Tuesday, 30 November 2010

T 1985/09 – He Who Rows Wind Reaps A Refusal

The present decision deals with the refusal of a divisional application by the Examining Division (ED).

Claim 1 of the application read:

Rotary windrower (1) with swath circles that are driven about essentially vertical axes, arranged staggered behind one another in travelling direction (F) and supported on the ground by rotating wheels, for raking up the harvested crop, wherein the swath circles can be pivoted up from the working position into a transport position and vice versa, wherein the swath circles are connected to an underframe (5) attached to radial arms in joint axes, characterised in that the rotary windrower (1) is formed by swath circles (2,2’,3,3’,4,4’) forming at least three staggered rows (10,11,12), so that at least one basic structure (8) is arranged between the leading staggered row and the rear staggered row (10,12) and in that the distance (61) between the two staggered rows (10,11) that are foremost in the travelling direction (F) is smaller than the distance (62) between the two staggered rows (10,12) that are rearmost in the travelling direction (F).

*** Translated from the German ***

[2.1] According to the established case law, the assessment of whether a divisional application complies with the requirements of A 76(1) with respect to the former parent application is carried out according to the same principles that have been developed for A 123(2), see Case Law of the Boards of Appeal, 5th edition, 2006 (hereinafter “Case Law”), section III.F.1.3, or G 1/05 [5.1]. Thus the subject-matter of the divisional application has to be directly and unambiguously derivable from the former (parent) application, the content of which is formed by the description, the claims and the drawings. The drawings may in principle serve as basis for the features to be introduced, in particular when [their] function and structure are directly, completely and unambiguously apparent to the skilled person (Case Law, III.A.1.3). As a general rule, an isolated feature may only be extracted from a combination of features in the absence of any clearly recognisable functional or structural relationship among that features (see decisions T 1067/97, T 714/00 and T 25/03 cited in Case Law, III.A.1, p. 240). This principle also applies to the incorporation of features from drawings (see, e.g. T 191/93 or T 676/90).

[2.2] As compared to claim 1 of the parent application, claim 1 of all requests now contains the new feature that the distance between the two staggered rows that are foremost in the travelling direction is smaller than the distance between the two staggered rows that are rearmost in the travelling direction. As acknowledged by the appellant, there is no verbatim basis for this feature in the description or in the claims of the parent application. Rather, the figures serve as basis for this feature. The Board is of the opinion that the figures are sufficiently detailed so as to enable the derivation of relative dimensions. For example, all figures consequently show different distances between the rows, which suggests an intention on behalf of the author. 

[2.3] However, the figures also contain many other features, among which the appellant has set apart as relevant for the invention solely the actual feature of claim 1. When assessing the admissibility, the question arises of whether the skilled person, in view of the figures in their relationship with the whole content of the parent application and taking into account his basic knowledge, would directly and unambiguously recognize that this very feature that has been set apart is of particular technical importance, i.e. plays a paramount role in obtaining a particular technical function or effect.

The Board is convinced that no such direct and unambiguous teaching can be found in the parent application.

[2.4] As already mentioned, the text (description or claims) of the parent application does not expressly mention this feature, and even less so a function or effect that is closely related to it.

Paragraphs [0004] and [0008] deals with the general problem of how to safely guide a rotary windrower having a great working width in road traffic, as well as with a profile ensuring this. Paragraphs [0010], [0025], [0026] and [0048], however, deal with the possibility of modifying the length of the radial arms bearing the circles, which allows to deposit great swaths and transfer swaths under different circumstances of use. Finally, paragraph [0048] describes the use of a stock edge guiding system or a system for identifying obstacles.

Even when putting together these passages, the Board cannot find therein that the arrangement that is disclosed allows better deposit when cornering or results in constructive tolerance for situating the basic structure. The “optimum distances” mentioned in paragraph [0010] […] refer to the general possibility of producing different swath deposits mentioned in the preceding lines, inter alia also by varying the allocation of directions of rotation, whereby the rotary windrower can be used in a more flexible way […]. The manoeuvrability is mentioned […] exclusively in relation with the (independent) steerability of the rotating wheels. The relative distance of the staggered rows is not mentioned there, neither explicitly nor implicitly.

[2.5] Even if the Board assumed that said effect – better deposit when cornering plus constructive tolerance – results from such an arrangement, their effect would depend on many other factors and not only from the relative distance of the staggered rows. The general geometry of and the relative dimensions of the different structural elements, such as, for example, the relative dimensions of the swath circles, their relative distance with respect to the underframe, the relative length of the underframe, the position and relative dimensions of the basic structure, etc., may be expected to also have a considerable influence on the improved deposit of swaths when cornering. The Board is not convinced that the skilled person, if he had derived the alleged effect from the parent application at all, would have recognized immediately and without further ado that the relative distance plays a paramount role.

[2.6] Moreover, it does not necessarily follow from the parent application that the greater distance between the two rearmost staggered rows is related to the lodging of the underframe or that it would make it possible. For instance, paragraph [0021] also discloses other arrangements of the basic structure between the first and the third staggered rows. Whether the basic structure can be lodged between the rear staggered rows even when the latter are pivoted up does not only depend on their distance but also on their length, see Figures 9 and 10.

[2.7] As a result, the Board notes that the skilled person would clearly and without further ado recognize the greater distance between the rear staggered rows (from the figures) but would not directly and unambiguously recognize the technical meaning of this single feature – i.e. the technical effect or function resulting from this feature alone – from the whole content of the parent application. As this feature has been isolated and set apart from many other features, it gains a new, particular meaning. Therefore, claim 1 of the divisional application, which is common to all requests, adds a new fact, which goes beyond the content of the parent application. Thus none of the requests complies with the requirements of A 76(1).

The appeal is dismissed.

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