Friday, 10 March 2017

T 1434/13: When priority becomes important: D1 is published in the priority year

Fig. 2 of D1 (WO2006/095202)

Only in few number cases the right to priority is extensively examined - in general only if there is prior art that has been published in the priority year. In this opposition appeal there was a document on file (D1) that was published in the priority year of the disputed patent. An interesting thing to mention is that document D1 is a PCT application of the same applicant as the owner of the disputed patent. In the opposition proceedings, the Division decided that the patent did not enjoy the right of priority from the two priority documents and, thus, that the claim as granted lacked novelty. In this appeal, the Board repeated the work of the Opposition Division. The Board wrote down an interesting reasoning because different aspects played a role: features were disclosed in the figures, features were not disclosed as a whole in a single embodiment and it seems that essential elements of the priority documents are not the claims (in other words: the priority documents disclose different inventions). 

Summary of Facts and Submissions
I. This decision concerns the appeal filed by the patent proprietor (appellant) against the decision of the Opposition Division to revoke European patent No. 1 777 707.
II. European application No. 06022069.6 on which the patent was granted was filed on 20 October 2006, claiming priority from the following United States patent applications and respective filing dates:
P1: US 728456 P of 20 October 2005;
P2: US 728497 P of 20 October 2005.
III. Granted claim 1 reads as follows (itemisation added by the Board):
(1) "A container for carrying an information storage medium, the container comprising:
(2) a) a bottom cover (110; 410; 610) having inner and outer surfaces;
(3) b) a top cover (111; 411; 611) having inner and outer surfaces;
(4a) c) a medium-engaging element (115; 655) provided on the inner surface of at least one (110) of the top and bottom covers
(4b) or on an insert tray (650) inserted into the bottom cover (610), for securing a storage medium thereto;
(5) d) a hinge (112; 412; 612) connecting the bottom cover (110; 410; 610) and the top cover (111; 411; 611);
(6a) e) a display band region (114; 414; 614) provided on the outer surface of at least one of the top cover (111; 411; 611) and the bottom cover (110; 410; 610),
(6b) in an area proximate and along one edge of the container,
(7a) the display band region (114; 331; 414; 614) being configured and adapted for display of indicia,
(7b) and being exposed to an outer side of the container,
characterised in that
(8) the container comprises a transition (417) defined by said display band region (114; 414; 614)
(9) that stands proud of the adjacent surface of the outer surface of the at least one of the top cover (111; 411; 611) and the bottom cover (110; 410; 610)."
Reasons for the Decision
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
The invention
2. The invention concerns a container for carrying a storage medium, e.g. a CD, including bottom and top walls connected by a hinge or spine and a medium-engaging element provided on the inner surface of at least one of the top and bottom walls (or "covers") for securing the storage medium (see paragraphs [0025], [0034] and [0035] of the B9 publication).
In one of the embodiments of the description, the container includes a display region provided on the outer surface of the top wall, configured and adapted for the display of indicia (paragraph [0025]).
The container may further include a film forming "a pocket extending from and across the outer surface of the top wall, around the hinge and across the outer surface of the bottom wall", which "can function as a receptacle for printed material related to the media held in the container" (see paragraph [0026]).
Main request
3. Priority
3.1 The Opposition Division was of the opinion that neither P1 nor P2 disclosed feature (7a) of claim 1, i.e. the display band region being configured and adapted for display of indicia. Neither of those documents was concerned with the problem solved by the opposed patent, which was displaying additional media format information on the container. Furthermore, some specific preferred features mentioned in the summary of the invention in paragraphs [0013], [0016] and [0018] of the B1 publication had no basis in documents P1 and P2.
3.2 It is common ground in the parties' submissions that neither of the priority documents P1 and P2 describes in written form all the features of claim 1 as granted. The points of dispute are whether the subject-matter of claim 1, in particular features (7a) to (9) and some alternatives recited by features (4a) and (6a), can be considered to be disclosed in the priority document as a whole, taking the drawings into account.
3.3 In opinion G 2/98, the Enlarged Board ruled that the requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, meant that "priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole" (see reasons 9 and headnote).
It follows that when acknowledging priority, even though - as argued by the appellant - identical wording is not required, a narrow or strict interpretation of the concept of "the same invention" in accordance with opinion G 2/98 has to be applied. The criterion "directly and unambiguously derivable, using common knowledge" is the same as that used for judging whether an amendment fulfills the requirements of Article 123(2) EPC (see also Case Law of the Boards of Appeal, 8th edition 2016, II.D.3.1.1 and 3.1.2).
Decision T 169/83, which has been cited by the parties, discusses the restriction of granted claims with features taken from drawings. The Board agrees that conclusions of that decision regarding the interpretation of features shown solely in drawings have since been considered relevant in different contexts, including those of priority right and added subject-matter (see e.g. Case Law of the Boards of Appeal, 8th edition 2016, I.C.4.6, II.C.2, II.D.3.1.3 and II.E.1.12.1).
According to decision T 169/83, features clearly disclosed only in the original drawings can be used to define more precisely the subject-matter for which protection is sought as long as the skilled person can, on the basis of the whole description, unmistakably and fully recognise those features in terms of their structure and function as being manifestly part of the invention. An amendment is unallowable if the overall change in content of the application, whether by way of addition, alteration or excision, results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application (see e.g. T 169/83, headnote, reasons 3.5 and 3.7). Amendments directed to an undisclosed arbitrary combination of features of different embodiments are not allowable.
Those findings equally apply to the requirements needed to establish whether the right of priority is valid with respect to claimed subject-matter comprising features taken from drawings of a priority document.
