T 324/09 – First Or Not?

In EQE papers the question of whether a priority application is a « first application » within the meaning of A 87(4) is often relevant and gives rise to quite tricky situations. In real life, I have not encountered it very often, but the question sometimes arises, as in the present case.

Both opponent I and the patent proprietor filed appeals against the decision of the Opposition Division maintaining the opposed patent in amended form.

Claim 1 as granted read:

A fastener (20) comprising a riveting barrel portion (22), a flange portion (24) which extends radially from the barrel portion generally perpendicular thereto and a fastener portion (26) generally opposite the barrel portion (22), wherein said flange portion includes an outer panel bearing surface (38), characterised in that an annular groove (40) is provided adjacent to and surrounding the barrel portion (22) radially inside the outer annular panel bearing surface (38); in that a plurality of spaced radial ribs (42) bridge said groove (40); and in that said fastener potion (26) comprises a threaded or smooth bore coaxially aligned with said barrel portion (22).

According to the opponent, the priority claim was invalid.

The Board could not agree:

The subject-matter of the invention

[2] The claimed invention relates to a fastener of the self-piercing type. These types of fasteners comprise: “riveting elements” and “pressform elements” as defined in Exhibit 5 which is a datasheet of the “DVS-Deutscher Verband für Schweißen und verwandte Verfahren”.

This document defines a “riveting element” as an element with a portion which is deformed after having been inserted into the object with which it has to be connected by form fit (“Einnietbare Funktionselemente sind gekennzeichnet durch einen Abschnitt, der nach dem Einbringen in das Werkstück umgeformt und mit diesem formschlüssig verbunden ist”). This definition clearly states that a riveting element is characterised by a deformation of a portion of the riveting element itself.

Following this definition it is specified that the form fit can be achieved either by deformation of only a portion of the riveting element or by deformation of both the riveting element and the object with which it has to be connected (“Die Formschlüssigkeit ist entweder durch Umformen des Nietabschnittes allein und/oder durch Umformen der Lochwandumgebung mit dem Nietabschnitt in Kombination erreicht”).

The interpretation of [opponent I] according to which the second part of the definition has to be interpreted in the sense that either the riveting element or the object with which it has to be connected can be deformed, is not correct. The two parts of the definition cited above have to be read in combination. Since the first part specifies the deformation of a portion of the riveting element, the second cannot be construed as giving the alternative of deforming either the riveting element or the other object.

Exhibit 5 goes on to define “pressform elements” as elements which are not deformed when inserted into the element with which they have to be connected (“werden beim Einbringen in das Bauteil nicht umgeformt”). It is the other element which is deformed by pressing it into contact with the pressform element (“Umgeformt wird der Bauteilwerkstoff dessen Lochwandumgebung an die oben genannte Abschnitts bereiche der Funktionselemente angepresst wird.”).

It is evident from the definitions of “riveting element” and “pressform element” that these two elements conceptually represent two fundamentally different ways of connecting a fastener with another object. In one case the fastener is deformed (alone or in combination with the other object), in the other the fastener is not deformed.

Since claim 1 as granted refers to a fastener comprising a riveting barrel portion which according to all embodiments of the patent in suit is deformed (see Figures 9, 11 and 14), the invention clearly belongs to the category of “riveting elements” and not that of “pressform elements”.

Priority

[3] The patent in suit claims the priority of D27 which itself claims the priority of D28. [Opponent I] argues that, since D28 disclosed all features of claim 1 as granted, D27 was not the first filed application referring to the present invention and that the priority was not validly claimed.

D28 discloses in Figures 14 and 16 a fastener comprising shaft 16 which is connected to plate 52 by the deformation of the plate into grooves 20 of the fastener.

There is no disclosure in D28 of any purposive deformation of the shaft in order to connect it with the plate. Moreover, the bulk shape and the thickness of shaft 16 do not suggest any deformation upon insertion into plate 52 either. Therefore, the fastener described in D28 clearly belongs to the pressform element type.

Contrary to the submissions of [opponent I], the passage in column 10, lines 8 to 16, cannot be understood in such a way that the shaft is intended to be deformed, let alone in order to connect the fastener to the plate. This passage merely describes a means to avoid an unintentional minor deformation of shaft (16), due to the deformation of the plate, which results in a restriction of the cross-section of the bore (82).

NB: The passage in column 10, lines 8 to 16 reads (in English translation):

“On the bottom side of element 10 of the middle bore 82 there is a portion 86 the diameter of which is extended. This portion primarily serves to avoid that a deformation of the shaft portion 16 of the nut element leads to a narrowing of the opening section (Durchgangsfläche) of the bore 82 as a result of the plastic deformation of the sheet piece into the zones 20 and the recess 28, which narrowing would hinder the bearing part (Lagerteil) from being introduced into element 10.”

The argumentation of [opponent I] according to which shaft 16 was suitable to be deformed and hence represented a riveting element cannot be followed either. The question to be answered is not only whether shaft 16 is suitable to be used as a riveting portion, but whether - more importantly - it was designed and intended to be deformed and hence used as a riveting part in D28. Since, as stated above, shaft 16 was explicitly not intended to be deformed, it does not represent a riveting portion.

Since D28 does not disclose all features of claim 1 of the patent in suit, D27 represents the first filing of the invention according to the patent in suit.

Hence its priority is validly claimed.

The Board then found the claim to be inventive and rejected the opposition.

To read the whole decision, click here. The file wrapper can be found here.