DECISION T1519 /15 APPLICATION OF PARTIAL PRIORITIES
Following the Decision of the Enlarged Board of Appeals G1/15 (see our March 2017 IP Alert), the Board of Appeals have rendered the first decisions taking into account the case law.
I. Context of the appeal
The Examining Division refused the European patent application No. 09 169 604.7 for lack of novelty in view of its parent application EP1971509A2 (D3).
Both applications, the parent application and its divisional application, claim several priorities, the earlier of which is P1 (60/757,479 of January 10, 2006 US) and, inter alia, a second priority P2 (11/340,859 of January 27, 2006 US).
The reasoning for refusing the application for lack of novelty has been the following:
- Claim 1 of the present divisional application, referring to a sensor comprising at least first and second sensing capacitors (C1, C2) without specifying any transistor, does not validly claim the first priority date of P1, because the disclosure of P1 is limited to a specific circuit having 4 sensing capacitors and seven transistors and the disclosure of P1 has thus been generalized to the subject-matter of claim 1.
- Figures 4 to 6 of the parent application D3, which are disclosed in the priority document P1, benefit from the priority date of P1 and belong to the state of the art according to A54(3) EPC.
- The figures 4 to 6 of the parent application D3 benefiting from the priority date P1 are therefore novelty destroying for the subject-matter of claim 1 of its divisional application which does not validly claim priority P1.
II. Decision of the Board of Appeal
The board of appeal canceled the decision of the Examination Division by applying the decision G1/15.
According to said 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."
The Board argues in T1519 /15 that:
- Claim 1 includes the generic expressions "a sensing circuit comprising at least first and second sensing capacitors", and does not specify whether there are any transistors. According to the Board, claim 1 thus encompasses the specific embodiment of Figs. 4 to 6 (four sensing capacitors and seven transistors) of document D3. Since this particular embodiment is disclosed in P1, claim 1 is thus entitled to the priority of P1 in respect of this specific partial embodiment.
- Figures 4 to 6 of D3 therefore do not belong to the state of the art under Article 54(3) EPC and are thus not novelty destroying.
- 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. However, for these remaining embodiments, for example those with a number of capacitors other than four, figures 4 to 6 of D3 are not relevant.
- Furthermore, the disclosure of D3 relating to a number of sensing capacitors other than four, see e.g. claim 1, is not entitled to the priority of P1 and thus not novelty destroying under A54(3).
A generalization such as “at least 2 capacitors” is interpreted as being directed to an infinite number of alternative subject-matters such as 2 capacitors, 3 capacitors,…, wherein each of these alternative subject-matters is a considered as a particular embodiment which can be entitled to a partial priority, as long as said particular embodiment has been disclosed for the first time according to the conditions laid down in G1/15.
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