EP 3 514 431 B1 relates to a threaded connection in a connecting box, actually connecting a pair of pipes using variable thread and groove widths.
Brief outline of the case
As the priority was not valid, claim 1 as granted lacked N over a piece of prior art under Art 54(3), D5, neither mentioned in the JP ISR nor in the SESR. The same applied to AR 1-8.
For AR9 the priority was valid, but claim 1 lacked IS over D1, neither mentioned in the JP ISR nor in the SESR. The same applied to AR10.
The patent was maintained according to AR11. The opponent appealed.
The board held that claim 1 as maintained infringed Art 123(2).
AR12 was admitted but the priority was not valid and claim 1 lacked N over D5.
The patent was maintained according to AR13.
It is interesting to look at the argumentation exchanged with respect to the validity of the priority.
The opponent’s point of view
While features from paragraphs [0048] and [0049] of the priority application D10 had been incorporated into claim 1, the proprietors omitted the final sentence of paragraph [0049]. This explicitly required a correspondence between the thread-groove width of the varying-thread-width portion 212 of the female thread, and the thread-ridge width of the varying-thread-width portion 112 of the male thread 11.
The additional features of claim 1 of AR12 did not imply that the widths were equal. Contact between the load and stab flanks did not necessarily imply that the width was the same. The interference of the threaded connection of claim 1 might vary along the thread, for example due to a different taper of the threads.
In contrast, the threaded connection in accordance with paragraph [0049] of D10 was made up by simultaneous interference of the engaging flanks, see paragraph [0060] of D10. With the dove-tailed shape of the threads, the width could either be measured at the crest, along the pitch line or at the root. As a consequence, claim 1 of AR12 did not validly claim priority.
There was no case of partial priority because, unlike what was set out in Reasons 6.4 of decision G 1/15, claim 1 was not a generic “OR”-claim, it did not define alternative features.
The proprietors’ point of view
The meaning of the expression “correspond” to in the last sentence of paragraph [0049] of D10 was not that a correspondence between the thread-groove width of the varying-thread width portion of the female thread and the thread-ridge width of the varying-thread-width portion of the male thread was necessary.
This immediately followed from the final sentence of paragraph [0048] of D10 which required, in very similar terms to the final sentence of paragraph [0049] of D10, that the “thread-ridge width and thread-groove width of the constant-thread-width portion 211 correspond to the thread-groove width and the thread-ridge width, respectively, of the constant-thread-width portion 111 of the male thread 11″.
The widths of a thread were normally measured at the middle point of the flanks. Furthermore, it had to be considered that paragraph [0049] of D10 referred to the situation when the threaded connection had been made up. Hence, claim 1 of AR12 was fully entitled to the claimed priority date.
The proprietor’ case was that the allegedly omitted constraint was already included in claim 1 by virtue of the requirement that the female thread is corresponding to the male thread.
Even if the opponent’s objection were followed, in accordance with G 1/15, claim 1 enjoyed partial priority for those threaded connections where the widths were the same in the varying-thread-width portions.
The board’s decision
For the bord, it follows from paragraph [0041] of D10 that, when the threaded connection has been made up, the stab flanks are not in contact with each other. Figure 2A clearly illustrates that a gap is present between the male thread 11 and the female thread 21.
The respective widths of the female ridges and grooves in the constant thread-width portions 111, 211 are thus different from those of the male grooves and ridges, respectively, even if paragraph [0048] of D10 indicates that they correspond to each other.
This view on the matter does, however, not extend to the varying-thread-width portions 112, 212 described in paragraph [0049] of D10. Both the description and the drawings of the embodiment disclosed in the priority application indicate without ambiguity that the load flanks 11d, 21d and the stab flanks 11c, 21c are in contact with each other when the connection has been made up so that no gap is present between the male and female threads
The board concluded that there is no direct and unambiguous disclosure in the priority application of a threaded connection without the additional constraint that the thread-ridge width and the thread-groove width of the female thread correspond to the thread-groove width and the thread-ridge width, respectively, of the male thread in the respective varying-thread-width portions, as disclosed by paragraph [0049] of document D10.
Claim 1 does not contain any generic expression that can be understood to encompass alternative subject-matter.
None of the features of claim 1 of AR12 brings the width of the female thread-grooves in connection with that of the male thread-ridges, or the width of the male thread-grooves with that of the female thread-ridges, in the varying-thread-width portions.
Therefore, claim 1 is not a generic “OR” claim in the sense of decision G 1/15.
Comments
It was a good try for the proprietors to claim partial priority under G 1/15.
However, the present board reminds that entitlement to partial priority is only valid for a claim encompassing alternative subject-matter and not if features of the priority document are merely deleted.
On the procedure
The application relating to the present patent EP 3 514 431 has been filed on 15.09.2017, published on 24.07.2019 in Bulletin 2019/30. It claims priority of JP 2016181176 dated 16.09.2016- The SESR for EP 3 514 431 has been completed on 28.09.2019.
The application relating to D5=EP 3 514 432 has been filed 15.09.2017 and published on 24.07.2019 Bulletin 2019/30. It claims priority of JP 2016181175 dated 16.09.2016. The SESR for EP 3 514 432 has been completed on 12.08.2019.
EP 3 514 431 and EP 3 514 432 have the same proprietor, bear the same classification symbols and have been searched in the same classification units E21B and F16L. EP 3 514 432 has not been opposed.
Something must have gone wrong during the search for prior art under Art 54(3) for EP 3 514 431.
D1=WO 2020/
The SESR for EP 3 514 431 mentions “no further relevant documents disclosed”.
This is not the case for the SESR for EP 3 514 432.
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