EP 3 493 340 B1 relates to an ignition plug with extended housing and grounding electrode on the inside of the housing.
Brief outline of the procedure
The OD decided maintenance according to AR1.
The board held that claim 1 as maintained lacked IS over D4=DE 31 48 296 + D3=US T 866031. Both those documents were not mentioned in the ESR.
The board decided maintenance according to AR3.
The opponent’s point of view
The opponent submitted that the division between preamble and characteristic portion was not correctly delineated in relation to the disclosure of D4 if one follows the proprietor’s argument.
In particular, the feature ‘and fastened’ appears in the preamble and is therefore assumed to be known. A new general term therefore has an impact on the discussion of IS that was previously conducted in relation to AR3n.
For this reason, AR3n should not be admitted as it was late filed.
The board’s decision
The board reminded that, in the case of a two-part claim, the distinction must be made “from the prior art”, cf. R 43(1,a). This does not mean that the distinction must be made from the CPA assumed in the decision.
Rather, the distinction may also be made from other suitable prior art. The board referred to T 0980/95, Reasons 5.5. In those reasons, it was held that that the two-part form need not be set up on the basis of a “closest” prior art, since the rule makes no reference to the necessity or desirability that the characterising portion of the claim should fairly set out the IS.
In T 0980/95, the board noted that another board had ruled that a claim in two-part form must be regarded as appropriate, if a clearly defined state of the art exists from which the claimed subject-matter distinguishes itself by further technical features. In particular, it cannot be accepted as a general rule that the item of prior art used for the preamble of the claim should be concerned with the same problem as the invention. In T 0980/95, the board referred to T 0013/84, OJ EPO 1986, 253.
Consequently, the mere fact that a particular state of the art turns out, in later proceedings, not to be the “closest” state of the art for the assessment of IS does not in itself result in a two-part form based on that art contravening R 29(1,a) now R 43(1,a).
The omission of a feature in claim 1 of AR3, was due to a clerical error, and thus constitutes a special circumstance under Art 13(2) RPBA.
The addition of the unintentionally omitted feature is therefore not objectionable under Art 13(2) RPBA in the circumstances and AR3n was admitted.
Comments
One wonders why the present board felt the need to make a fuss about the two-part form of the claim, and apparently resisted what is nowadays common practice.
It is interesting to note that in T 13/84 (cited in T 980/95), Catchword 2 says the following: ”When using the two-part claim form, the device or method that constitutes the closest prior art to the invention must be included in the preamble of the claim in accordance with Rule 29(1,a), now R 43(1,a), in which the features necessary to define the claimed subject-matter of the invention must be specified, but which, in combination, belong to the prior art”. T 13/84 was issued well before the PSA came up.
The present board has made a fixation on a minor issue, which can even be seen contradicted by T 13/84. , as the two-part is only to be used whenever “appropriate”.
The present decision, T 644/23 and T 980/95 can be considered as isolated decisions, a bit like T 56/21.
With the advent of the PSA, it seems thus logic that the preamble relates to the CPA, especially if the CPA is nearer to the invention than the prior art known to the inventor.
In any case the two-part form is not the cup of tea of many applicants/proprietors, especially from the US.
In cases where the applicant/proprietor does not find the two-part form appropriate, first instance divisions should however insist that the indication of prior art made in the description should be clear in order to meet the requirement of R 42(1,b), the two-part form is not insisted upon, cf. Guidelines F-IV, 2.3.2.
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