Interpretative Spotlight: Directly

The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Claim 1 of the main request before the Board read (in English translation, taken from the patent as granted):

Internal combustion engine having a crankcase (1) in which is rotatably mounted a crankshaft to which at least one piston-carrying connecting rod is coupled, the piston being moveable in a cylinder which is covered by a cylinder head so as to form a working space, it being possible by means of gas exchange devices for fresh gas to be fed to the working space from a fresh gas line and for exhaust gas to be discharged from the working space into an exhaust gas line, and the exhaust gas line and the fresh gas line being connected by means of an air-cooled recirculation line, a portion of which is embodied as an air/exhaust gas heat exchanger (14) arranged directly on the internal combustion engine, characterized in that an existing cooling air stream of the internal combustion engine, which cooling air stream is supplied by a cooling air fan (8) which is integrated in the internal combustion engine, flows through the air/exhaust gas heat exchanger (14).(my emphasis)

The opponent argued that this claim was not novel over document E1.

The patent proprietor pointed out that the claim was new because E1 did not discloses the feature that the air/exhaust gas heat exchanger was arranged directly on the internal combustion engine. In D1 the exhaust gas heat exchanger 84 was inserted in a radiator block 24 mounted on the vehicle chassis 12, i.e. not directly on the internal combustion engine.

The opponent argued that the feature only taught that the air/exhaust gas heat exchanger had to be arranged so close to the internal combustion engine that it was situated in a flow of cooling air. The wording did not exclude that there was a further aggregate between the internal combustion engine and the air/exhaust gas heat exchanger.

What did the Board decide?

*** Translation of the German original ***

[2.1] Document E1 discloses an internal combustion engine having a crankcase 30 (see Fig. 1) in which is rotatably mounted a crankshaft 20 to which at least one piston-carrying connecting rod is coupled, the piston being moveable in a cylinder 34 which is covered by a cylinder head so as to form a working space, it being possible by means of gas exchange devices for fresh gas 42 to be fed to the working space from a fresh gas line 64 and for exhaust gas 40 to be discharged from the working space into an exhaust gas line. The exhaust gas line and the fresh gas line are connected by means of an air-cooled recirculation line 82, a portion of which is embodied as an air/exhaust gas heat exchanger 84. An existing cooling air stream of the internal combustion engine, which cooling air stream is supplied by a cooling air fan 18 which is integrated in the internal combustion engine, flows through the air/exhaust gas heat exchanger.

[2.2] The subject-matter of claim 1 differs from this internal combustion engine in that the air/exhaust gas heat exchanger 84 is arranged directly on the internal combustion engine.

[2.2.1] According to the literal sense of “arranged” and “directly”, this means that the heat exchanger is provided immediately (unmittelbar) on the internal combustion engine, i.e. that no other part may be between them.

[2.2.2] The OD and the [patent proprietor] argued that this feature required the heat exchanger to be fixed (befestigt) to the internal combustion engine.

According to the established case law of the Boards of appeal, terms used in patent documents are given their normal meaning in the relevant art, unless the description gives the terms a special meaning (see, for instance, T 1321/04).

In the present case the figure of the patent shows that that the air/exhaust gas heat exchanger 14 is fixed (befestigt) to the internal combustion engine. However, as the description only uses exclusively the term “arranged” (“angeordnet”), it is not unequivocal that the term is used in its narrower meaning in claim 1.

Therefore, claim 1 does not require the heat exchanger to be fixed to the internal combustion engine.

[2.2.3] As the cooling air fan according to claim 1 is an integral part of the internal combustion engine, what is claimed is that there is no further part between the cooling air fan and the air/exhaust gas heat exchanger.

[2.3] Although the heat exchanger 84 of document E1 is not fixed to the internal combustion engine but is fixed to the chassis 12 via the radiator block 24, it is arranged directly on the internal combustion engine within the meaning of claims 1, i.e. there is no further part between the heat exchanger 84 and the cooling air fan 18.

[2.4] Consequently, document E1 discloses all the features of claim 1 and the subject-matter of the claim is not novel within the meaning of A 54(1)(2) EPC 1973.

Should you wish to download the whole decision (T 351/10; in German), just click here.

The file wrapper can be found here.