Saturday, 27 November 2010

T 754/08 – Yes But

In the present decision the Board also deals with a nice attempt by the opponent to take advantage of the lack of precision of the patent under consideration.

[3.2] Starting from the device disclosed in D9, the object underlying the claimed invention has to be regarded as to provide a suitable tool for operating this device without the need to provide an element adapted to abut against a neighbouring stationary object […].

To achieve this object, claim 1 proposes a fluid-operated ratcheting tool exhibiting the features according to the characterising portion of the claim. The rotatable outer projection is connected with the rotatable tool element to rotate it. The inner non-rotatable projection is connected with the non-rotatable tool element and provides the necessary reaction force without the need for an element adapted to abut against a neighbouring stationary object.

[3.3] D26 shows a hydraulic ratcheting tool (ULC-type with auto-back-up wrench) which, in operation, has an element (an arm with a rectangular opening) which holds a bolt stationary while another element (a rotatable element with a hexagonal opening) applies a rotation to the nut surrounding the bolt. Therefore, the movement realised is, from a kinematic point of view, the same as that required by D9, i.e. the rotation of a tool element surrounding a non-rotatable element.

[3.4] However, as acknowledged by the [opponent] itself, the tool of D26 cannot be used as such to operate the device of D9, but needs to be modified for this purpose.

Contrary to the submission of the [opponent], said modifications cannot be considered minor. Not only had both the rotatable and the stationary elements of the tool to be modified to project from the housing of the tool; also the way in which the tool engages with the elements to be held stationary and to be rotated had to be changed, since the inner part 4 and the outer part 3 of the device of D9 are engaged with on their inner surface, while the bolt and the nut shown in D26 are engaged with on their outer surfaces.

Moreover, these modifications, changing the way of engaging the different rotatable and stationary elements, imply a different way of applying the torque. Since the tool shown in D26 is designed for applying high torques, the person skilled in the art would be dissuaded from changing the application of the torque in a way which might impair the tool’s functioning.

Therefore, it was not obvious for the person skilled in the art to try to achieve the given object by selecting the ULC-type tool with auto-back-up wrench shown in D26 and modifying it according to claim 1.

[3.5] This finding cannot be challenged by the [opponent’s] argument according to which the alleged lack of detail of the patent in suit proved that the common general knowledge of the person skilled in the art enabled him to modify the tool shown in D26 to operate the device of D9.

It is not disputed that the person skilled in the art was in a position to perform these modifications. However, the relevant question when examining inventive step is not whether the person skilled in the art could have carried out the claimed invention, but whether he would have done so in the hope of achieving the object underlying it.

For the reasons explained above, in the present case this question is to be answered in the negative. […]

[3.8] In view of the above, the subject-matter of claim 1 of the main request involves an inventive step.

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