T 908/09 – No Priority

This is an appeal against the revocation of the opposed patent by the Opposition Division.

Claim 1 of the main request before the Board read (in English translation):

Water-miscible cooling lubricant concentrate, which contains natural or synthetic mineral oils, emulsifiers, anticorrosive agents, solubility promoters, preservatives, metal inhibitors and other standard additives, characterized in that it has a pH value between 7.0 and 7.5 after dilution to an aqueous solution containing between 2 and 25 percent by weight and further contains as a preservative and an anti-corrosive agent a mixture containing

(a)   at least one substance selected from the group consisting of ethoxylated fatty acids, propoxylated fatty acids, ethoxylated fatty acid alkanolamides, propoxylated fatty acid alkanolamides and reaction products of boric acid and a primary or tertiary alkanolamine as well as

(b)   at least one substance selected from the group consisting of carboxylic acid imides, phosphoric acid esters, thiadiazoles, isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, 3-iod-2-propinyl-carbamate and methyl urea derivatives.

The question arose whether document E1 was prior art under A 54(2) or A 54(3). Therefore, the Board had to examine the validity of the priority claim:

*** Translation of the German original ***

[2.1.1] Document E1 is part of the state of the art under  A 54(3) to the extent to which the priority of the impugned patent is valid for the claims. Otherwise, E1 is part of the state of the art under A 54(2).

[2.1.2] Although the impugned decision considered the priority to be valid for the claims as granted (i.e. for the claims of the present main request), the Board has explained in its communication why it did not share this opinion. It justified this provisional opinion inter alia by pointing out that the priority document did not directly and unambiguously disclose the combination of at least one compound (a) with at least one compound (b) according to claim 1 as granted. This was all the more true as the priority document did not define the compounds (b) disclosed therein as a group of compounds belonging together (zusammengehörige Gruppe).

[2.1.3] The [patent proprietor] objected that the priority document disclosed the components (a) and (b), with the exception of the carboxylic acid imides and the methyl urea derivatives. The priority document disclosed to the skilled person that at least one anticorrosive agent (a) and at least one preservative (b) had to be used. Therefore, the [patent proprietor] concluded that for the part of the subject-matter of the claims that did not concern carboxylic acid imides and methyl urea derivatives as components (b) the claim to priority had to be valid.

[2.1.4] Claim 1 as granted comprises the following components other than carboxylic acid imides and methyl urea derivatives in group (b):

phosphoric acid esters, thiadiazoles, isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, and 3-iod-2-propinyl-carbamate.

However, in the priority document, phosphoric acid esters and thiadiazoles are not cited as preservatives (b) but only as anticorrosive agents […], whereas isothiazolinones, imidazoles, guanidines, aromatic carboxylic acids, and 3-iod-2-propinyl-carbamate are classified as preservatives […].

Thus the priority document does not unambiguously assign the components (b) cited in claim 1 as granted to a specific group. Therefore, the priority document does not directly and unambiguously disclose to the skilled person to mix at least one compound (a) with at least one compound (b). Consequently, the claims of the main request do not (i.e. not even partially) enjoy the priority claimed by the impugned patent. Thus there is no effect of the priority right under A 89 and the effective date of the impugned patent with respect to the state of the art corresponds to its filing date rather than its priority date.

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

The file wrapper can be found here.