Friday, 2 April 2010

T 1533/07 – Don’t Lump Together Novelty And Priority

It is a vital thing for a European patent attorney to have a perfect command of the concepts behind novelty and priority (“same invention”). The present decision demonstrates in a very pedagogic manner that these concepts, albeit not unrelated, must not be mixed up with each other. In other words: the novelty test is not to be used in the assessment of the validity of a priority claim.

Claim 1 according to the main request read:

A lining or shape element for means of transportation, comprising at least one microperforated sheet absorber having a proportion of hole area of from 0.2 to 4%, wherein the holes of said microperforated sheet absorber for the microperforation have one or more diameters within a range of from 0.05 mm to 2 mm and one or more interhole distances within a range of from 1 mm to 20 mm, and at least one foam and/or non-woven absorber at a spatial distance from a reverberant wall.

[6] According to decision G 2/98 [9] of the Enlarged Board of appeal the expression “same invention” in A 87(1) EPC 1973 is to be interpreted narrowly and the priority of a previous application in respect of a claim is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. This means that a particular embodiment cannot validly claim the priority of a generic embodiment disclosed in a previous application if the previous application does not disclose the particular embodiment. It follows that if the subject-matter of the claim comprises ranges of values or specific values, these ranges or values have to be comprised directly and unambiguously in the previous application on which the priority claim is based (see T 136/01, T 788/01). This requirement is not fulfilled in the present case because the upper limit of 4 % for the proportion of hole area is neither disclosed in [the first priority document] nor deductible from [this document] using common general knowledge. As the priority of [said document] is not validly claimed (A 87(1) EPC 1973) document D1a as a whole is prior art under A 54(3) for claim 1 […] because of its date of publication.

The argument of the [patent proprietor], according to which the validity of the priority claim directly results from the alleged ground that the range of values of from 0.3 to 4% and the value of 4% for the proportion of hole area is not novel in view of the ranges 0.3 to 10% and 0.5 to 5% disclosed in [the first priority document], is in contradiction with the principles of decision G 2/98 and misconceives the essence (Wesen) of this decision. These principles, which clearly require the unambiguous disclosure of the presently claimed subject-matter in the previous application, have been developed in order to create a safe legal situation for the assessment of the validity of priority claims. This safety was not provided by the prior case law and its criteria, as has been shown in G 2/98.

For instance, in the present case, it is not directly apparent why a proportion of hole area of 4% would not be novel in view of the ranges of values disclosed in the [first priority document]. On the other hand, a proportion of hole area in the range of 0.3% to 4% is clearly not novel in view of the ranges of values disclosed in the [first priority document] because the lower limits of 0.3% are the same, irrespective of the upper limit. It remains unclear why in such a case the priority of the [first priority document] was validly claimed, as submitted by the [patent proprietor], because the ranges of domains are clearly different, due to the different upper limit.

[7] The subject-matter of claim 1 is not novel over D1a. […] The proportion of hole area of the sheet absorber according to D1a lies between 3% and 10%. As a consequence, a proportion of hole area of between 0.3 and 4% […] is known from D1a. […]

[8] There is one more thing to be said with respect to the submission of the [patent proprietor]. Contrary to the opinion of the [patent proprietor], the use of the criteria which, according to the established case law, are used for the assessment of a selection invention (see T 279/89) were not applied in an inconsistent manner in the assessment of validity of the priority claim (see paragraph [6] above) and in the assessment of novelty of claim 1 with respect to D1a (see paragraph [7]). As a matter of fact, this was not even possible in the present case because the subject-matter of claim 1 cannot possibly be a selection invention, since D1a discloses a concrete and explicit embodiment having values which all are comprised in the claimed range of values. As in the assessment of said questions well defined, different and established criteria have been applied, wherein the concept of selection invention is irrelevant, it is not apparent where a contradiction arises.

To read the whole decision (in German), click here.