T 1491/06 – Just Overlapping

Need a reminder on how (most) Boards deal with double patenting? Here we go.

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his (divisional) application.

The ED refused the application on the grounds that the claims filed by the then applicant with the letter of 1 August 2003 were identical to the claims granted in the parent application, which was not allowable since double patenting was prohibited under A 125. The ED further considered that the prohibition of double patenting could also be regarded as a specific case of the general concept of legitimate interest in the proceedings, which itself was a generally recognised principle of procedural law.

The Board found the new main request not to be a case of double patenting:

[3.1] Prohibition of double patenting the subject-matter of the same claims as those of the parent patent was the sole ground for refusing the present application […].

[3.2] In its decisions in cases G 1/05 and G 1/06 handed down on 28 June 2007 the Enlarged Board of Appeal (EBA) held obiter (see point [13.4] of the identical Reasons):

“The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.”

The board in decision T 1391/07 [2.6], referring to the above decisions of the EBA, saw no basis for extending the existing practice to “cover claims not defining the same subject-matter but conferring ... a scope of protection overlapping with each other only partially in the sense that some, but not all of the embodiments notionally encompassed by one of the claims would also be encompassed by the other one of the claims.” The present board agrees with this view.

[3.3] Whether the subject-matter of the single claim (claim 1) of the main request, as amended during the appeal proceedings, is the same as subject-matter claimed in a patent already granted to the appellant is therefore decisive.

The subject-matter claimed in the parent patent

[3.4.1] Claim 1 in the parent patent essentially relates to an apparatus for pre-processing a set of transform coefficients, comprising an accumulator, parity judgement means, parity inverting means to provide a parity-inverted transform coefficient such that the parity of the sum would be odd, and means for providing the transform coefficients as a set of transform coefficients which is error-immune when subject to the inverse orthogonal transform.

Claim 1 according to the main request in the present case relates to a sum-oddifying circuit for processing a block of DCT coefficients comprising an accumulator, a parity judgment circuit and a parity inverter, in order to output a block of sum-oddified DCT coefficients to prevent a mismatch error when the block is inversely orthogonally transformed.

Thus these claims essentially differ in that transform coefficients in general are processed according to claim 1 of the parent patent, whereas DCT coefficients are processed according to claim 1 of the main request on file. The Discrete Cosine Transform (DCT) is a particular instance of an orthogonal transform. As a result, claim 1 according to the main request is at least in this respect distinct from claim 1 of the parent patent.

[3.4.2] DCT coefficients are recited in dependent claim 2 of the parent patent, however with the additional limitation that the parity inverting means (corresponding to the parity inverter (28) in claim 1 according to the main request) is adapted to invert the parity of one of the transform coefficients other than the transform coefficient representing the DC component.

[3.4.3] As a result, the subject-matter of present claim 1 is not the same as the subject-matter of either of claims 1 or 2 in the parent patent.

The subject-matter in other applications by the same appellant

[3.5.1] In the decision under appeal no objection of double patenting was raised with respect to the grand parent application No. 94 907 708.5, which matured into European patent No. 0 638 218. Dependent method claim 2 of this grand parent patent sets out DCT coefficients in a step having in substance the same further limitation as dependent apparatus claim 2 of the parent patent […]. As a result, the subject-matter of present claim 1 is not the same as the subject-matter of claim 2 of the grand parent patent.

[3.5.2] Further European patent applications No. 10 011 642.5 and No. 10 011 843.9 have been filed by the appellant as divisional applications of the present application. However, no patent has been granted so far on the basis of these later-filed applications. Consequently, no issue of double patenting arises in the present case.

[4] In conclusion, the subject-matter of claim 1 of the main request is different from subject-matter of a patent already granted to the appellant. Hence claim 1 overcomes the grounds for refusal and the decision under appeal is to be set aside.

[5] The ED raised other objections during the examination proceedings, for instance lack of novelty and inventive step. These objections were not addressed in the decision under appeal. In view of these objections, of the amendments to claim 1, and of the pending further divisional applications, the board considers it appropriate to grant the appellant's request that the present application be remitted to the ED for further prosecution on the basis of the main request.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: Other interesting decisions on double patenting can be found here and here.

T 2415/09 – Forty-five Days

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

The OD had admitted late filed documents D6 to D8 and found the main request to lack novelty over their disclosures. It considered that the period of six weeks and three days was sufficient for the patent proprietor to file counter-evidence.

The Board did not see things this way:

*** Translation of the French original ***

[3.1] Document D6 and the results of trials reproducing and characterising the catalyser disclosed therein (documents D7 and D8) have been filed by the [opponent] about six weeks before the oral proceedings (OPs) before the OD. The [opponent] has pointed out, based on these documents, that the claimed subject-matter lacked novelty. On the day of the OPs, the European patent has been revoked based on this new evidence. The [patent proprietor] has pointed out that in these circumstances he had not been granted the right to be heard because he had not had the time to respond to the new evidence by carrying out his own counter-evidence trials (contre-essais).

[3.2] According to A 113(1), the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

In this regard, it is not sufficient that a party has had knowledge of the arguments and evidence used against it, but it also must have had the opportunity of responding by preparing an appropriate defence.

