though only one of them was claimed. In order to reach this conclusion, the board took into account the whole disclosure of the earlier application as filed, including the problems and teachings of the two inventions, and came to the conclusion that the two inventions were technically unconnected and could be claimed separately.
The present board understands the board’s reasoning in T 211/95 as being that the requirement of A 76(1), second sentence, was complied with because it was implicit from the whole disclosure of the earlier application as filed that there were two separate inventions which could be claimed separately. This is apparent from the repeated reference in T 211/95 to the “technical teachings” (“technische Lehren”) contained in the earlier application, which were considered as pertaining to different problems and independent technical features for the solution of the problems.
In other words, the board in T 211/95, based on the different facts of that case, held that the whole disclosure of the earlier application as filed contained at least implicitly two separate inventions.
In the present case, the board explained […] why the whole disclosure of the earlier application as filed does not present the subject-matter of claim 1 of the present divisional application as a separate invention.
Moreover, the technical teachings in the present case, taking particular account of underlying problems and the direct and unambiguous disclosure of inventions solving these problems, do not change the board’s conclusion for the following reasons.
The third embodiment deals with cases where the maximum amount of marking particles changes over time for one or more colorants […]. The earlier application […] explains that a calibration method using densities and dot gain does not work in this case. By contrast, the calibration method of the third embodiment is said to compensate for this effect […]. The board understands this to mean that the changes over time are compensated by the calibration method of the invention including the maximum amount (100 % patch), whereas the mapping as now claimed is merely a possible solution to the setting of the 100 % patch which is applied to the calibration curve in the beginning (the standard state) before any changes occur which are then compensated by the calibration method of the invention. This has the effect that, for a specific change (chroma decreasing over time), even the 100 % patch may be compensated by the calibration method of the invention (by increasing the amount of colorants beyond the setting in the beginning), and printing of the 100 % patch remains stable […]. This understanding is confirmed by the last nine words of claim 7 of the earlier application (“when said printing device comes fresh from the factory”).
Conclusion
[11 For the above reasons, the board concludes that the present divisional application does not meet the requirement of A 76(1), second sentence.
Hence, the appealed decision cannot be set aside. […]
The appeal is dismissed.
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