Key points
- EQE D-like fun with partial priority and a German utility model.
- The opponent contests the validity of the priority after the deadline for written submissions, simultaneously filing D7 which is a DE utility model published in the priority year. The OD found the priority to be valid and did not admit D7.
- The decision on priority is open to review by the Board.
- The Board considers the claims as granted to be broader than the disclosure of the priority document, such that the priority is only partially valid. The Board then is of the view that it has to decide on the admissibility of D7 in appeal.
- The Board, in machine translation: "With regard to the remaining part of claim 1 [i.e. lacking priority] - dishwashers with a "non-parallel" arrangement of the first leg and door leaf [i.e. panel]- there is no novelty-damaging disclosure in D7, analogous to D8 [=the priority document]."
- D7 has the same contents as the priority application D8.
- The opponent submitted during the oral proceedings before the board, that D7 is full prior art for the parts of the claims not entitled to priority, that it can be cited for both novelty and inventive step against those parts, and would be detrimental to inventive step.
- The Board considers the inventive step argumentation to be not prima facie highly relevant and does not admit it (actually, does not admit D7). The Board considers the part of the claim to be a a non-obvious alternative, or at least that the opponent had not clearly shown that the part of the claim is obvious over D7.
- This part of the decision seems fact-specific.
3. Priority right from D8 and approval of D7
3.1 By decision of March 16, 2021, the opposition division invited people to oral proceedings on October 27, 2021 and gave the parties a deadline under Rule 116 EPC to comment until August 27, 2021. In a letter dated October 21, 2021, the appellant (opponent) handed over the priority document D8 of the patent in dispute and the utility model application D7, published on April 9, 2015, with the same content and the same filing date as the priority document D8 (February 24, 2015). It disputed the valid claim of priority under D8 and based a novelty objection on D7.
The opposition division confirmed the validity of the priority and seniority of the patent as February 24, 2015, meaning that D7, submitted late outside the time limit under Rule 116(1) EPC and six days before the oral proceedings, was not prior art under Article 54(2). ) EPC and therefore not relevant, see section 2.3.2.2 of the contested decision. For these reasons, she did not admit D7 to the proceedings.
3.2 In principle, a board of appeal is limited to checking whether the opposition division correctly exercised its discretion under Article 114, Rule 116(1) EPC in refusing to admit a late-filed document such as D7, i.e. not arbitrarily and taking into account appropriate criteria, see RSdBK, 10th edition, V.A.3.4.1.b). As a rule, the board therefore does not decide on admission again in place of the opposition division in the exercise of its own discretion.
In the present case, however, the opposition division's discretionary decision is based on a previous substantive determination of the valid claim of priority and thus the awarding of a corresponding seniority to the patent. The fact that this was confirmed led directly to the lack of relevance of D7, which no longer belongs to the state of the art under Article 54 EPC.
Such a decision on priority and seniority is certainly open to review by the chamber (RSdBK, 10th edition, V.A.3.4.1.c), which it carries out below.
3.3 The granted claim 1 is based on a combination of claims 1, 8 and a modification of the first part of claim 9 of D8. It is questionable whether the isolated and modified feature of claim 9, according to which the carrier is designed as an angle piece, has a basis elsewhere in the overall disclosure of D8, in particular in the paragraphs [0028] - [0030] assigned to claims 8 and 9. the general part of the description of D8.
3.3.1 Paragraph [0029] initially contains the option that "the support comprises an angle piece with two legs offset from one another at an angle." can.
The claimed design of the carrier as an angle piece can also be seen in this generality without contradiction in all of the design variants described. According to paragraph [0029] itself, the angle piece does not have to be L-shaped as shown in the figures. Even if, as described in paragraph [0078], bolts 63 and pin 69 were attached to the angle piece as components of the second bearing to the kinematics reversed in FIGS. 5, 6, the carrier would not include these as further components in contradiction to claim 1 in addition to the contra-angle. The optional nose 46 of the carrier from paragraph [0081], Fig. 5, 6, however, is an integral part of the angle piece, not an additional part of the carrier 53 designed as an angle piece according to claim 1.
Furthermore, the chamber assumes that an angle piece, by definition, has two legs that are offset from one another at an angle. The expert, a qualified engineer with mechanical and construction knowledge, implicitly reads these features in the term “elbow piece”. with.
3.3.2 The fact that the legs are nevertheless expressly mentioned in the introduction in claim 9 and paragraph [0029] is because they are used thereafter to describe further designs of the angle piece.
