„Dekorformteil“ (Decorative Moulded Part“)
The description of a feature in the prior art with an alternative or contrary embodiment to the claimed patent in dispute cannot establish an inventive step in general if the embodiment is described merely as an exemplary embodiment.
Application DE 10 2018 221 678.9 "Dekorformteil” (“Decorative moulded part" was received by the German Patent and Trade Mark Office on 13 December 2018 and was refused by the Examining Division for Class B60R by decision of 25 March 2020.
The patent applicant's appeal, which was received by the German Patent and Trade Mark Office on 30 April 2020, is directed against this decision, which was served on her on 30 March 2020. In its statement of grounds of appeal of 24 August 2020, the appellant disagrees with the Examining Section's statements in the rejection decision.
The applicant considered the subject-matter of the patent claims as originally filed to be new and based on an inventive step. Thus, although publication E1 discloses wood and metal as materials for decorative layers, it teaches exclusively in this context that a hard-decorative layer is pressed into a soft decorative layer. Thus, the teaching to be taken from publication E1 is diametrically opposed to the subject-matter of the invention, since the characterising part of claim 1 claims that
"the second decorative layer (2) is made of a wood veneer and the first decorative layer (1) is made of a metal foil and that the second decorative layer (2) is pressed into the first decorative layer (1)".
The appeal was found to be admissible. However, the appeal is unsuccessful on the merits, because the subject-matter of the respective patent claim 1 in the version according to the main request as well as in the versions according to all auxiliary requests are in each case disclosed to the skilled person in the application so clearly and completely that he can carry them out, but they are not based on an inventive step in each case. The subject-matter of claims 1 according to the main request or according to all auxiliary requests is therefore not patentable in each case.
In the prior art known from publication E1, a harder material is placed on a continuous layer of a softer material, which may be formed by a veneer layer. The harder layer was formed by a metal (cf. paragraph  of the disclosure).
However, the decorative moulded part claimed in patent claim 1 according to the main application is not based on an inventive step. Thus, a decorative moulded part can be seen in publication E2 in Figure 1, which has a first decorative layer, referred to as the first layer 1, and a carrier, referred to as the second layer 2, which is injection-moulded onto the first layer. The first decorative layer is preferably made of an aluminium or steel foil (see page 4, last paragraph, and page 5, first paragraph).
Only the remaining feature, according to which the second decorative layer is formed by a wood veneer, is not immediately apparent from document E2.
However, when studying publication E2, the skilled person recognises that the teaching of publication E2 is not limited to this example of an embodiment and thus does not refer exclusively to the use of printing ink as an application. This already follows from the explanations on page 5 in the last two lines, which expressly mention the use of printing ink as an application there as an example, and also from the sequence of the sub claims. For it is only in claim 11 that the use of printing ink as an application is claimed as an advantageous further development.
Rather, on the filing date of the present patent application, it was obvious to the person skilled in the art that other materials could also be considered as an application which, on the one hand, are normally used in the vehicle sector and, on the other hand, can also be used to realise such an application in the dimensions indicated in publication E2, such as the height of the application, insofar as - as a further restriction - there were no reservations on the part of the person skilled in the art regarding their use at the time of filing (see Federal Court of Justice GRUR 2010, 322, headnote - Sektionaltor).
In the opinion of the competent senate, wood veneers are a material commonly used by the skilled person in the field of decorative mouldings for vehicles, which is widely used for representations or partial surface finishes and which is generally processed in thicknesses of 0.1 mm to 1.0 mm (see as evidence: document E3 - page 3, line 34 to page 4, line 9). In view of the decorative moulding disclosed in document E2, it was obvious for the skilled person to also consider such wood veneers, which are frequently used in the automotive sector, as an order.
Accordingly, the skilled person will obviously use a wood veneer as a second decorative layer in the decorative moulding according to specification E2 and the remaining feature M3.2 compared to the disclosure of specification E2 can therefore not constitute an inventive step.
In the opinion of the competent senate, the claims according to the auxiliary claims cannot establish inventive step either. The appeal was dismissed.