Monday, 29 November 2010

T 1440/08 – In Through The Back Door

Claims 1, 6, 7, and 8 of the patent as granted read:

1. Torsional vibration damper having a driving transmission element which is connected, by means of a damping device (79) which acts in the circumferential direction, to a driven transmission element (53) which can move rotationally relative to the driving transmission element (36), at least the driven transmission element (53) having a centrifugal mass element (51) which is composed of a deformable sheet steel plate, is connected in a rotationally fixed manner by means of at least one first connecting face (94) to a hub disc (39), said hub disc (39) centring the driven transmission element relative to the driving transmission element, holds a friction clutch (55) by means of at least one second connecting face (96), and provides a friction face for a friction lining of a clutch disc (63) of the friction clutch, characterized in that the centrifugal mass element (51) is formed as a cut-out portion (92) from a steel sheet (90) and has substantially the same surface quality as the steel sheet (90), it being possible on account of said surface quality to dispense with remachining even at the connecting faces (94, 96) of the centrifugal mass element (51) [feature B].

6. Torsional vibration damper according to one of Claims 1 to 5, characterized in that [feature C:] a profiling (106) is formed on the rear side (104), which faces away from the friction face (98), of the centrifugal mass element (51) by means of the forming process, in which profiling (106) planar profiling faces (108) are provided alternately with grooves (110) which dip into the centrifugal mass element (51).

7. Torsional vibration damper according to Claim 6, characterized in that [feature D:] the profiling (106) is embodied so as to form a waffle pattern (112) having grooves (110a, 110b) running in two substantially perpendicular planes of extent.

8. Torsional vibration damper according to Claim 7, characterized in that [feature E:] the grooves (110a) in a first direction of extent (114) run in substantially the same direction of extent as a grain structure (118) of the centrifugal mass element (51), while the grooves (110b) cross the grain structure (118) in the substantially perpendicular direction of extent (116) to the latter.

Claim 8 of the first auxiliary request corresponded to a combination of claims 1, 6 (feature C), 7 (feature D), and 8 (feature E) as granted.

** Translated from the German **

[4] According to the established case law of the Boards of appeal of the EPO (see T 310/87 NB: This citation is erroneous, it shouls read T 301/87) objections under A 84 are admissible in opposition and opposition appeal proceedings, if they are based on amendments of the patent.

It was argued that, in view of T 367/96 [6.2], it is not possible to examine conformity with A 84 in opposition and opposition appeal proceedings when the amendment consists in the combination of several claims as granted. However, T 367/96 concerns specific objections against a lack of support of the claims in the description, whereas the present case concerns contradictions within a claim arising from the amendment.

If the combination of claims as granted makes the invention appear in a different perspective, giving rise to a lack of clarity which was already present in the patent as granted, the established case law of the Boards of appeal of the EPO (see e.g. T 472/88, T 420/00, T 681/00) definitely allows the Boards to examine objections under A 84. This is true in particular when, as in the present case, the lack of clarity concerns features which are decisive in the assessment of novelty and inventive step (see T 1459/05)

In the present case claim 1 was amended by adding features C to E, which correspond to claims 6 to 8 as granted. The introduction of these features gives rise to a lack of clarity of claim 1, or to a contradiction between features B and C. However, when the addition of a feature leads to a contradiction in the wording of claim 1, one has to consider that the lack of clarity is due to the amendment. As the lack of clarity is directly due to the amendment, the Board can examine whether the claim complies with the requirements of A 84 or not (T 310/87).

Feature C provides a forming process on the rear side of the centrifugal mass element, which, as can be seen from paragraphs [0010] and [0020] of the opposed patent, is carried out in order to increase the surface quality. As a consequence, the forming process is to be understood as remachining in view of a modification of the surface quality and is in contradiction with feature B, which excludes remachining.