These designs are predominantly used with the wording "can" shown as optional, namely initially different angles between the legs, which result in an L or V shape of the carrier, later in paragraph [0030] features of the second leg with regard to a stop, which can also be found at the end of claim 9. Here D8 offers a basis for disclosure for a dishwasher that does not contain these features of claim 9.
3.3.3 Framed by these options and in contrast to their wording, in paragraph [0029] for the first leg, however, without relativization or exception, expressions such as "preferred", "optional" or "can" In fact, features are defined ("is"), which are also contained in claim 9 of D8: It is connected to the door leaf and extends essentially parallel to the door leaf in the first and second positions of the door leaf.
Thus, D8 does not disclose a dishwasher whose hinge device has a support designed as an angle piece without these further features, which are also common to all exemplary embodiments and their alternatives. Although the L-shape of the angle piece is again referred to as exemplary in paragraph [0069], it is nevertheless repeated that the (first) door leg 55 - which is probably why it is named that way - extends parallel to the door leaf 21 in the closed position.
3.3.4 Despite the different wording in paragraph [0029], the respondent also sees these features of claim 9 as only optionally disclosed. Because they stand in a row with mere design options, refer to the previously mentioned options of different angles and add others to them.
The chamber is unable to recognize any connection between the angular relationship of both legs to one another and the functional arrangement of the first leg parallel to the door leaf, and therefore no reference to previous optional features. In fact, in paragraphs [0029] and [0030] of D8, several design options are listed one after the other, only some are expressly optional and others are not, which includes the arrangement of the first leg.
3.3.5 Because the granted claim 1 does not contain the further features of the first leg according to paragraph [0029] and claim 9 of D8, it not only concerns the same invention within the meaning of Article 89 EPC as D8, but also includes other, not included D8 disclosed alternatives to the arrangement of the first leg and door leaf, in particular their non-parallel arrangement.
3.4 Since claim 1 according to the main request (issued version), contrary to the opposition division's determination, does not have the priority claimed over its entire scope, the basis for the opposition division's discretionary decision not to admit D7 to the proceedings no longer applies. Therefore, the chamber had to decide again on the approval of the D7, RSdBK, 10th edition V.A.3.4.2.b), V.A.3.4.3.a).
3.4.1 In sections 1.5 - 1.7 of its decision pursuant to Article 15(1) RPBA, it stated its intention not to subsequently admit D7 to the proceedings due to lack of relevance. Because even if the sub-combination of features in claim 1, in particular the isolated and changed feature of claim 9 of D8, according to which the carrier is designed as an angle piece, as such does not find a basis for disclosure in D8, there is still partial priority for the combination of features known from D8 of claims 1, 8 and 9 as well as for all embodiments disclosed directly and clearly therein which are covered by the granted broader claim 1, see RSdBK II.D.5.3.2, G 1/15.
Since D7 and D8 are identical in content, the embodiments of the D7 published on April 9, 2015 do not constitute prior art within the meaning of Article 54(2) EPC for the part of the subject matter of the claim which effectively gives priority to the D8 of February 24, 2015 takes advantage of, i.e. additionally has a first leg connected to the door leaf, which extends essentially parallel to the door leaf in the first and second positions of the door leaf. Regarding the remaining part of claim 1 - dishwashers with "non-parallel" Arrangement of the first leg and door leaf - analogous to D8, there is no novelty-damaging revelation in D7.
3.4.2 In the oral hearing, the complainant argued that G1/15 was not relevant because the granted claim 1 did not include several alternatives, some of which had a priority based on priority and others not, but a different invention altogether ("aliud" ;). The features essential to the invention of the two legs arranged at an angle to one another and the arrangement of the first leg with respect to the door leaf were missing in claim 1 and are not covered by it, but other designs and arrangements of a support, however designed as an angle piece.
3.4.3 The Chamber cannot agree with this.
Claim 1 contains a type of intermediate generalization compared to the disclosure of priority document D8. This does not affect the presence of two legs, which is already indicated by the term “elbow”. is implied, nor the connection of one of the support legs of the hinge device to the door leaf, which is necessary for a movable holder of the door leaf on the dishwasher, but only the associated arrangement of the first leg to the door leaf. Claim 1 now includes both a parallel arrangement in the first (closed, vertical) and second (open, horizontal) position of the door leaf according to the features disclosed in D8, as well as a corresponding non-parallel arrangement as well as "mixed" parallel and non-parallel arrangements in both door leaf positions. This means that the subject matter of the claim is not an aliud, but rather the claim contains distinguishable alternatives, of which, as in the underlying case G1/15, only one can effectively claim the priority from D8.