[3.3] In the present case, the [patent proprietor] undeniably has been confronted with a new factual situation, comprising a new document and experimental results challenging the novelty of the claimed subject-matter, six weeks before the OPs before the OD. However, the OD, after having admitted this new evidence presented shortly before the OPs into the proceedings, has not given the [patent proprietor] the opportunity of responding in an appropriate way, i.e. as desired by the [patent proprietor], by carrying out trials in order to show that the catalyser disclosed in document D6 did not fulfil the requirements of the claims under consideration.

[3.4] The OD has argued that the six weeks remaining before the OPs were sufficient for carrying out those trials although the [patent proprietor] had pointed out that this was impossible because there was not enough time.

In the present circumstances the Board is unable of making statements on how much time was necessary to carry out comparative trials. However, it notes that as far as periods are concerned, R 132(2), for instance, stipulates that a period specified by the EPO shall be neither less than two months and may be extended upon request. As a rule, the period for responding to substantive questions is set to four months and extended to six months upon request, and requests for longer extensions may be allowed in exceptional circumstances, such as the need to provide experimental trials (see the Notice of the Vice-President of DG2 dated February 28, 1989, OJ 5/1989, 180 and the Guidelines [E-]VIII 1.2 and 1.6).

These time limits, even though they do not apply in the present case (R 116(1)), show that a party cannot be required to file comparative trials within a period that does not exceed six weeks.

Moreover, the [patent proprietor] had explained that he could not carry out the trials in time because, among other things, his research laboratories were closed during the period under consideration. The OD has asserted, without any further justification, that this argument was not relevant. The Board, however, considers this argument to be completely justified because obviously it is impossible to carry out trials when the laboratories where they are to be performed are closed.

As a consequence, it was impossible to carry out the trials between the moment when the [patent proprietor] had had knowledge of documents D6 to D8 and the date of the OPs. Consequently, the Board comes to the conclusion that the OD, when basing its decision on the new documents without allowing the [patent proprietor] to respond by means of counter-evidence which he considered to be necessary, has not granted him the right to be heard, in violation of A 113(1), which amounts to a substantial procedural violation.

[4] The [opponent] points out that the [patent proprietor] had never asked for a postponement of the OPs in order to be able to present counter-evidence.

However, the [patent proprietor] had requested the OD not to admit the late filed documents D6 to D8 into the opposition proceedings because, inter alia, he was unable of carrying out comparative trials and because his right to be heard was violated, which goes beyond postponing the OPs. Therefore, this argument of the [opponent] has to be dismissed.

[5] As a consequence, the impugned decision has to be set aside and the case has to be remitted to the OD for further prosecution (A 111(1)). The reimbursement of the appeal fee is ordered because the appeal is allowed and because the reimbursement is equitable due to the substantial procedural violation, i.e. the violation of the right to be heard (R 103(1)(a)).

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

The file wrapper can be found here.

T 2196/09 – Not In Line

The applicant filed an appeal after the Examining Division (ED) had refused his application.

The following paragraphs are taken from the Board’s discussion of the admissibility of the main request and of auxiliary request 1:

[4] According to the established case law of the Boards of Appeal, the function of appeal proceedings is to give a decision upon the correctness of a separate earlier decision taken by a department of first instance (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1). In line therewith, Article 12(4) RPBA states that it is within the power of the board to hold inadmissible facts, evidence or requests which could have been admitted in the first instance. Although new requests with amended claims may exceptionally be admitted in appeal proceedings, it is not the purpose of the appeal to give the appellant the opportunity to recast its claims as it sees fit and to have all its requests admitted into these proceedings (cf. “Case Law”, VII.E.16.1.2).

[5] As for the main request and auxiliary request 1, the board has the following considerations:

[5.1] The main request dealt with by the ED in the decision under appeal comprised a technical feature characterizing the distal optical tip (“... comprising a tapered portion (305) and a tapered distal tip portion (303) ...”) which was further defined in more detail in auxiliary requests I and II before the ED (“... wherein a substantial step is provided where the tip portion meets the base portion ...”) […]. None of these features are present in the main request and the auxiliary request 1 filed in appeal proceedings […]. The deletion of these features in appeal proceedings does not address, let alone overcome, the objections raised by the ED and reverts the claimed subject-matter to that examined at a much earlier stage of the examination proceedings. Indeed, the claims of the main […], closer to those originally filed than those underlying the decision under appeal.

[5.2] According to the “Minutes of the OPs before the ED”, auxiliary request II was filed at the oral proceedings (OPs) before the ED after the applicant requested, and was granted, a short break. After examining this auxiliary request II and considering it not to meet the requirements of A 123(2), the applicant was asked whether it had further requests, to which it replied that it did not wish to introduce a new request […]. Thus, supplementary time was offered by the ED and not availed by the applicant because it did not consider necessary or, as stated in the Minutes, it did not wish to file further requests. Indeed, in the light of the nature and type of amendments introduced into the main request and the auxiliary request 1 in appeal proceedings, the board considers that it was not a lack of opportunity or of time for the applicant to file such requests at the OPs before the ED but that it had good reasons not to file them at that stage of the examination proceedings since they would certainly not have been admitted into the proceedings by the ED.

