Some time ago, we have seen T 51/08 (here) where the Board made clear that claims that have been found not to comply with the EPC in a final decision cannot be revived by means of a divisional application. The present decision confirms this approach:
The principle of res judicata
[1] The present board agrees with the findings regarding the principle of res judicata set out in T 51/08 [3] in the context of a parent and its divisional application. Thus subject-matter on which a final decision has been taken by a board of appeal in the parent application cannot be pursued in a divisional application.
The decision in the parent application
[2] The application in suit’s parent application 01 947 493.1 was refused by its respective examining division which held that that application contained subject-matter which extends beyond the content of 01 947 493.1 as filed (A 123(2)). This decision was maintained on appeal in particular with respect to the feature of the return pipe line which returns lubricant from the part to be lubricated for which there was no direct and unambiguous disclosure in the parent application 01 947 493.1 as filed (published as WO-A-01/98703) (T 1005/07 [1]).
The divisional application in suit
[3.1] One issue of added subject-matter concerns the feature “a return pipe line (5) configured to return lubricant from at least one part to be lubricated” of claim 1 (main and auxiliary request) with respect to European patent application 01 947 493.1, the parent of the divisional application in suit. This issue was raised by the board in the annex to the summons to oral proceedings.
Main request
[3.2.1] The subject-matter of claim 1 according to the main request differs from the subject-matter of claim 1 according main request in the parent application in the addition of the feature “the intermediate tank (1) being configured to condition the lubricant before recirculation” after the first mention of “an intermediate tank (1)” and in that the reference signs have been renumbered.
The changes in the reference signs are not of substantive significance.
The addition of the feature “the intermediate tank (1) being configured to condition the lubricant before recirculation” independent of, and does not affect, the feature of “a return pipe line (5) configured to return lubricant from at least one part to be lubricated”.
Thus, insofar as the feature of a return pipe line configured to return lubricant from the part to be lubricated of claim 1 according to the main request of the present appeal is concerned, the facts are the same as to those for claim 1 according to the main request of the parent application in appeal case T 1005/07.
[3.2.2] As already noted above, in appeal case T 1005/07 it was finally decided that the feature of “a return pipe line configured to return lubricant from at least one part to be lubricated” constitutes added subject-matter which extends beyond the content of European patent application 01 947 493.1 as filed. Therefore, the present board is prevented from deciding on it a second time.
Furthermore, additional evidence provided by the appellant in the context of this appeal and concerning the use of return pipe lines in prior art cannot overcome a deficiency in the direct and unambiguous disclosure of such a feature as part of the invention in the parent application 01 947 493.1 as filed.
[3.2.3] Thus, the issue of added subject-matter concerning the feature of a return pipe line configured to return lubricant from the part to be lubricated, as set out in T 1005/07 [1], renders the present main request unallowable under A 76(1) EPC 1973.
Auxiliary request
[3.3] Claim 1 according to the auxiliary request differs from claim 1 of the main request in that the text “the intermediate tank (1) being configured to condition the lubricant before recirculation” has been deleted.
This means that claim 1 according to the auxiliary request is, apart from changes in the reference sign numbering scheme, identical to claim 1 according to the main request decided in decision T 1005/07. Therefore, the subject-matter of claim 1 of the auxiliary request is the same as that of claim 1 according to the main request decided in decision T 1005/07.
Since a final judgement was already handed down on this subject-matter in that decision, the present board is prevented from deciding on it a second time.
Again, additional evidence provided by the appellant in the context of this appeal and concerning the use of return pipe lines in prior art cannot overcome a deficiency in the direct and unambiguous disclosure of such a feature as part of the invention in the parent application as filed.
Thus, the issue of added subject-matter concerning the feature of a return pipe line configured to return lubricant from the part to be lubricated, as set out in point 1 of T 1005/07, renders the present auxiliary request unallowable under A 76(1) EPC 1973. […]
The appeal is dismissed.
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