T 1662/14 - Article 54(3) doc claims priority from CIP

Key points

• This opposition appeal deals with priority and Art.54(3) in a situation that is suitable for as inspiration for EQE Paper D.
• D2 is an Article 54(3) document if it's priority to D3 is valid. D3 is, however, a continuation in part from D11; D3 was also granted.
• The question is if D2 is the 'first filing' or not. D11 is a non-published US application of the predecessor in title of the applicant of D2 and has the same technical content as the original application from which the opposed European patent is granted. D11 as said is also the parent of D3. 
• " Hence, D11 has left some rights outstanding within the meaning of Article 87(4) EPC. This was not in dispute between the parties. It follows that D11 - not D3 - is the first application within the meaning Article 87(1) EPC in respect of the invention it discloses. As a consequence, D2 cannot validly claim priority from D3 for that invention." 
• The Board  "the disclosure of D2 contains more specific elements in that respect. In other words, D2 discloses a system comprising additional technical features not disclosed in D11"  
• " Hence, the priority claim of D2 is valid in respect of such a system [with additional features', for which D3 is the first application [and not D11]. That specific system belongs to the state of the art for the patent in suit according to Article 54(3) EPC." 
• " The main request is not allowable for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC)." 
• " Claim 1 of the fifth auxiliary request comprises an undisclosed disclaimer. The criteria to be fulfilled for an undisclosed disclaimer to be allowable under Article 123(2) EPC are set out in decision G 1/03 (point 2.1 of the Order), as confirmed in decision G 1/16 (Order). As far as the present case is concerned, such a disclaimer may be allowable to restore novelty by delimiting a claim against the state of the art under Article 54(3) EPC."
• " The disclaimer of the fifth auxiliary request, however, does not restore novelty over D2. [...] Since the undisclosed disclaimer does not restore novelty over D2, it does not fulfil the criteria set out in G1/03. Hence, the fifth auxiliary request is not allowable either for non-compliance with Article 123(2) EPC." 
• The Art.54(3) document D2 entered the EP phase as EP1519767 and became deemed withdraw in 2006 due to non-payment of the renewal fee. 
• For the aficionados, the Board actually applies Article 54(3) EPC 1973, as the Board states that "D2 is an international application which entered the European phase with publication No. EP-A-1 519 767, designating all contracting states designated in the patent in suit." See also my explanation of  Article 54(3) EPC 1973 in the post about T2333/15.

EPO T 1662/14 -  link

4. The state of the art

4.1 The assessment of novelty hinges on the question of whether D2, or at least part of its subject-matter, is state of the art according to Article 54(3) EPC for the patent in suit.

4.2 D2 is an international application which entered the European phase with publication No. EP-A-1 519 767, designating all contracting states designated in the patent in suit.

D2 has a publication and a filing date both after the date of filing of the patent in suit. However, it claims priority from D3, a US application of the predecessor in title of the applicant of D2 with the same technical content as D2, which was filed before the date of filing of the patent in suit.

From the above it follows that D2 belongs to the state of the art according to Article 54(3) EPC if and to the extent to which the priority claim is valid.

4.3 The priority right is the subject of Article 87 EPC. According to Article 87(1) EPC, a right of priority in respect of the same invention can be enjoyed by the same applicant or his successor in title during a period of twelve months from the date of filing of the first application.

D11 is a US application of the predecessor in title of the applicant of D2 and has the same technical content as the original application from which the patent in suit is derived. D3 is a continuation-in-part of D11, granted as US patent No. 6,981,947. Hence, D11 has left some rights outstanding within the meaning of Article 87(4) EPC. This was not in dispute between the parties.

It follows that D11 - not D3 - is the first application within the meaning Article 87(1) EPC in respect of the invention it discloses. As a consequence, D2 cannot validly claim priority from D3 for that invention.

4.4 The respondent argued that D2 disclosed a different, more specific invention compared with D11.

[...]

4.5 The appellant argued that if D2 were considered to teach a system in which the anesthetic agent was only delivered intravenously, then its priority claim would be invalid since that system had been first disclosed in D11.

The Board agrees with the appellant that D11 teaches an anesthetic agent delivery system for intravenously delivering a desired dose of propofol to a patient and controlling the amount of propofol delivered and that for this general subject-matter already present in D11 priority from D3 cannot be validly claimed by D2.

However, the disclosure of D2 contains more specific elements in that respect. In other words, D2 discloses a system comprising additional technical features not disclosed in D11.

For example, D2 discloses some features of a breath analyser of that system which are not disclosed in D11. More specifically, page 18, lines 4 to 13 (paragraph [0070]), paragraphs [0063] to [0065], and figures 3A and 3B disclose that the breath analyser may comprise a surface acoustic wave (SAW) sensor inserted as an active feedback element in an oscillator circuit and a frequency counter in communication with the oscillator circuit, all of which housed in a small printed circuit board.

As a consequence, D11 is not the first application within the meaning of Article 87(1) EPC for an anesthetic agent delivery system for intravenously delivering a desired dose of propofol to a patient and controlling the amount of propofol delivered, and comprising that specific breath analyser. Hence, the priority claim of D2 is valid in respect of such a system, for which D3 is the first application.

That specific system belongs to the state of the art for the patent in suit according to Article 54(3) EPC.