[5.3] Thus, neither the main request nor the auxiliary request 1 are in line with the purpose of appeal proceedings as established in the case law. Therefore, in accordance with Article 12(4) RPBA, the board, exercising its discretion, decides not to admit these requests into the appeal proceedings.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: A French summary (and some interesting reader comments) can be found on Laurent’s blog (here).

T 1336/09 – Anonymous Is Alright ...

... at least in ex parte proceedings. In a recent post I have reported T 146/07 where the Board deemed anonymous third party observations not to have been filed. The present decision – taken one day after T 146/07 – comes to a different conclusion.

[2.1] The third party observations […] were filed four working days only before the scheduled oral proceedings (OPs), citing two new documents which were obviously highly relevant against several of the requests then on file.

The appellant though having been informed of the filing of the observations in advance of the OPs neither requested that these be excluded from the procedure, nor that the OPs be postponed. At the start of the OPs, it filed an amended request in which due account had been taken of the new citations.

In these circumstances the board considered that the lateness of the observations should not per se be a bar to their admission into the procedure.

[2.2] In respect of the anonymous character of the observations under A 115, the Board notes that a Decision of the President of the EPO and a Notice from the EPO, both dated 10 May 2011 and concerning the filing of third party observations under A 115 by means of an online form made available on the website of the EPO, have been published in OJ EP0 2011, pages 418 and 420 respectively. The Decision in particular allows for third party observations being filed without signature (see Article 2 of the Decision), the Notice states that “Observations may be filed anonymously”(see the 4th paragraph under point "Formal requirements") .

Indeed, the boards of appeal of the EPO are bound only by the EPC, but the above dispositions in relation to anonymous third party observations are in line with earlier decisions of the boards, which did admit such observations both in ex-parte and in inter partes appeal proceedings, without apparent misgivings in relation to their anonymous character (see T 258/05 [V,3.3] in combination T 735/04 [2]).

Since the observations in the present case have been made under A 115 in an ex parte appeal before a technical board of appeal and are limited to the citation of pieces of prior art and the indication of the correspondences between their content and certain claimed features, which essentially are statements of facts, the present situation is also quite different from that in the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal without further explanations did not take into account an anonymously filed statement made within the frame of the referral of a point of law in relation to the allowability of disclaimers.

The only requirements imposed on third party observations by R 114(1) are that they be filed in writing in an official language of the EPO and state the grounds on which they are based. The written form of the observation and the use of an official language indeed constitute the minimal conditions for allowing them to be communicated to the applicant or proprietor and to be commented upon by the latter, as provided for in R 114(2).

R 50(3) and by analogy R 86, which establish the requirement that documents filed in the examining or opposition procedure be signed, do not in the board’s opinion directly apply to third party observations. As a matter of fact, the reference in R 50(3), in relation to the case of a missing signature, to “the party concerned” indicates that the rule addresses the filing of documents by parties to the procedure, which a person who files third party observations clearly is not, as is expressly stated in A 115 (see the last sentence).

The board is aware of decision T 146/07 [3-6], dated the day before the date of the present decision and made public later, in which the deciding board disregarded third party observations because of their anonymous character, on the basis inter alia of a different appreciation of the relevance to this issue of R 50(3) and of decisions G 1/03 and G 2/03.

Contrary to the present instance, decision T 146/07 concerned an inter partes appeal, and it emphasised that “Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs.”

In ex parte proceedings however the appellant is the sole party and it can at any time raise new issues or submit new prior art - and so can the board of its own motion by virtue of A 114(1). Accordingly the risk of anonymous third party observations providing a cover for procedural abuse can be largely excluded in ex parte proceedings.

For these reasons the board considered that in the present circumstances the anonymous character of the third party observations did not bar them from being admitted into the procedure.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 2020/07 – Official Selection

If the provisional results of the second poll are representative, there are quite a few chemists among the readers of this blog. Perhaps some of them might find the following decision interesting.

The patent proprietor filed an appeal against the decision of the Opposition Division revoking the opposed patent.

In what follows, the Board examined the novelty of the main request, claim 1 of which read (in English translation):

1. A process for the preparation of polyisobutenylphenol-containing Mannich adducts by

(a) alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 at below about 50°C in the presence of an alkylation catalyst;

(b) reaction of the reaction product from a) with formaldehyde, an oligomer or a polymer of formaldehyde and at least one amine which has at least one secondary amino function and no primary amino function, or

(c) reaction of the reaction product from a) with at least one adduct of at least one amine which has at least one secondary or primary amino function and formaldehyde, an oligomer of formaldehyde, a polymer of formaldehyde or a formaldehyde equivalent,

wherein, in step (c), an adduct which is obtained from at least one amine and formaldehyde, an oligomer of formaldehyde, a polymer of formaldehyde or a formaldehyde equivalent by reacting the two reactants for at least 15 minutes at above +15°C is used and wherein this adduct is formed in the absence of the polyisobutenylphenol and only subsequently reacted with the polyisobutenylphenol.

