EP 2 757 423 B1 relates to a metal pivot pin for a timepiece movement including at least one pivot hardened to a predetermined depth by carbon or nitrogen atoms in interstitial diffused sites.
Brief outline of the case
The patent was revoked, mainly because of a lack of sufficiency of the patent as granted as well as a majority of AR.
The board found that lack of sufficiency as granted was not given, but claim 1 as granted lacked N over D2/D2t=JP2003-214526.
In view of the remaining AR, the board therefore remitted for further prosecution. The OD should also decide whether or not, non-anonymous, third parties observations submitted during appeal should be admitted in the procedure.
In this presentation we will look at the board’s comments on how to appreciate the content of a piece of prior art when assessing N.
The proprietor’s point of view with respect of D2
The proprietor’s main argument in relation to D2 is that claim 1 requires the outer surface to contain interstitial lattice atoms.
In D2, the outer surface contains, a white layer containing precipitates and a bottom layer containing interstitial nitrogen.
The proprietor also argued that D2 should be understood as a person skilled in the art would have understood it at the time of its publication. D20 changes the understanding of a person skilled in the art from the date of its publication.
However, as that date was after the publication of D2, it should be ignored and D2 should be understood to mean that the white layer contains exclusively precipitates in a nitride lattice.
The board’s decision on novelty with respect of D2
For the board, the subject matter of claims 1 and 9 as granted lacks N over D2.
The proprietor has provided no convincing evidence that the white layer resulting from a nitriding process of austenitic steel above 450°C does not contain interstitial nitrogen to such a degree that it contributes macroscopically to the hardened surface.
The proprietor quotes an opinion expressed in case law, see CLBA, I.C.2.3, taken out of context.
It is true that according to the established case law of the boards, in order to assess the content of a document belonging to the state of the art within the meaning of Art 54(2), the date of publication of that document is decisive, cf. T 205/91, T 737/00 and T 1162/07.
However, the question here is how the terms used in that document would have been understood. The aim is to avoid a situation where a publication is subsequently read as containing more technical content than was actually made public in it.
In the present case, D2 discloses a process for manufacturing a rotation axis. If this process is carried out, the result necessarily falls within the scope of the claim. It is therefore a question here of correctly understanding D2’s disclosure, and not of finding in it more information than it contains.
Furthermore, D20 does not alter the understanding of the diffusion process as described in documents T16 to T19 repreentative of CGK. It merely confirms experimentally that there is no clearly defined boundary between the appearance of the S phase and the white layer.
The proprietor has not demonstrated that the formation of precipitates by the reaction of nitrogen or carbon with chromium is so complete and so extensive that it modifies the crystalline structure of the alloy to such an extent that we can no longer speak of the initial alloy in which atoms are incorporated on interstitial sites.
Comments
The board made clear that, when assessing N, the date of publication of a piece of prior art is decisive. This means merely, that it cannot subsequently be read as containing more technical content than was actually made public in it.
One could also conclude that, the onus of proof that the content of a N destroying document at its publication date, is incorrect, lies with the party claiming this. In the present case, this proof has not been brought.
In view of the concept of photographic N as practiced at the EPO, this is a logical conclusion.
In T 167/84, OJ 1987, 369, it was held that, when considering N, it is not correct to interpret the teaching of a document as embracing well-known equivalents which are not disclosed in the document. This is a matter of inventive step. T 167/84 has been the beginning of a coherent line of case law of the boards.
On the procedure
It is worth noting that the ESR mentioned 1 document of category X and 3 of category A, the last being a Japanese document, but not D2. D2 relates to hardening treatment and is classified in G04B like the patent at stake and in which the European search was carried out.
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