4.5. Explicit or implicit disclosure in the priority document of the features of the invention
4.5.2 Example cases – features of the invention not all disclosed in the priority document
In T 1052/93 it was a feature of the wash adjunct products claimed in the European patent that they contained sodium perborate monohydrate in conjunction with a functionally defined activator. The priority document only mentioned certain activators complying with the functional definition in the European patent; these specific compounds could not be considered to disclose the broad group of activators functionally defined in claim 1 of the European patent. See also T 132/09.
In T 277/95 the board found that a claim to a method of producing in CHO cells hEPO characterised by the presence of a specific glycosilation pattern did not enjoy priority from a priority application which made available the cell line but gave no information on the specific glycosilation pattern. See also T 479/97.
In T 908/09 the board concluded that the priority document did not clearly allocate to one single group the classes of substances which were named in granted claim 1 as components b). Accordingly, the skilled person could not derive directly and unambiguously from the priority document a mixture of at least one substance a) with at least one substance b), as was required by claim 1.
See also T 379/13 and T 1487/16.
In T 521/10 the enabling disclosure for the embodiment of claim 1 relied on the content of patent applications incorporated by reference. The reference to one of these (D9) was not present in the priority document. Indeed, D9 was not filed until after the claimed priority date. Therefore, as far as the subject-matter of claim 1 was based on the disclosure of D9, the priority was not validly claimed. As D9 was published before the filing date, it was pertinent prior art. See also summary of this decision in chapter II.C.4.2.
In T 846/10 the US priority application P1 claimed (on Form PTO/SB/01 (12-97)) the benefit under 35 U.S.C. 119(e) of two provisional applications P2 and P3. The board rejected the appellant's claim that their contents were for this reason to be considered incorporated by reference into the disclosure of P1; P1 itself contained no mention of "incorporated by reference" or any equivalent expression.
- T 0195/23
In T 195/23 was an appeal against the interlocutory decision of the opposition division concerning the maintenance of the patent in amended form. The opponents disputed the decision's finding that the priority claim was valid. In particular, they challenged the validity of the priority claim for the alternative "wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section" in the feature directed to the location of the smoke modifying article in claim 1 of auxiliary request 3.
The board concurred with the proprietor that the drawings in the priority document were specifically intended to show the location of the smoke modifying additive. In fact, figures 1-5 of the priority document depicted various types of additive located in the central region of a filter section. For example, in figures 1 and 4, a capsule was located in an axial region of a first filter section. In figures 2 and 5, the absorbent material had an additive carrying thread disposed therein in an axial region. In figure 3, the absorbent material 47 had a plurality of microcapsules disposed therein in an axial region thereof. However, none of these passages contained a statement to the effect that the depicted smoke modifying additive was the only additive in the filter. In the board's view, these drawings therefore could only serve as a basis for a positive feature directed to the presence of such additive in a central region of the filter. Such a positive feature did not rule out the presence of some further, non-depicted additive in another region of the filter.
In contrast, the board construed the feature "only in the axial region" as a negative feature which was directed to the absence of any smoke modifying additive from other regions of the filter, e.g. its peripheral region. The board referred to established jurisprudence (see CLB, II.E.1.13.3, 10th edition) according to which, a negative feature, i.e. the absence of not depicted elements, usually cannot be derived from drawings. This was aggravated in the present case by the disclosure in the priority document, which explicitly stated that there could be additive – though at a lower concentration – in non-axial regions of the filter. In light of this explicit disclosure in the priority document, which did not contradict the drawings and the corresponding explanations to the drawings in the description, the board was not convinced by the respondent's argument that the skilled person would interpret the drawings as such, rather than entertaining the notion that they did not illustrate some smoke modifying additive. As a consequence, the board did not consider the feature directed to the smoke modifying additive being disposed only in the axial region of the first filter section to be an implicit feature of the priority document.
The board concluded that the application underlying the patent in suit was not filed in respect of the same invention for the alternative "wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section" of claim 1 of auxiliary request 3, and thus, the patent proprietor should not enjoy a right of priority for this alternative..
The above conclusions also applied to independent claim 1 of auxiliary requests 5 to 18, which also contained the alternative "wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section".