*** Translation of the German original ***

[3.1] Document D1, which is to be taken into account as a prior, post-published European patent publication according to A 54(1), A 54(3) and A 89, discloses - in its claim 1 and under the chapter heading “Summary of the invention” on pages 1 and 2 – a composition comprising a Mannich adduct and an alcohol, as well as a process for producing this composition (claim 29). The Mannich adduct is “derived from” or produced from three components referred to as (A), (B), and (C) in the presence of alcohol, where (A) is a hydroxy containing aromatic compound having one to four hydrocarbyl groups of up to about 400 carbon atoms, (B) is an aldehyde or ketone having the formula R1-(CO)-R2 wherein R1 and R2 independently are H or hydrocarbyl groups having from 1 to about 18 carbon atoms and R2 can also contain carbonyl, and (C) is a mixture of water and an amine containing at least one primary or secondary amino group.

The description of D1 first deals with various embodiments of component (A), leading the reader from benzene or naphthalene nuclei […] having hydrocarbyl substituents (“R1”) and hydrocarbyl groups derived from an olefin to polyisobutene groups having a high content of methylvinylidene groups (e.g. based on “Ultravis 10” or “Ultravis 30” […]). “Ultravis 10” was used in part A of the only example of D1.

[…] Finally a polyisobutene-substituted phenol (PIB phenol) is referred to as preferred embodiment of component (A), wherein the polyisobutene substituent is derived from a polyisobutene (PIB) having a number average molecular weight (MN value) from about 300 to about 5000, or from about 500 to about 2500, respectively, and a minimum methylvinylidene isomer content of about 70%, e.g. about 80%.

Process step (a) of claim 1 of the present main request concerns the “alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 …” Therefore, the PIB phenol produced in process step (a) of present claim 1 corresponds to the preferred embodiment of component (A) in D1.

[3.1.2] The description of component (B) in D1 also leads the reader from a general description of suitable substances, a great number of aldehydes and ketones, to a preferred embodiment. Lines 1 and 2 of page 6 refer to paraformaldehyde and “aqueous solutions of formalin (e. g., about 35 % to about 45 % by weight formalin in water) [as] preferred reactants.” In part B of the example of D1 paraformaldehyde was used.

Claim 1 of the present main request refers to the use of formaldehyde, an oligomer or a polymer of formaldehyde for both process variants. In […] the opposed patent, these terms are explained in more detail: they comprise the terms formalin solution, trioxane and paraformaldehyde. In this case also the used compounds are partially identical with those of D1.

[3.1.3] According to claim 1 of D1, a mixture of water and an amine containing at least one primary or secondary amino group is used as component (C). Starting from line 4 of page 6, the amine component is explained in more detail. Accordingly, it typically contains a certain amount of water (“The weight ratio of amine to water is typically about 50:50 to about 99:1”) and, therefore, has two components. The amine contained therein shall contain at least one group referred to as “> NH”. In a list of suitable amines of different structure […], wherein ethylene diamine is referred to as a “preferred amine” […] the last paragraph of page 6 also mentions amines having a secondary and no primary amino group: dimethylamine, N-methyl-ethylamine, N-methyl- octylamine, and dibutylamine.

Those last-mentioned amines in the list of exemplary amines of D1, therefore, fulfil the requirements of amines according to variant (b) of claim 1 of the present main request: at least one secondary amine group but no primary amino function.

[3.1.4] Claim 1 of document D1 only recites the substances that are initially contained in the reaction mixture (i.e. the components (A), (B), and (C) according to their most general definitions) but does not provide any features of the process for producing the Mannich adduct. Process claim 29 only requires component (A) to be reacted with components (B) and (C) in the presence of alcohol. Dependent claim 33 mentions a range from 40 to 200°C as process temperature. Claim 34 concerns a process wherein the polyisobutene substituent is derived from a polyisobutene having a methylvinylidene isomer content of at least about 70%, paraformaldehyde and a mixture of water and ethylene diamine, and which is carried out in the presence of 2-ethyl hexanol. There is only one place in the description of D1 where the process for producing the claimed compound is explained in more detail – in view of the process features defined in the present claims of the opposed patent – than in these process claims: in the only example on pages 11 and 12 of D1.

[3.1.5] There was agreement between the parties that the first process step (a) according to claim 1 of the present main request did not differ from part A of the example of D1, not even in view of the temperatures used. However, the [patent proprietor] had based its argumentation that in part B of the example of D1, which describes the subsequent Mannich reaction of the PIB phenol of part A, 2-ethyl hexanol and water were present, whereas none of these compounds is added according to claim 1 of the main request.

[3.1.6] In view of this argument [the Board] refers to the different embodiments of variant (i) in the examples IIb, IIe and IIf […] of the opposed patent. For instance, in example IIb, as also explained in general terms in paragraph [0068], an alcohol, i.e. isopropanol, is added. On the other hand, in examples IIa and IIe, a 37% strength formalin solution is used, and in example IIf a “37% strength aqueous solution of formaldehyde” is expressly added to the present components PIB phenol and dimethylamine (“40 ml of 40% strength aqueous solution”). There the reaction mixture, therefore, apparently contains the very components that are described in claim 1 of D1. For the sake of completeness, [the Board] notes that in example 3 of the trial report of the patent proprietor dated July 13, 2007, water and formaldehyde were also added.

