T 680/08 – To The Bitter End

As we have seen last time, claim 1 of the main request contained a lower limit for the total drive specific energy (SEC) applied on the polyethylene composition of 0.330 whereas the priority document disclosed a lower value of 0.325. Although the Board came to the conclusion that the invention was the same within the meaning of G 2/98, it held the priority claim to be invalid because the new lower limit could not be derived directly and unambiguously from the priority document. As the priority document was a European patent application that had been published, it destroyed the novelty of the claimed subject-matter. The patent proprietor then filed an incredibly bold auxiliary request in order to overcome the objection - and it worked.

Admissibility

[3.1] The first auxiliary request differs from the main request in that a disclaimer for the SEC value of 0.330 kWh/kg is introduced into feature b) of claim 1.

This first auxiliary request, filed by the [patent proprietor] during the oral proceedings (OPs), is regarded as being intended to deal with the lack of novelty under A 54(3) of the main request with respect to the published priority document D1. Therefore, this is an aspect which is in accordance with one of the requirements concerning disclaimers set out in EBA decision G 1/03.

Although a similar argument concerning the validity of the priority had already been raised by the Board in the summons to OPs, the arguments concerning the lack of novelty arose in this form for the first time during the OPs.

Furthermore, the amendment to claim 1 merely involves a disclaimer for the value not enjoying the priority of document D0 and, with respect to the decision under appeal, does not raise issues which the Board or the other parties cannot reasonably be expected to deal with without adjournment of the OPs.

Thus, the Board is of the opinion that it is appropriate to exercise their discretion and admit the request into the procedure in accordance with Article 13 of the Rules of Procedure of the Boards of Appeal.

Entitlement to priority

[3.2] The effect of the disclaimer is to exclude methods carried out at SEC values of 0.330 kWh/kg from the subject-matter of claim 1 according to the first auxiliary request.

As concluded from the priority discussion in point [1] [see the preceding post], methods carried out at claimed SEC values other than 0.330 kWh/kg, i.e. the subject-matter of claim 1 according to the first auxiliary request, concern the same invention as is disclosed in document D0. Therefore, the subject-matter of claim 1 according to the first auxiliary request is entitled to the priority of document D0 (A 87(1)(b)).

Document D1 and novelty

[3.3] As the subject-matter of claim 1 according to the first auxiliary request is entitled to the claimed priority of document D0, document D1 does not belong to the prior art and is therefore not relevant for the assessment of novelty.

Now this is where the weird concept of two inventions that are the same but which cannot be derived directly and unambiguously from each other bears its bitter fruit. Once the value 0.33 is disclaimed, the invention is still “the same” but the problematic lower limit is eliminated, which re-establishes the validity of the priority claim.

I see at least two problems:

First, the auxiliary request has modified the claimed domain from [0.33, 0.415] to ]0.33, 0.415]. Sure enough, the former lower limit - i.e. 0.33 - was not disclosed in the priority document, but the new lower limit - i.e. ] 0.33 - is not, either.

Second, by allowing this disclaimer, the Board accepts a disclaimer that not only re-establishes novelty over an A 54(3) document, which is acceptable under G 1/03, but also (in the eyes of the Board) re-establishes priority, which is not something that G 1/03 had allowed.

All in all, a very questionable decision.

If you wish to read the whole decision, you can download it here.

Addendum: You might also want to read the article on T 680/08 on Le blog du droit européen.