The Federal Patent Court (11. Senate, Technical board of appeal) has by resolution of 21. October 2010 (AZ. 11 The (pat) 47/05) the rejection of a patent application by the German Patent- and trademark office revoked and the patent 103 09 157 entitled “Method for laser welding coated plates”..

Key message

A process is based on inventive step, if the state of the art may suggest individual characteristic features, for another feature - here the alternating execution of the process steps in the manner of a stitching seam - but contains no hint or suggestion. What is decisive is the totality of the characteristic features.

Facts

The registration concerned the laser welding of two coated sheets, such as galvanized body panels, which lie on top of each other without a gap. Because the coating evaporates sooner, as the sheet metal melts, Explosive evaporation can occur during welding, that affect the seam. The examination center had the registration 2005 compared to three publications (D1 day D3.) rejected as not patentable. In the appeal proceedings, the applicant submitted an amended claim 1 ein: Stripping and welding are carried out with the same laser beam with essentially the same power and focusing, welding with reduced feed speed, and both steps alternate in the manner of a stitching seam.

The decision

The Senate approved the novelty: The Japanese publication D1 only showed the generic features (Stripping and welding with two separate laser beams), In any case, publication D2 was missing the stitching seam guide, and D3 concerned a non-generic preparation procedure.

Inventive step was also affirmed. The Senate thought it was conceivable, that the specialist - a technical college engineer in mechanical engineering with many years of experience in laser welding - is stimulated by D2 and his specialist knowledge, to carry out both steps with the same jet and reduced feed speed. However, there was no suggestion in the prior art for the alternating execution of the steps in the manner of a stitching seam. Neither a summary of the publications nor the specialist knowledge led to the claimed method. The patent came with the claims 1 to 4 granted.

Importance for practice

The decision shows, that a rejection by the DPMA in the appeal procedure can be overcome by specifically changing the claims. Just a single additional feature, for which the state of the art offers no inspiration, can bear the inventive step, provided it is disclosed in the original documents. After a negative test result, it is therefore worth it, to systematically review the application for further disclosed features. The decision reflects the legal situation at the time it was issued.

Full text: Federal Patent Court, Decision of 21.10.2010 (CERTIFICATE 11 The (pat) 47/05), available via rechtsprechung-im-internet.de.

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Summary of the decision; no legal advice in individual cases.