Friday, 1 September 2017

T 1519/15 - Not so poisonous parent

A 'family' of Amanita muscaria, which is best not eaten

This Examination Appeal shows the Board applying G 1/15 to what would otherwise have been a 'poisonous parent' situation. The outcome is as expected - the decision under appeal is set aside.

The Examination Division considered , pre-G 1/15, the situation as follows: claim 1 of the divisional application represents a generalization with respect to a species described in an earliest US priority document P1, and thus is, in accordance with the pre-G/15 legal situation, in its entirety entitled only to a later priority date from a US priority document P2. The EP parent application, which is cited as D3, also describes P1's species and is thus, at least in as far as pertaining to this species, entitled to the earliest priority date P1. D3 thus belongs, at least in as far as the described species, to the Art. 54(3) State of the Art of the divisional application and thus takes away the novelty of claim 1.

Reasons for the Decision
1. According to decision G 1/15, "entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect."

2. Claim 1 of the present application includes the generic expressions

"a sensing circuit comprising at least first and second sensing capacitors", and

"at least one mimicking capacitor".

Claim 1 does not specify whether there are any transistors. It thus encompasses the specific embodiment of Figs. 4 to 6 of document D3, which embodiment is also disclosed in the present application, see the identical Figs. 4 to 6.

Since this embodiment is disclosed in P1 (see pages 19 to 21), claim 1 is entitled to the priority of P1 in respect of the specific embodiment. The remaining (general) subject-matter claimed, i.e. in particular a sensing circuit having a number other than four sensing capacitors, is not disclosed in P1 and only benefits from the priority date of P2. Figures 4 to 6 of D3 thus do not belong to the state of the art under Article 54(3) EPC for the specific embodiment with four sensing capacitors falling within the ambit of claim 1. As regards the remaining embodiments encompassed by claim 1, for example those with a number of capacitors other than four, figures 4 to 6 of D3 are not relevant to novelty under Article 54(3) EPC. The disclosure of D3 relating to a number of sensing capacitors other than four, see e.g. claim 1, moreover, is not entitled to the priority of P1.

3. It follows from the above that the decision under appeal is to be set aside.

4. As explained in the communication of 23 May 2017, and agreed upon by the appellant, the Board considers it appropriate to remit the case to the department of first instance for further prosecution (Article 111(1) EPC). The Board has noted the statement made in the communication of 31 May 2011 during examination proceedings, according to which claim 1 was not objected to under Article 56 EPC in view of the feature relating to the use of a mimicking capacitor. However, this is a statement made by the primary examiner and not by the Examining Division, and moreover formal requirements, such as the adaptation of the description, have not been yet subject of discussion.

This decision T 1519/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T151915.20170803. The file wrapper can be found here. Photo "Fly Agaric...poisonous." by Bernard Spragg obtained via Flickr under Public Domain Mark 1.0.

2 comments :

  1. In G 1/15, the enlarged board simply remembered that the raison d'être of the priority right is to avoid self-collision.

    The whole story about poisonous divisional applications should never have started.

    G 1/15 might not have solved all problems with respect to priority, but it is a big step forward

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  2. I wonder that the difference is between a ‘genus’ and a 'generic "OR"-claim'. G 1/15 uses the latter phrase, but it seems to have the same meaning?

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