Moreover, water is formed during the Mannich reaction, as can be seen from part B of the example of D1 and also the last reaction formula on page 261 of D9.

Considering these findings, the argument of the [patent proprietor] concerning the addition of water or alcohol, respectively, in D1, in order to establish differences that are relevant for the decision on novelty, is not persuasive.

[3.2] The example in D1 and the parts of its general disclosure mentioned above show that the use of PIB phenol having a MN value within the range from 300 to 2500 and a methylvinylidene content close to or above 70 % (i.e. within the definition of the opposed patent) and of formaldehyde in various common embodiments (Einsatzformen), i.e. as (polymer) paraformaldehyde or as aqueous formaldehyde solution, respectively, is also generally preferred in D1. Therefore, there is only one significant difference between this preferred embodiment of D1, the example, and the subject-matter of the opposed patent, i.e. the selection of an amine other than ethylenediamine.

[3.2.1] As already mentioned in paragraph [3.1.3] above, at the beginning of the first group of the amines that are expressly listed in D1 […] four secondary amines are listed as examples for “primary or secondary amines” as closest alternatives following methylamine: dimethylamine, N-methyl-ethylamine, N-methyl-octylamine, and dibutylamine.

[3.2.2] The Board is of the opinion that such a replacement of a component (of a primary amine) by a compound that is disclosed as a simple alternative (a secondary amine) wherein all the other preferred components of the disclosure are maintained, cannot lead to the acknowledgement of novelty.

[3.2.3] As neither the general description nor the example of D1 suggests the replacement of the preferred PIB phenol or of the preferred aldehyde, but the amine used in the example of D1 is not the but just one preferred amine, the present situation is quite close to the one of decision T 332/87 [2.2, 2nd §] :

“This means that, when examining novelty, different passages of one document may be combined provided that there are no reasons which would prevent a skilled person from such a combination. In general the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document.”

The finding of paragraph [3.2.2] above is supported even more strongly by decision T 278/97 [1.1.4.2-3] where a disclaimer that had been introduced in claim 1 of the patent under consideration, which excluded a certain support material (cellulose triacetate) was considered to be insufficient for distinguishing [the claimed subject-matter] over a patent application to be considered under A 54(3) and, therefore, for establishing novelty. The prior application (document D4) contained an example 4, wherein cellulose triacetate was used as support material. This example destroyed the novelty of claim 1 under consideration. In the general description there was an explicit list of possible carriers, and this list also mentioned cellulose triacetate. The Board explained that the document did not give any reasons hindering the skilled person from using such a different support. It rather taught that this different support could be used instead of cellulose triacetate.

[3.3] In view of these facts and findings, the Board has arrived at the conclusion that in the present case claim 1 of the main request (and, therefore, the entire main request) cannot be acknowledged to be novel over D1 (A 54(1) and 54(3)).

NB: This decision has more to offer, as we shall see in a forthcoming post.

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

The file wrapper can be found here.

T 110/07 – One Way Only

Back to basics!

One of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

The Board did not agree with the way in which the OD had validated the priority claim:

[2.1] The patent in suit claims the priority dates of 14 March 1997 (P1) and of 23 July 1997 (P2). The earlier priority document P1 discloses, as a thickness for the sodium ion diffusion barrier layer (SIDB), the ranges of 2 to 50 nm […] and 2 to 18 nm […]. Furthermore, P1 discloses in the examples individual values of SnO2 CVD-deposited SIDB layer thickness of 101 nm, about 100 nm, 434 nm […], and of 50 nm for SnO2 layers obtained by spray pyrolysis […]. Thus, P1 fails to disclose the range in the claim feature “sodium diffusion barrier layer … having a thickness of at least 10 nm” […]. This was not disputed by the respondent. The question is therefore whether a PASC layer thickness of “at least 10 nm” may be derived from P1.

[2.2] Opinion G 2/98 [ 8.4] – to which the OD referred in the contested decision […] – states that

“[t]he requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.”

For the board, neither the claimed lower limit of 10 nm nor the open-ended range of ≥ 10 nm is directly and unambiguously derivable from P1, so that the earlier priority date is not valid.

[2.3] The OD came to a different conclusion, upon applying a “novelty test” based on the concept of overlapping ranges. The board considers the application of this “novelty test” as inappropriate in view of G 2/98 itself, because in the present case there is no overlap, but rather a generalization of ranges. It is true that G 2/98 [8.4] states that “priority claims should not be acknowledged if the selection inventions in question are considered “novel” according to these criteria” (i.e. the criteria applied by the EPO with a view to assessing novelty of selection inventions over the prior art). However, it does not automatically follow from the said statement that priority claims should be acknowledged if the selection inventions in question are considered not “novel”. (In this context, attention is drawn to decisions T 1233/05 [4.4], T 230/07 ([headnote, 4.1.6] and T 1130/09 [3.2] according to which the demonstration of a technical effect over a sub-range is not decisive for acknowledging novelty. A sub-range must be novel per se.)

