The patent relates to a dishwasher and especially to a door mechanism allowing the door leaf to extend in the vertical direction at the end of the opening process. This allows a better access to the inner volume of the dishwasher.
Brief outline of the case
The opposition was rejected and the opponent appealed.
Eventually, the board confirmed the rejection but for different reasons than that of the OD.
The case is interesting in that, in spite of the result, the board considered that a late filed piece of prior art should have been admitted by the OD. It is D7=DE 20 2015 100 873 U1.
The case is also interesting in that it deals with intermediate generalisation between the priority document and the subsequent application.
The opponent‘s position
The opponent disputed the validity of the claimed priority from D8=DE 10 2015 102 593 and based a novelty objection on D7.
D7 and D8 bear the same filing date 24.02.2015. D7, a utility model application, was published on 09.04.2015.
D7 was therefore highly relevant and should have been admitted to the proceedings by the OD in the correct exercise of its discretion.
At the OP, the opponent argued that G1/15 was not relevant because claim 1 as granted did not comprise several alternatives, some of which benefited from the priority and others did not, but rather a different invention (“aliud”).
The essential features of the invention of the two legs arranged at an angle to each other and the arrangement of the first leg with respect to the door leaf were not included in claim 1 and were not covered by it, but other shapes and arrangements of a support, however designed as an angle piece, were.
The OD’s position
The OD confirmed the validity of the priority and the priority date of the patent as 24.02.2015, which meant that D7, submitted outside the time limit under R 116(1) and six days before the OP, was not prior art under Art 54(2), hence not relevant, and not admitted in the procedure.
The board’s position
In the present case, the discretionary decision of the OD is based on a substantive determination of the validity of the priority claim. The fact that this was confirmed led directly to the lack of relevance of D7, which thus no longer counted as prior art under Art 54(2).
For the board, such a decision on the validity of the priority and the effective date of a claim is open to review by a board.
The granted claim 1 is based on a combination of claims 1, 8 as filed and a modification of the first part of claim 9 of D8. It is thus questionable whether the isolated and amended feature of claim 9, according to which the support is configured as an angle piece, has a basis elsewhere in the overall disclosure of D8, in particular in paragraphs [0028] – [0030] of the general part of the description of D8, which are assigned to claims 8 and 9.
After a careful analysis, the board concluded that, since claim 1 as granted did not contain some further features as set out in paragraph [0029] and claim 9 of D8, it not only concerns the same invention within the meaning of Art 89 as D8, but also includes other alternatives not disclosed in D8, in particular their non-parallel arrangement.
Since, contrary to the OD’s finding, claim 1 as granted does not benefit over the full priority, it follows that there is no basis for the OD’s discretionary decision not to allow D7 to the proceedings. Therefore, the Board decided to admit D7.
The board held that, since D7 and D8 are identical in content, the embodiments of D7 published on 09.04.2015 do not constitute prior art within the meaning of Art 54(2) for the part of the subject-matter of the claim which effectively claims the priority of D8 of 24.02.2015.
For the board, a document not admitted by the OD can be admitted in appeal if the lower instance failed to recognise that the claimed invention benefits only from a partial priority and that the document not admitted in first instance is relevant as prior art for the question of inventive step of the non-priority alternatives of the independent claim.
The board concluded that claim 1 as granted contains a kind of intermediate generalisation with respect to the disclosure of priority document D8 and hence only partial priority under G 1/15 was available for said claim 1.
There was no document on file which could show a lack of IS. The rejection was confirmed, but for other reasons than those brought forward by the OD.
In the Catchword, the board held that a “document not admitted by the opposition division can certainly be admitted on appeal if the lower instance failed to recognise that the claimed invention has only partial priority and that the document not admitted at first instance is relevant as prior art for the question of inventive step of the non-priority alternatives of the independent claim”.
Comments
“Added-matter” between priority application and a subsequent application, is not added matter in the meaning of Art 123(2), but leads inevitably to a loss of priority as we are not in presence of the same invention according to G 2/98.
An intermediate generalisation between priority and subsequent application can however lead to a partial priority under G 1/15.
Although the rejection of the opposition was confirmed, it was for clearly different reasons than those brought forward by the OD.
https://www.epo.org/de/boards-of-appeal/decisions/t220307du1
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