3.4 According to the appellant's submissions and the description, the invention of granted claim 1, and in particular the display band region characterised by features (7a) and (7b), addresses the problem described in paragraphs [0004] and [0005] of the B9 publication, i.e. difficulty locating a film in the desired format. This problem was due to the ever increasing variety of formats for recorded media and lack of a consistent way of providing icons indicating the medium format on an easy-to-find location of the printed material. The solution consisted in providing a band-shaped region for display of indicia (paragraphs [0018] and [0019]).
3.5 Each of documents P1 and P2 consists of a description in text and drawings. Neither of the documents includes claims. Some of the figures of documents P1 and P2 do indeed seem to depict a display band region. However, neither of the documents even refers in the text to a display region or a transition, or the function of displaying indicia for easily locating a film in the desired format. Without an accompanying description of the display band region, the Board is not fully convinced that the skilled person would be able to clearly and unambiguously derive from documents P1 and P2 the function and structure of the display band region in the packages described in those documents.
The Board further notes that the drawings of documents P1 and P2 do not show all the alternatives covered by the claim. For example, none of the drawings depicts the alternative defined by feature (6a) of a display band region only on the outer surface of the bottom cover.
More importantly, the packages of documents P1 and P2 address different problems to those addressed by the container of the disputed patent and have different combinations of features, as explained in the following.
3.5.1 The package of document P1 is designed in such a way that the spine of the package has a curved or rounded profile similar to the three remaining edges of the CD package. This is achieved through a living hinge configuration that is adapted to allow the spine to be curved or rounded (paragraphs [0007] and [0008]). In that configuration, the spine portion and living hinges of the package are not located in the plane of the base and cover portions when the package is in the open position, as in the related art described in P1, but above that plane at approximately the mid-height of the base and cover portions. The living hinges are positioned at the end of an arc that extends from the outer surfaces of the cover and base (see paragraphs [0021] and [0022] and Figure 3B).
The rounded or curved ends and spine are therefore essential features of the invention disclosed in document P1 (see also paragraph [0020]). Those features are present in each of the packages described or depicted in the drawings, with the exception of Figure 1 illustrating the prior art, which however does not show a display band region. The skilled person would understand each of the embodiments of the invention of document P1 to include those essential features and that the curved or rounded edges and spine could not be left out. However, claim 1 of the contested patent does not recite rounded or curved ends. Document P1 therefore does not disclose the subject-matter of claim 1, which lacks those features.
3.5.2 The compact disc packages of document P2 address the problem of avoiding tampering with or theft of the storage medium in the package (paragraph [0004]). In order to solve that problem, each of the embodiments includes a security feature such as a band (see e.g. Figure 6, reference sign 270, paragraph [00022]), a bar (see e.g. Figure 10, reference sign 490, paragraphs [00016] and [00029]) or a tag (see e.g. Figure 29, reference sign 530, paragraph [00032]). The security feature is described in document P2, for each of the respective embodiments, as an essential feature of the package. Furthermore, the spine and edges of each of the containers shown in the drawings of document P2 are rounded or curved for the same purpose as that described in document P1 (see paragraphs [00021] and [00028] of document P2).
Figures 10 to 13, 17 to 19, 24, 26 and 28 of document P2, cited by the appellant as depicting the display band region, do not show a medium-engaging element. The appellant also argued that Figures 1 to 5, 8 and 21 showed an embodiment with a front cover comprising an aperture provided in a display band region and an insert tray with indicia thereon. However, the Board notes that the written disclosure of document P2 describes neither the display band region nor the marking. Even if the skilled person were to interpret the drawings of document P2 as depicting a display band region, he would not derive from those drawings and corresponding written description the broader display band region covered by claim 1 of the contested patent, but only the specific solution including a display region with an aperture, an insert tray, the marking being provided on the insert tray (paragraph [0022]). Paragraph [0003] mentions that other enclosures omit the tray, but this paragraph describes the prior art and does not disclose a display band region.
The Board is therefore of the opinion that the skilled person would not directly and unambiguously derive from document P2 the teaching of a package including the specific combination of features recited in claim 1 of the contested patent, which includes features of separate embodiments and excludes essential features common to all embodiments. The skilled person would not understand from document P2 that the security feature and the curved or rounded edges were optional.
3.6 Taking the above reasoning into account, the Board concludes that neither document P1 nor document P2 discloses the same invention as claim 1 of the contested patent as required by Articles 87(1) and 88 EPC. Neither of those documents therefore can serve as a basis for validly claiming a right of priority with respect to the subject-matter of claim 1 of the disputed patent.
4. Novelty - document D1
4.1 It follows from the above that the effective filing date with respect to claim 1 of the disputed patent is the date of filing of the European patent application, 20 October 2006. Since document D1 was published before that date, on 14 September 2006, it forms part of the state of the art under Article 54(2) EPC.

4.4 Consequently, the subject-matter of claim 1 of the contested patent is not novel over the disclosure of document D1 (Article 54(1) and (2) EPC).


13. Since none of the appellant's requests is allowable, the appeal is to be dismissed.
For these reasons it is decided that:
The appeal is dismissed.
This decision T1434/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T143413.20160913. The file wrapper can be found here. The illustration is Fig. 2 of document D1 (WO2006/095202).

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