T 1363/08 – Trouble With The Two-Part Form

The applicant filed an appeal after the Examining Division (ED) had refused its application for lack of inventive step.

Claim 1 of the main request read:

A vehicle antenna system for use in a keyless entry system with bidirectional communication between a driver’s proprietary card (19) and the vehicle antenna system, the vehicle antenna system comprising:

a vehicle antenna (35) comprising at least a core (21) made of a magnetic material and a coil (23) wound around the outer surface of the core (21);

a vehicle mirror composed of a fixing portion (16) and a movable fold-away portion (17); and

metal components for revolving the vehicle mirror,

characterised in that

the metal components are contained in the fold-away portion (17); and in that

the vehicle antenna (35) is housed within the fixing portion (16).

The decision contains an interesting reasoning based on the two-part form of the claim, and yet another use of “Wunderwaffe” Article 12(4) RPBA.

Main request and auxiliary request 2

[2.1] The vehicle antenna system of claim 1 of the main request and the auxiliary request 2 comprises “metal components for revolving the vehicle mirror”, which metal components “are contained in the fold-away portion (17)” of the vehicle mirror.

[2.2] A 84 EPC 1973 requires that the claims shall be clear.

The claimed metal components are only defined by their function of revolving the vehicle mirror and their arrangement in the fold-away portion of the vehicle mirror. The nature of these metal components can be inferred from […] the application as filed (see “such metal components as motor, cam, etc.”). Claim 1, however, is unduly general and vague. First, the claim does not otherwise specify the structure of the metal components. Second, it does not state whether all the metal components for revolving the vehicle mirror are contained in the fold-away portion. Last but not least, it does not exclude that other metal components, which may impair the claimed bidirectional communication, are housed within the fixing portion of the vehicle mirror together with the antenna.

Therefore, claim 1 of the main request and auxiliary request 2 does not meet the requirements of A 84 EPC 1973 as lacking clarity.

[2.3] A 83 EPC 1973 requires that the “application” shall disclose the invention in a manner sufficiently clear and “complete” for it to be carried out by a skilled person. The requirement of completeness of the application implies, according to Rule 27(1)(e) EPC 1973, that the “description” shall describe “in detail” at least one way of carrying out the invention claimed.

The application as filed does not describe at all how the vehicle mirror is revolved by means of metal components contained in the fold-away portion. In particular, the disclosure […] already mentioned above is completely insufficient in this respect.

The appellant, however, held that the present invention did not concern a special system for revolving a vehicle mirror. Rather, it dealt with the interference that metal components might have on the claimed bidirectional communication.

In the Board’s view, such an argument is not convincing. As it results from the two-part form of claim 1, the claimed invention consists in the arrangement of the vehicle antenna in the fixing portion of the vehicle mirror, whereas the metal components for revolving the vehicle mirror are placed in the fold-away portion. The vehicle antenna is thus separated from the source of interference represented by such metal components. With this understanding, Rule 27(1)(e) EPC 1973 requires that the description describes in detail at least one example how the vehicle mirror can be revolved by means, i.e. the claimed metal components, that are contained in the fold-away portion. This is not the case.

Therefore, the requirement of Rule 27(1)(e) EPC 1973 is not met.

[2.4] It follows that the main request and the auxiliary request 2 are not allowable.

Auxiliary requests 1 and 3 were found to lack inventive step.

The Board then dealt with auxiliary requests 4 and 5.

Claim 1 of auxiliary request 4 on file read:

A vehicle antenna system for use in a keyless entry system with bidirectional communication between a driver’s proprietary card (19) and the vehicle antenna system, the vehicle antenna system comprising:

a vehicle antenna (35) comprising at least a core (21) made of a magnetic material and a coil (23) wound around the outer surface of the core (21);

a vehicle mirror assembly composed of a mirror, a movable portion (17) holding the mirror, and a fixing portion (16) for mounting the vehicle mirror assembly to the outside of a vehicle body; and

metal components for revolving the mirror,

characterised in that

the movable portion (17) is adapted to be able to be folded away by the driver;

the metal components are contained in the movable portion (17); and

the vehicle antenna (35) is housed within the fixing portion (16),

wherein the vehicle antenna (35) further comprises a holding portion (22) composed of a dielectric film sheet wound on an outer surface of the core (21) and a linear conductor being wound around the holding portion (22).

[5.1] Claim 1 of the auxiliary requests 4 and 5 includes the feature that the vehicle antenna further comprises a holding portion composed of a dielectric film sheet wound on an outer surface of the core and a linear conductor being wound around the holding portion.

[5.2] With a communication of 17 February 2005 the ED confirmed an objection of lack of unity under A 82 EPC 1973 raised by the search division. The application was considered to relate to two different inventions. A first invention was claimed in claims 1-6 of the application as filed and concerned “an antenna device comprising a coil antenna with tapered magnetic core, said coil antenna being positioned and encapsulated within a housing and further comprising a thin holding portion carrying the coil windings”. A second invention was claimed in claims 7-9 of the application as filed and concerned “a vehicle antenna system comprising a coil antenna mounted on the fixing portion of a vehicle mirror”. The ED held that there was no single general inventive concept which linked the subject-matter of the two inventions.

With a reply of 13 June 2005 the appellant, then applicant, filed new claims 1-6 based on claims 7-9 of the application as filed and held that the objection of lack of unity had thus been overcome.

[5.3] According to the procedure relating to lack of unity during substantive examination, as laid down in the Guidelines for Examination in the EPO (C-III,7.10), if the applicant has taken the opportunity to have two or more inventions searched, then it may determine that the application is to proceed on the basis of one of these, the other(s) being deleted.

In the present case, both inventions mentioned above have been searched and the appellant determined that the application was to proceed on the basis of the second invention. For the first invention the appellant had the opportunity to file a divisional application, if it liked.

Claim 1 of the auxiliary requests 4 and 5 thus represents an attempt to deviate from the choice made with the letter of 13 June 2005. Clearly, such requests could have been presented in the first instance proceedings. This was, however, not the case as these requests were presented for the first time during the appeal proceedings.

[5.4] In view of the foregoing, the Board holds the auxiliary requests 4 and 5 inadmissible in the exercise of the power conferred by Article 12(4) RPBA. […]

The appeal is dismissed.

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