T 0260/14 - Partial priority also for narrowed claims

Key points

• In this decision, the Board applies G 1/15 about partial priority: is claim 1 novel over the published EP priority application D5, in particular the example of D5? The Board decides that partial priority can be acknowledged concerning the working example. 
• " The working example is thus alternative subject-matter by virtue of a generic "OR"-claim which falls within the ambit of claim 1 of the patent in suit. Thus, the part of claim 1 which concerns the working example is entitled to partial priority. Therefore, the disclosure in the priority document of the working example cannot be considered to take away the novelty of the subject-matter of claim 1 pursuant to Article 54(3) EPC." 
• Unlike in G 1/15, claim 1 was not broadened compared to the priority document D5, but narrowed. According to the Board, this is not relevant.
• " 2.4 The Board does not accept the appellant-opponent's argument that the questions referred to the Enlarged Board in G 1/15 were not relevant for the case at issue. The appellant-opponent argued that the referral in G 1/15 concerned the situation where the priority document disclosed only one or more embodiments, but not the subject-matter of the entire claim claiming that priority, whereas the patent in suit comprised a limitation of the more general disclosure in D5. [] The Board notes that this comparison, as well as the reference to other distinguishing features between the patent in suit and D5, concerns the question of whether priority can be acknowledged for the entire scope of claim 1 of the patent in suit. This is, however, not the issue which the Board needs to decide. The only relevant issue is whether partial priority can be acknowledged for that part of claim 1 which concerns the working example, i.e. that part of claim 1 against which the novelty attack was directed."

EPO T 0260/14 -  link 

2. Novelty

2.1 The opposition division decided that the patent was not entitled to the claimed priority date and that claim 1 of the patent in suit lacked novelty pursuant to Article 54(3) EPC in view of the priority document itself (document D5) which was published on 30 January 2008, i.e. after the filing date of the patent in suit (24 July 2007).

2.2 The appellant-opponent's novelty attack against claim 1 of the patent in suit is based on a working example disclosed in paragraphs [0154] to [0156] of D5 (hereinafter: "working example") relating to a dental impression material obtained by mixing the catalyst paste and base paste 2 disclosed in paragraph [0154]. The same working example is also disclosed in paragraphs [0159] to [0162] of the patent in suit.

In its statement setting out the grounds of appeal the appellant-patent proprietor argued that claim 1 of the patent enjoyed partial priority in respect of the part of the claim concerning the working example and that the working example disclosed in D5 could therefore not qualify as prior art under Article 54(3) EPC. The appellant-opponent argued that no priority could be acknowledged from D5 and that the subject-matter of claim 1 of the patent in suit lacked novelty in view of the working example disclosed in D5.

For the reasons set out below, the Board decides that partial priority can be acknowledged for the part of claim 1 concerning the working example.

2.3 In G 1/15 the Enlarged Board of Appeal affirmed the concept of partial priority by answering the questions of law referred to it as follows:

"Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect." (see the order of the decision).

2.3.1 The first step in the assessment of whether certain subject-matter within a generic "OR"-claim may enjoy partial priority is to determine the subject-matter disclosed in the priority document that is relevant. G 1/15 gives guidance that this is to be done both in accordance with the disclosure test laid down in the conclusion of G 2/98, and on the basis of explanations put forward by the applicant or patent proprietor to support its claim to priority, in order to show what the skilled person would have been able to derive from the priority document (G 1/15, point 6.4 of the Reasons).

In this context the Board refers to G 2/98 where the Enlarged Board held that a claim to priority cannot be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application whose priority is claimed, provided that the application as a whole specifically discloses such elements. In the case before the Board, the novelty-destroying disclosure forms part of priority document D5 and the relevant subject-matter disclosed in D5 is the working example.

2.3.2 The second step is to examine whether this subject-matter is encompassed by the claim of the patent claiming said priority (G 1/15, point 6.4 of the Reasons). The question is thus whether D5's working example is encompassed by claim 1 of the patent in suit. The Board notes that G 1/15 concerns a generic "OR"-claim and that the Enlarged Board referred in its answer explicitly to this type of claim. Thus, in the case before it the Board also has to consider whether the working example is alternative subject-matter by virtue of a generic "OR"-claim.