[2.4] The feature in question relating to the thickness of the SIDB layer is however literally disclosed in P2 […] so that the patent enjoys priority rights of 23 July 1997.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: This appeal was won by fellow blogger Laurent Teyssèdre. Congrats!

T 1488/08 – Salami Cut-Off

The opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

In their written statement setting out the grounds of appeal, the opponents only invoked lack of inventive step under A 100(a). The grounds of lack of novelty and of added subject-matter, which were not substantiated in the statement setting out the grounds of appeal (filed on October 6, 2008), were invoked for the first time with letter of 11 August 2009.

The Board did not admit these grounds:

[2.1] Article 12(2) RPBA stipulates that

“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on”.

This provision provides a cut-off point after which any further submission is ipso facto late and subjected to the discretionary power of the Board. The intended overall effect of this Article is to require the parties to present a complete case at the outset of the proceedings in order to provide the Board with an appeal file containing comprehensive submissions from each party and to prevent procedural tactical abuses.

In the particular circumstance of the present case, the statement of grounds of appeal, after a short introductory paragraph generally referring to earlier submissions made in the first-instance proceedings, contained under the main heading III “Stellungnahme zu der Entscheidung bezüglich der Einspruchsabteilung” only a substantiation in support of lack of inventive step. Specific objections under the grounds of added subject-matter and lack of novelty were not raised.

It is only with the letter dated 11 August 2009 after the reply of the [patent proprietor] that the [opponents], referring to the introductory paragraph of the grounds of appeal, invoked the grounds of extension of subject-matter and lack of novelty.

It is established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. On the sole basis of the statement of grounds of appeal, the Board had no reason to examine the grounds of inadmissible extension of subject-matter and lack of novelty without making investigations of its own.

The new objections are therefore late-filed and their admissibility is a matter of discretion by the Board pursuant to Article 13(1) RPBA.

[2.2] Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The objection of added subject-matter addressed in the letter dated 11 August 2009 was concerned with the feature of claim 1 “when the seat back is moved to the reclined position, a top edge of the seat back is caused to be moved in a rearward direction” […]. The submission of the [opponents] in this respect focussed on the OD’s assertion in the decision under appeal , according to which the application as originally filed discloses that “the backseat [i.e. seat back] describes the trajectory of an arch”. However, claim 1 is not concerned with the trajectory of the seat back and therefore the [opponents’] objection appears to be misconceived.

This also applies to the further objection under A 100(c) EPC 1973 raised with the letter dated 11 August 2009, which objection was not raised during opposition proceedings, contesting the change of the claimed subject-matter from “a privacy and support apparatus” to “an airplane”. Indeed an airplane is undoubtedly disclosed in the application as filed. As regards the objection of lack of novelty over D2, it was based on an interpretation of claim 1 justified by the alleged added subject-matter (i.e. due to the added subject-matter, claim 1 would cover objects which were not disclosed in the application as filed, and such objects were known from D2). The objection of added subject-matter being unfounded, on a prima facie basis, the same applies to the objection of lack of novelty.

The Board therefore exercised its discretion not to admit the late filed grounds of added subject-matter and lack of novelty for reasons of procedural economy.

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T 689/11 – Overstretched

This decision deals with the refusal of an application claiming an interface between a packaging machine and a data storage storing a plurality of packaging specifications, for selecting at least one of them.

According to the Examining Division (ED), the claimed interface aimed at implementing a business scheme and amounted to no more than a notorious general purpose networked computer system linked to a generic packaging machine as a commonplace peripheral thereof. The description did not mention any technical detail but dealt with a scheme for doing business. Therefore, no prior art search had been carried out at any stage of the application.

Here is what the Board had to say:

Additional search

[2.1] The application was refused for lack of inventive step without a search having been performed. As set out in decision T 1242/04, an ED may raise an objection of lack of inventive step without documented prior art. That should be allowable where the objection is based on “notorious knowledge” or indisputable common general knowledge. Such cases, however are exceptional, and a search is otherwise essential.

[2.2] The Board concurs with the ED in considering a networked general-purpose computer as part of notorious knowledge. However, the Board judges that the ED overstretched the concept of a notorious networked general-purpose computer by alleging that a packaging machine constituted a commonplace peripheral of such a computer so that the notoriety of the computer system propagated to the packaging machine. Even though the application refers to packaging machines only in a generic way, the Board does not regard packaging machines as notorious components. A packaging machine is a technical device which is not a usual computer peripheral, such as a printer, keyboard, data storage, display, I/O modem or the like.

[2.3] An ED should not normally refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature which is not notorious (T 690/06). Therefore, it would have been necessary for the ED in this case to carry out a search into the documented prior art pertaining to packaging machines controlled by (networked) computers, and to take the result of that search into account during the examination of the application.

Request for reimbursement of the appeal fee

[3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

Thus, the appeal fee can only be reimbursed if a procedural violation has occurred. An error of judgement on substantive issues by the ED does not constitute a procedural violation (T 690/06 [12]).

[3.1] In the present case, the ED’s reasoning that a generic packaging machine might be considered as a notorious peripheral of a networked general-purpose computer constitutes an error of judgement on a substantive issue rather than an incorrect conduct of the procedure.