The [patent proprietor] explained that the aim of the forming process according to feature C is to improve the conduction of heat by structuring the rear side of the centrifugal mass element, that the slight modification of the surface quality of the grinding surface was a side effect and that the grinding surface had essentially the same surface quality as the sheet steel plate. However, the Board cannot endorse this argumentation because there is no indication of such an effect of the rear side machining in the description. Quite to the contrary, the description explicitly explains that the aim of the remachining is an increase of the surface quality. As a consequence, this effect cannot be seen to be a side effect and it is not possible to presume that the grinding surface had “essentially the same surface quality” as the sheet steel plate after [the remachining].

Thus there is a contradiction between the features B and C of claim 1 such that the wording of the claim is unclear and does not comply with the requirements of A 84.

Personally, I do not like this approach because it sort of introduces clarity as a ground of opposition through the back door. The lack of clarity was already present in the patent as granted, and so was the combination lacking clarity. This being said, it is clear that in most cases the Examining Divisions do not check the clarity of all the possible combinations contained in the claims as granted, and it may well be that the Boards, as stated in T 1459/05, “need to have a power of discretion in order to be able to deviate, on a case-by-case basis and as an exception to the generally admitted practice”.

To complete the case law given in the decision, one may also cite T 656/07 (3.2.02), but also T 1659/07 (3.5.03), where T 656/07 is said to be “a particular case that cannot be generalised”, and T 1484/07 (3.3.10). One has the impression that the Boards have not reached a consensus on this topic yet.

Should you wish to download the whole decision (in German), just click here.


pat-agoni-a said...

It is in general assumed that the reason for not including A 84 as ground for opposition was that it is undesirable to have oppositions only based on lack of clarity.

On the other hand, it is reasonable to assume that when an independent claim is combined with one or more dependent claims a lack of clarity may arise (these may include contradictions, but also merely change the emphasis on some claim features rendering the borders of the claim unclear).

What are the alternatives? To maintain an unclear claim, which even could be contradictory, and shifting the burden to the infringement judge or to take up the issue in opposition or opposition appeal proceedings?

I believe it preferable that if the issue of lack of clarity is a real one, and not merely the desire of the opponent not to understand the claim, it should be addressed by the division or the board. The aim of central proceedings at the EPO is to deliver reliable patents, as far as possible.

Myshkin said...

So maybe it's time that T 301/87 is overruled? After all, Art. 101(3) is pretty clear: the amended patent should meet the requirements of the EPC. According to G 1/91, these requirements do not include all requirements that must be met by an application (in particular it does not include Art. 82), but it seems only reasonable to require amended patent claims to comply with Art. 84. This does not make Art. 84 a ground of opposition; only the grounds listed in Art. 100 can make amendment of the patent necessary.

I have sympathy for the argument that unclarities already present in the independent claims as granted should normally not lead to revocation, but it is not very realistic to assume that the dependent claims as granted have been fully examined for clarity.

pat-agoni-a said...

In G 9/91 (Power to examine) the EBA added as last "clarification":

19. In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC).

This final "clarification" has spawned innumerable discussions whether a lack of clarity that occurs from a combination of claims has to be considered or not. Some say yes (fully examined) other no (because it was already there and only the amendment has to be examined).

I think a final answer will be reached after a further referral, but when ...

Myshkin said...

I like the "in order to avoid any misunderstanding" :-)

Point 11 of G 9/91 might be of help here. According to the EBA, if an independent claim falls in opposition, the dependent claims are implicitly covered by the statement under R. 76(2)(c).

If an amended patent should be fully examined, it would be of no importance whether the dependent claims are opposed as well if the independent claim falls (because in that case they can be attacked anyway and without restriction). So it seems to follow from point 11 that an amended patent is not to be fully (re-)examined. Apparently the dependent claims as granted can only be attacked based on a ground of opposition.

It would follow that the approach in T 1440/08 is incorrect: Art. 84 was used against original dependent claim 8 (when dependent on claims 7, 6, 1).

Of course I might be reading too much into point 11.