The applicant's (appellant's) appeal is against the examining division's decision to refuse European patent application No. 16 751 065.0.
The examining division came to the conclusion that the insertion of an undisclosed disclaimer in the claims of the main request did not fulfil the requirements of Article 123(2) EPC.
Independent claim 1 of the main request reads as follows:
"1. A strengthened glass article comprising:
with the proviso that the glass article (300) is not a glass article according to Examples 4A, 4B,
4C, 4D or 5A of EP 3 204 338 A2."
According to the appellant, the addition of the undisclosed disclaimer fulfilled the criteria of G 1/03, and priority from D0 was validly claimed.
The current application claims priority from D0, inter alia. Compared with the current application as originally filed, claim 1 of the main request contains an undisclosed disclaimer based on Examples 4A-D and 5A of D1.
D1 claims priority from, inter alia, unpublished D1a, which was filed prior to D0. D1 validly claims priority from D1a in so far as the subject-matter of the disclaimer is concerned, i.e. Examples 4A-D and 5A. D1 and the current application are both by the same applicant, the appellant.
For the following reasons, the addition of the undisclosed disclaimer in this case does not fulfil the requirements of Article 123(2) EPC.
(a) The subject-matter of claim 1 of the current application before the addition of the disclaimer was anticipated by Examples 4A-D and 5A of D1.
(b) The effective date of these examples in D1 is the filing date of D1a, which is before the filing date of D0. As far as the subject-matter of Examples 4A-D and 5A of D1/D1a is concerned, D1a - and not D0 - is hence the first application within the meaning of Article 87(1) together with (4) EPC.
(c) Therefore, the current application cannot validly claim the priority of D0 for the subject-matter of these examples, and the effective date in this regard is the filing date of the current application.
(d) Since D1 was published prior to that filing date, D1 is prior art under Article 54(2) EPC for this subject-matter.
(e) D1 is moreover not an accidental disclosure since it is directed to the same technical field as the current application, namely glass articles.
(f) Exclusion from patentability for non-technical reasons is irrelevant to this case.
Consequently, the criteria developed in G 1/03, together with G 1/16, are not fulfilled, and the disclaimer in claim 1 of the main request violates Article 123(2) EPC.
In a situation such as the one at issue, inserting a disclaimer has the effect of limiting the claim to subject-matter having a different (earlier) effective date and thus changing the status of the prior-art document from being relevant under Article 54(2) EPC, in the absence of the disclaimer, to Article 54(3) EPC, following the inclusion of the disclaimer.
This consideration is decisive when determining whether the disclaimer fulfils its purpose of restoring novelty by delimiting a claim against state of the art under Article 54(3) EPC.
In T 1222/11, the inclusion of several undisclosed disclaimers on the basis of exemplified compositions in an earlier application by the same applicant was held not allowable under Article 123(2) EPC. The board considered that the earlier application was the first application within the meaning of Article 87(1) EPC for these compositions and that the priority as claimed by the application was in so far not valid.
G 1/16 confirms that only the criteria of G 1/03 are to be considered when the allowability of an undisclosed disclaimer is assessed, while the gold standard test of G 2/10 has no relevance under these circumstances.
Furthermore, in T 282/12, the board held that, for reasons of consistency, the rationale of G 1/15 must also apply for deciding whether an application from which priority is claimed is the first application within the meaning of Article 87(1) EPC. Indeed, just as a priority application and a patent claiming priority from it may partially relate to the same invention, the priority application and an earlier application filed by the same applicant may also do so. In this case, the priority application would be the first application for only the part of the invention which is not the same as in the earlier application.
Regarding the case at hand, T 282/12 thus also supports the finding that the claims of the main request cannot validly claim the priority of D0 for the subject-matter of Examples 4A-D and 5A since it had already been disclosed in D1/D1a.
The appellant requested referral of questions to the Enlarged Board of Appeal.
However, as the board has followed G 1/15 and G 1/16 and the relevant case law (also) subsequent to these Enlarged Board of Appeal decisions, and as there was no subsequent contradicting case law under comparable circumstances, there is no room for a referral to the Enlarged Board of Appeal to ensure uniform application of the law, which in any case would not be necessary in view of an isolated non-uniform decision.
The appeal is dismissed.