In G 1/15 the Enlarged Board concurred with the obiter dictum in T 1222/11 (point 11.8 of the Reasons), according to which a decision on whether partial priority can be acknowledged for subject-matter disclosed in a priority document and encompassed by an "OR"-claim cannot depend on whether this subject-matter was expressly identified as a separate alternative in the claim (G 1/15, points 2 and 6.6 of the Reasons). Instead, the Enlarged Board gave examples of cases where the finding that a claim was entitled to partial priority to the extent that the claim encompassed specific alternatives disclosed in the priority document was based on a mere comparison of the ambit of the claim with the content of the priority document (G 1/15, point 2.4 of the Reasons).

In the case now before the Board, claim 1 of the patent in suit is a dental impression material comprising a base paste and a catalyst paste. Both pastes are described using generic features such as "polyethers" and "copolyether of ethyleneoxide". The working example is one specific embodiment of the claim (see paragraphs [0159] to [0162] of the patent in suit). This was never disputed by the parties. Multiple alternative working examples would be possible, with different variants falling within the generic features of claim 1. The working example is thus alternative subject-matter by virtue of a generic "OR"-claim which falls within the ambit of claim 1 of the patent in suit. Thus, the part of claim 1 which concerns the working example is entitled to partial priority. Therefore, the disclosure in the priority document of the working example cannot be considered to take away the novelty of the subject-matter of claim 1 pursuant to Article 54(3) EPC.

2.4 The Board does not accept the appellant-opponent's argument that the questions referred to the Enlarged Board in G 1/15 were not relevant for the case at issue. The appellant-opponent argued that the referral in G 1/15 concerned the situation where the priority document disclosed only one or more embodiments, but not the subject-matter of the entire claim claiming that priority, whereas the patent in suit comprised a limitation of the more general disclosure in D5. It supported this by reference to the molecular weight of the fluidity improver. Claim 1 of the patent in suit identified a range of 100-1900, whereas D5 disclosed a range of 100-3800.

The Board notes that this comparison, as well as the reference to other distinguishing features between the patent in suit and D5, concerns the question of whether priority can be acknowledged for the entire scope of claim 1 of the patent in suit. This is, however, not the issue which the Board needs to decide. The only relevant issue is whether partial priority can be acknowledged for that part of claim 1 which concerns the working example, i.e. that part of claim 1 against which the novelty attack was directed.

2.5 The appellant-opponent posed the question of whether the patentee, in a situation where the generic "OR"-claim and an actual selection of a numerical range are combined (i.e. partial priority claimed with regard to an actual numerical range selection), might be in a better position than a third person who filed a selection invention within the priority interval, for example by claiming a sub-range of 600-1900 of molecular weight. For the latter the criteria for assessing novelty of a selection invention would apply, which included the criterion that the claimed range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range. It was therefore not clear whether the principle of equal treatment of applicants and third parties, as referred to in G 2/98 (point 8.1 of the Reasons), would still apply in future. The appellant-opponent argued that the criteria for assessing novelty and priority should be the same.

The Board does not regard the appellant-opponent's question as being based on the facts of the case. The partial priority claimed by the appellant-opponent does not concern a range. The working example contains the fluidity improver Breox PAG 50 A 20 which has one specific molecular weight. Thus, even if one were to assess novelty, the criteria which the appellant-opponent cited with regard to the assessment of novelty of a selection invention would not apply. The appellant-opponent might have had the question in mind of what criteria would apply for the assessment of partial priority if the alternative subject-matter of a claim was a sub-range within the broader range of the claim in question. However, this is not at issue in the present case.

In its submissions dated 30 March 2016 the appellant-opponent asked the Board to decide, in view of its arguments concerning the referred questions in G 1/15, whether a further referral to the Enlarged Board was necessary. In view of the above, the Board does not regard such a referral to be necessary.