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Feature analysis on impermissible extension, novelty-destroying anticipation and inventive step by the 19 Senate

On 3 July 2018, the opponent filed an opposition against patent 10 2014 117 479 ‘Antrieb für ein Verschlusselement eines Kraftfahrzeugs’ (Drive for a locking element of a motor vehicle), which was granted on 5 October 2017, on the grounds that the subject matter of the patent went beyond the content of the original application, that it lacked both novelty and inventive step and that the invention was not practicably disclosed. By decision announced at the end of the hearing on 21 November 2022, Patent Division 56 of the DPMA revoked the patent.

The appeal filed by the patent proprietor on 5 January 2023 is directed against this.

The patent proprietor's admissible appeal is successful to the extent that the contested decision was to be set aside and the patent in suit was to be maintained to the extent of auxiliary request 4 of 7 June 2024. This is because the subject matter of patent claim 1 in the version of auxiliary request 4 proves to be patentable in relation to the present prior art.

From the present decision, it is worth mentioning the feature analysis in which the Senate states that the term ‘elongated’ is only given the meaning by the skilled person that the axial extension is greater than the radial extension. The skilled person does not take a limiting statement about the relationship of the dimensions of the two coupling elements to each other from this feature.

Also noteworthy is the analysis of the feature that the housing of the drive motor has a taper. In the opinion of the Senate, this constructive design and the associated effect relates exclusively to this housing and is not produced by additional or equally effective measures or elements.

In the opinion of the Senate, the term ‘tapered’ implies that there is a non-tapered, i.e. thicker, area of the drive motor housing compared to the tapered area. Since electric motors predominantly have a circular cylindrical housing, the skilled person assumes that the drive motor has a circular cylindrical housing with at least two different diameters in the absence of information deviating from this understanding.

Electric motor housings with different diameter ranges are common and therefore familiar to persons skilled in the art. Accordingly, the publications cited by the opponent also contain a number of such motor housings with a tapered area.

However, none of the printed matter shows how to install the motor with a housing having different diameter ranges in such a way that the coupling element associated with the spindle nut can enter a region between the motor housing and the coupling element associated with the spindle. Therefore, the subject matter of claim 1 according to auxiliary claim 4 is not anticipated by the present prior art in a manner prejudicial to novelty.

The decision of the patent division was therefore to be set aside and the patent was to be upheld to the extent of auxiliary request 4.

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