Therefore, the ED’s decision not to carry out a search into the prior art of the present application is not considered as a procedural violation.

3.2 Furthermore, and in contradistinction to case T 1287/04 [4.4-5], the reasoning in the refused decision is sufficient, i.e. existent in a form that can be examined by the Board and the appellant. Although prima facie containing no non-technical feature, claim 1 read in the light of the description, i.e. in the light of the objectives and advantages emphasised by the applicant itself […], can be seen to relate to an interface embedded in a commercial context. Therefore, again it was a matter of judgement for the examining division whether or not to base their reasoning on the case law developed for assessing mixtures of technical and non-technical features, e.g. T 641/00, as it is reflected in the Guidelines for Examination.

[3.3] In conclusion, the Board does not identify a substantial procedural violation and, thus, cannot order a reimbursement of the appeal fee.

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T 1827/07 – A Late Swiss

In this case claims 1 to 4 related to hydrophilic sulphonamide derivatives, claim 5 to their use as a medicament, claim 6 to their use for the preparation of a medicament against certain diseases, claim 7 to pharmaceutical compositions containing these compounds, and claims 8 and 9 to processes for making the compounds.

The Board found the claims to involve an inventive step. It then examined the allowability of the use claim 6:

[6] Claim 6 is directed to the “Use of a sulfonamide derivative according to any of claims 1-4 for the preparation of a medicament for the treatment of a neuronal disorder selected from ...”. Thus it is in the form of a “Swiss-type claim”.

The Enlarged Board of Appeal has decided that a claim of this type may no longer be used “Where the subject-matter of a claim is rendered novel only by a new therapeutic use ...” (see G 02/08 [7; headnote 3]).

This decision applies only to patent applications having a filing date or earliest priority date of 29 January 2011 or later (see G 02/08 [7.1.4], in combination with the "Notice from the European Patent Office dated 20 September 2010 concerning the non-acceptance of Swiss-type claims...", OJ EPO 10/2010, 514, point 4).

The present application is not affected by this ruling in G 02/08, as it has a priority date of 27 September 2000.

Hence, Swiss-type claim 6 may remain in the present set of claims.

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T 1610/08 – Honeymoon Killers

The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the patent under consideration.

By communication of 20 June 2011, the Board summoned the parties to oral proceedings (OPs) scheduled for 21 September 2011 and forwarded its provisional opinion to them.

The opponent’s representative requested, by letters dated 28 June 2011 and 18 July 2011, that the OPs be postponed because he had firmly booked a honeymoon holiday that could not be rescheduled due to the wedding. The representative also pointed out that the patent proprietor’s representative supported the request and offered some arguments why he could not be replaced by a colleague:

The Board refused to postpone the OPs, for the following reasons:

[3] The respondent’s request for postponement of the OPs was considered in the light of the Rules of Procedure of the Boards of Appeal (RPBA) and the Notice of the Vice-President of Directorate-General 3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special Edition No. 3, 115), referred to as the “Notice” hereinafter.

According to Article 15(2) RPBA, the Board has a discretion to allow exceptionally a change of date for OPs. In exercising its discretion, the Board has to take into account the internal organisational burden of the Board and the guidelines given to the public in the Notice.

The Notice (point 2.1) lists holidays which have been firmly booked before the summons as a potential serious reason for a representative to request a change of date for OPs.

Point 2.1 of the Notice has to be balanced against point 2.3 of the Notice, according to which every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute for the representative prevented from attending the OPs. Point 2.3 of the Notice thus makes it clear that substitution of a representative is a possible alternative to postponement.

The Board is of the opinion that the circumstances indicated by the respondent with respect to point 2.3 are in fact common to all cases in which substitution is involved. When a party is represented it is a normal situation that the party trusts its representative. The same is true for the point that substitution is likely to cause additional costs to the party. The new representative normally has to prepare the case he takes over and normally has to be paid for his work. Also the fact that the experience acquired during the preceding opposition proceedings is unique is the usual situation when a new representative must take over the representation during an appeal in an inter partes case.

If point 2.3 of the Notice was to be interpreted to mean that the reasons mentioned by the respondent would fulfil the criteria for excluding the possibility of a substitution, then the provision could never be applied and would be devoid of any meaning. This cannot reasonably be considered to have been the intention of the drafter.

In the Board’s view, only extraordinary circumstances, i.e. those which are not common to every case of substitution, should be accepted.

In general, a party can trust other representatives. The respondent’s letter of 14 July 2011 shows that this is also the case in the present proceedings. It was not submitted that it was impossible for other representatives to do the necessary preparation. Further, the present case does not imply special technical difficulties which might prevent the substitution of one representative having a background in the field of medical technology by another one of the numerous representatives of similar background from the same association of representatives. Nor have any particular technical, factual or legal circumstances been asserted which might warrant a different finding.

As far as costs are concerned, it is the decision of the representative in charge of the case whether he will pay the substitute himself or charge the costs to his client. In any case, this is not a relevant factor for the proceedings before the EPO because it does not affect the feasibility of the substitution per se. It simply means that additional costs might arise but does not imply that the party or the representative cannot afford these additional costs.

