T 0557b/13 - After G 1/15 - Partial priority

Key points

• This is the Board's decision in the case wherein questions were referred to the Enlarged Board, leading to G 1/15. The Board now finds that the claim (of the divisional application in suit) is entitled to partial priority for the embodiments disclosed in the priority application. Hence, the fact that the published parent application discloses the same embodiments, is not prejudicial to novelty.

EPO T 0557/13 -  link

Reasons for the Decision

Novelty

1. The only novelty objections raised by the Opponent are based on the parent application D1. More particularly, the Opponent had argued that some specific examples of D1 disclosed uses falling within the ambit of Claim 1 at issue (notice of opposition, page 4, three first paragraphs).

2. According to G 1/15, entitlement to partial priority may not be refused for Claim 1 at issue to the extent that alternative subject-matter encompassed has been disclosed for the first time, directly, or at least implicitly, and unambiguously, and in an enabling manner, in the priority document (here D16).

3. Subject-matters, which are

- disclosed in the priority document D16 and in the parent application D1

and which are

- encompassed by (generic "OR") Claim 1 of the (divisional) patent at issue as (non spelt-out) alternatives, i.e. displaying all the cumulative features of the claim, thus benefiting of partial priority,

can thus not be novelty-destroying for Claim 1 of the (divisional) patent, the effective filing date of such subject-matters being the same.

3.1 Example 1 of D1 undisputedly discloses such an alternative use encompassed by the generic "OR"-Claim 1 at issue and has undisputedly been disclosed for the first time, directly, or at least implicitly, and unambiguously, and in an enabling manner, in priority document D16 (see decision T 557/13 of 17 July 2015 (Reasons, 4.6, 7.2.3 and 7.3).

3.2 Even assuming (arguendo) that the other examples of D1 invoked by the Opponent indeed disclose further alternative uses also encompassed by Claim 1 at issue, and are indeed also disclosed for the first time, directly, or at least implicitly, and unambiguously, and in an enabling manner, in the priority document as alleged by the Opponent (notice of opposition, page 4, third paragraph), these examples could also not be novelty-destroying as regards Claim 1 at issue for the same reasons.

Remittal

4. Inventive step objections (Article 100(a) EPC) that had also been raised by the Opponent are not dealt with in the decision under appeal. In the exercise of its discretion under Article 111(1) EPC, the Board finds it appropriate to remit the case to the Opposition Division for further prosecution, in accordance with the Appellant's request to this end.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division for further prosecution.