3.4.4 Consequently, the principles of effective use of partial priority developed in G1/15 are applicable in the present case, and D7 is not prior art relevant to the novelty of claim 1. In this respect, there was still no reason to admit D7 to the proceedings in deviation from the opposition division's discretionary decision.
3.5 However, the appellant argued for the first time in the oral hearing that for the alternatives of claim 1, which did not have the seniority of D8, D7 was indeed published prior art and was also suitable for demonstrating the inventive step of these alternatives, which were only claimed in the subsequent application to ask question.
3.5.1 In her grounds of appeal, the complainant limited herself to alleging a lack of novelty compared to D5 - D7. The argument of lack of inventive step is therefore a modification of their submission, the admission of which is subject to the discretion of the Board in accordance with Article 13(2) RPBA.
That the board, in its communication under Article 15(1) RPBA, did not follow the opposition division's opinion on the full validity of the priority from D8, but nevertheless provisionally rejected the admission of D7 for the reason that it introduced ex officio of the partial priority existing from D8 , constitutes an exceptional circumstance within the meaning of Article 13(2) RPBA which could in itself justify the admission of this new argument. In other words, the relevance of the D7 now appears in a different light because it is only due to the board's preliminary opinion on the partial priority of the D8 that it comes into question as a document that can call into question the inventive step of the main request.
3.5.2 The latter only comes into consideration if the late submission overcomes the admission hurdle of Article 13(1) RPBA, which places the admission of an amendment made after the grounds of appeal at the discretion of the board. At this late stage of the procedure, when exercising its discretion, the board, taking into account the principle of procedural economy, pays particular attention to whether the legal consequence based on the new argument would occur immediately and obviously, i.e. whether the main request would ultimately not be allowable because the subject of its claim 1, in particular based on D7, was prima facie not based on inventive step. Neither the fact that the claimed invention only enjoys partial priority nor that a document D7 identical to priority application D8 was published in the priority interval calls the inventive step as such into question.
3.5.3 According to the appellant, the lack of inventive step arises as a logical consequence of the fact that all non-parallel alternatives covered by claim 1 must be readily executable for the skilled person in the light of the overall disclosure of the patent specification within the meaning of Article 83 EPC , although they are not the subject of a dedicated embodiment, a variant thereof, or even any technical explanation in the patent specification.
The board sees no such compelling connection between the requirements of Articles 83 and 56 EPC. Even alternatives that are technically feasible in the context of professional activity can be based on inventive activity if, based on a certain state of the art such as D7, this implementation is not obvious to solve a technical problem. In other words, as with the classic task-solution approach, the mere feasibility of a technical change or measure ("could") cannot replace the sufficient motivation for it ("would"), which must also be demonstrated. A technical alternative can therefore be carried out professionally, but does not necessarily have to be obvious.
3.5.4 Based on D7 as the next state of the art, the task to be solved is to provide an alternative storage of the door leaf, which further ensures its three positions and easier access to the washing compartment in the folded down position.
The complainant considers an alternative covered by claim 1 and an obvious solution to this problem to be a type of kinematically reversed arrangement of the support designed as an angle piece outside the dishwasher or on the side of the door leaf opposite the washing chamber, as shown by the complainant on the right side of the sketch in the appendix to the minutes of the oral hearing. In the closed position, the door leaf then stands vertically on one end of the first, horizontal leg (green), while at the other end is the first bearing and is connected by the second, vertically downward-running leg (red). As in the embodiment of the patent, rotation of the angle piece clockwise about the first bearing results in the door leaf pivoting into a horizontal open position.
3.5.5 However, the level of the horizontal door leaf in the open position is above that of the first bearing, so that the height of the washing compartment must be reduced or the height of the door leaf must be extended beyond the washing compartment in order to place a dish rack from the washing compartment onto the horizontal door leaf to be able to pull it out into the open position. So that it is not hindered by the second bearing, also placed at one end of the first leg, which enables the door leaf to be folded down into the vertical, or by the upper edge of the door leaf in the folded position, the second one appears to be a complex and relatively complex construction Camp to be required. Finally, the "forward" moved along the length of the second leg in its folded position makes it easier. Door leaf only provides limited access to the washing compartment.
For the above reasons, the alternative presented by the appellant, based on the parallel arrangement of the first leg and door leaf shown in D7, appears to the board to be anything but obvious, because in addition to a kinematic reversal, numerous adjustments have to be made in its implementation and design difficulties have to be overcome .
3.6 Since D7 is therefore not prima facie relevant to the patentability of the subject matter of claim 1 according to the main request, the board did not admit D7 to the proceedings, also in exercise of its discretion under Article 13(1), (2) RPBA.
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