Thursday, 15 July 2010

T 1150/08 – The Untaught Link

[2.1.2] Claim 1 is further amended by addition of the feature […] according to which the insert pocket comprises a base surface from which the lower and upper support walls extend generally uprightly from the base surface. Since the walls are straight in side view, as explained above, this feature implies that the lower and upper support walls are generally planar.

The [opponent] raised an objection of lack of clarity under A 84 in respect of this feature due to the presence of the term “generally”.

Although this feature was already present in claim 12 as granted, and, in principle, A 102(3) does not allow objections to be based upon A 84 if they do not arise out of the amendments made (see e.g. T 301/87), the Board considers that in the present context the term “generally” is sufficiently clear in that it indicates that the support walls are to a great extent perpendicular to the base surface, i.e. excluding portions at their boundaries where deviations may be present due e.g. to a radius of curvature or a chamfer.

The [opponent] also argued that this feature was only disclosed in the specific combination of claim 13 of the application as filed, which includes the feature that the base surface is abutted by a given protruding polygon of the cutting insert. According to the case law of the Boards of Appeal of the EPO, the isolated extraction of a feature from a set of features is justified on the basis of the specific condition that the skilled person could have readily recognised the absence of any functional or structural relationship among said features (see e.g. T 201/83 or T 714/00).

According to the teaching of the application as filed, whilst the lower support wall, the upper support wall and the base surface of the insert holder have the function of positively locking the cutting insert in the insert pocket […], the provision of a protruding pentagon on the side surface of the cutting insert is not related to the locking of the cutting insert. Indeed the protruding pentagon provides a suitable shape of the side surface that allows a given side wall thereof to be coplanar with the end surface of the insert holder, thereby maximizing the contact area between the insert and the insert holder without reducing the depth of cut […].

The skilled person would therefore readily recognize that there is no teaching implying the presence of a functional or structural relationship between the feature relating to the upper and lower support wall extending generally uprightly from the base surface and the feature relating to the presence of a protruding pentagon.

In this respect it is noted that in a mechanical device such as the metal cutting tool described in detail in the application as filed, it could be speculated that some kind of functional and/or structural link can always be found between the various features of the device (for instance because a feature related to the shape of the insert might e.g. affect the overall mechanical rigidity of the tool). However, the assessment of whether an amendment consisting in extracting a feature from a disclosed combination of features introduces subject-matter extending beyond the content of the application as filed presupposes determining whether the link forms part of a technical teaching given by the application as filed in respect of the disclosed combination.

If, as discussed above, this is not the case, then the extraction of a feature from a set of features disclosed in combination does not provide a new technical teaching.

To read the whole decision, click here.