5. Main request

5.1 The main request corresponds to the third auxiliary request which the Opposition Division did not allow for lack of novelty of the subject-matter of claim 1 over D2.

The specific system of D2 which belongs to the state of the art according to Article 54(3) EPC anticipates the subject-matter of claim 1 of the main request.

5.2 Hence, the main request is not allowable for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC).

6. First auxiliary request

As explained in points 4.4 and 4.5 above, the system of D2 for which the priority claim is valid, in an implementation, provides, in the language of the claim, "total" intravenous anesthesia, i.e. anesthesia provided only by intravenous anesthetics, without inhalation of anesthetic gases.

It follows that the first auxiliary request is not allowable either for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC).

7. Second auxiliary request

The breath analyser of the system of D2 for which the priority claim is valid, in an implementation, is for analyzing the patient's breath for concentration of free propofol and/or metabolites of propofol, and provides a signal to indicate the free propofol or metabolite concentration in the patient's bloodstream produced by the propofol intravenously delivered to the patient (paragraph [0067], fifth to ninth sentence).

It follows that the second auxiliary request is not allowable either for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC).

8. Third auxiliary request

The signal provided by the breath analyser of the system of D2 for which the priority claim is valid is proportional to the free propofol or metabolite concentration in the patient's bloodstream produced by the propofol intravenously delivered to the patient (figure 2 and paragraph [0067], first and fifth sentence).

It follows that the third auxiliary request is not allowable either for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC).

9. Fourth auxiliary request

The signal provided by the breath analyser of the system of D2 for which the priority claim is valid can be based on average exhaled concentrations (paragraph [0093], third sentence, together with paragraph [0094], seventh sentence, and paragraph [0068], eleventh sentence).

It follows that the fourth auxiliary request is not allowable either for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC).

10. Fifth auxiliary request

Claim 1 of the fifth auxiliary request comprises an undisclosed disclaimer. The criteria to be fulfilled for an undisclosed disclaimer to be allowable under Article 123(2) EPC are set out in decision G 1/03 (point 2.1 of the Order), as confirmed in decision G 1/16 (Order).

As far as the present case is concerned, such a disclaimer may be allowable to restore novelty by delimiting a claim against the state of the art under Article 54(3) EPC.

The disclaimer of the fifth auxiliary request, however, does not restore novelty over D2. As explained in points 4.4 and 4.5 above, the system of D2 for which the priority claim is valid, in an implementation, provides "total" intravenous anesthesia, i.e. without the administration of anesthetic gases to be inhaled. In such a situation, within the meaning of the claim, no gases are inspired, as also argued by the appellant on page 9, fifth paragraph, of the statement setting out the grounds of appeal. Hence, no sensor is exposed to inspired gases.

Since the undisclosed disclaimer does not restore novelty over D2, it does not fulfil the criteria set out in G1/03.

Hence, the fifth auxiliary request is not allowable either for non-compliance with Article 123(2) EPC.

11. Sixth auxiliary request

Compared with claim 1 of the fifth auxiliary request, claim 1 of the sixth auxiliary request comprises the same undisclosed disclaimer as well as some additional features.

As explained with respect to the second and third auxiliary request, those additional features do not establish novelty over D2.

Hence, for the same reasons as those applying to the fifth auxiliary request, the sixth auxiliary request is not allowable either for non-compliance with Article 123(2) EPC.

12. Seventh auxiliary request

Claim 1 of the seventh auxiliary request comprises an undisclosed disclaimer.

The disclaimer, however, does not restore novelty over D2. As explained in points 4.4 and 4.5 above, the system of D2 for which the priority claim is valid, in an implementation, provides total intravenous anesthesia, i.e. without the administration of anesthetic gases to be inhaled. In such a situation, no anesthesia is delivered through a breathing circuit. Moreover, as also argued by the appellant on page 10, third paragraph, of the statement setting out the grounds of appeal, "since no anesthetic agent is inhaled, there can be no control of such an inhalant agent". By the same token, no inspired gas analyser can be present in the breathing circuit since, within the meaning of the claim, no gases are inspired.

Hence, the seventh auxiliary request is not allowable either for non-compliance with Article 123(2) EPC.

13. Eighth auxiliary request

Compared with claim 1 of the seventh auxiliary request, claim 1 of the eighth auxiliary request comprises the same undisclosed disclaimer as well as some additional features.

As explained with respect to the second and third auxiliary request, those additional features do not establish novelty over D2.

Hence, for the same reasons as those applying to the seventh auxiliary request, the eighth auxiliary request is not allowable either for non-compliance with Article 123(2) EPC.

14. Ninth auxiliary request

The breath analyser of the system of D2 for which the priority claim is valid comprises a collector for sampling the patient's expired breath (paragraph [0068], tenth sentence), a sensor based on surface acoustic wave gas sensor technology for analyzing the breath for concentration of free propofol and/or metabolites of propofol (the SAW sensor described in paragraph [0070]), and a processor for calculating the effect of the propofol based on the concentration and determining the depth of anesthesia (processor 26, figure 3a described in paragraph [0063] together with the teaching of paragraph [0067], first to fifth sentence).

It follows that the ninth auxiliary request is not allowable either for lack of novelty of the

subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC).

15. Since none of the appellant's requests is allowable, the patent must be revoked.

Order

For these reasons it is decided that:

The appeal is dismissed.