While experience of foregoing opposition proceedings can be useful, it is not necessary in order to represent a party competently before the board of appeal. No reasons have been submitted that make this case different.

The Board has taken into account the fact that the appellant had indicated that it would also be convenient to him for the OPs to be rescheduled (even though he did not file a request in this respect). However, this is only one aspect among others, as indicated above, and cannot not outweigh the constraints of the internal organisational burden for the Board.

For the above reasons, the Board considers that the submitted reasons do not amount to extraordinary circumstances that are not common to all cases of substitution. A party’s general desire to be represented by a specific member of an association of representatives is not considered sufficient ground for changing the date for OPs. Otherwise the provision according to point 2.3 of the Notice would have hardly any significance in practice.

The Board therefore refused the respondent’s request for postponement of the OPs.

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T 1421/08 – Technicality

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his application.

The ED had come to the conclusion that the requests lacked an inventive step over the documents

D1, D2 and the Unix utility “cat” as part of the common know ledge in the art.

Claim 1 on file before the Board read:

An apparatus for regenerating runtime objects, the apparatus comprising:

a processor (210); and

a memory (240), coupled to the processor, storing instructions adapted to be executed by the processor to:

retrieve (100) object model data (1500) defining framework-specific relationships between object types of a computer application framework;

access (110) a generic object navigation grammar file;

incorporate (120) the object model data into the generic object navigation grammar file to produce a framework specific object navigation grammar file;

provide the framework specific object navigation grammar file to a parser generator arranged to generate a rule parser (1510);

parse (1610) one or more invalidation rules by utilizing the generated rule parser (1510) to check the one or more invalidation rules for syntactic correctness, the or each invalidation rule identifying relationships between development objects and runtime objects;

generate a respective rule object for the or each syntactically correct invalidation rule;

execute the or each rule object to invalidate one or more run time [sic] objects which are to be regenerated in response to changes made to one or more development objects; and

regenerate the invalidated run time objects.

In what follows, the Board discussed the technicality of the claimed subject-matter:

[4] According to established jurisprudence of the boards of appeal the claims – directed towards apparatus and computer-implemented methods, respectively – define inventions within the meaning of A 52 (see G 3/08 [10.7]). This is not under dispute.

[5] The central point at stake however is which technical effects can be attributed to the claimed matter and which technical contribution the claimed matter makes over the prior art.

[5.1] The primary purpose of the claims according to the main request, witness the preamble and the last feature of both independent claims, is the regeneration of runtime objects in response to changes made to development objects. This is part of what is conventionally called the “build process” of a software application.

[5.2] The feature claiming regeneration of runtime objects determines the nature of the claimed invention and is, therefore, central for the assessment of patentability. The board notes that this feature was not contained in the claims subject to the appealed decision but added to the claims filed with the grounds of appeal.

[5.3] Determining which runtime objects need to be regenerated in an individual case in view of regenerating only those rather than all of them contributes to limiting the resources needed for a particular build. The board con siders this as a technical effect. Therefore, according to established jurisprudence of the boards of appeal, the features contributing to this effect must be taken into account for the assessment of inventive step (see T 641/00 [headnote 1]).

[5.4] According to the claims, the grammar relates to how the syntax of invalidation rules is defined, the parser generator to how the syntactic correctness of the invalidation rules so defined is verified, and the object rules to how the syntactically correct invalidation rules are used so as to identify invalidated runtime objects. These features do not have an immediate impact on the increased efficiency of the build process if and insofar as the invalidation rules and the runtime objects to be regenerated remain unchanged.

[5.5] Further, the board cannot agree with the appellant that “the way in which the invalidation rules are parsed” or “in which the parser is generated” must “take into account the nature of the relationships between the development and runtime objects”, or “the nature” or “the purpose of the invalidation rules” […]. According to conventional understanding in the art, the parsing does not depend on the nature of these relationships but only on the way they are represented within the grammar, for instance in that the form of a grammar has an impact on whether it can be processed by a particular kind of parser or within specific time or space constraints.

[5.6] However the board considers that the utilisation of a grammar, a parser generator and rule objects enables the software developer to exercise control over the build process and over the extent to and the ease with which the relevant effect is actually achieved.

[5.7] The board is of the opinion that within a claimed invention having a primary technical effect, features enabling and supporting control of that effect will typically have technical character as well. In consequence, the board concludes that the fact that a grammar, a parser generator and rule objects are used within the context of regenerating runtime objects contributes to the technical character of independent claims of 1 and 9 of the main request and therefore may also contribute to inventive step.

The case was finally remitted to the ED for further prosecution.

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T 1864/09 – One Or The Other

This decision also contains an interesting statement on remittals pursuant to A 111(1).

Having found both requests on file to lack inventive step, the Board had to deal with the request to remit the case to the Examining Division (ED) .

*** Translation of the German original ***

[6] The request for remittal pursuant to A 111(1) could not be granted, for the following reasons.

[6.1] This request, which had already been filed during the written proceedings (written submission of July 17, 2009) and in view of which the Board, in the annex to the summons dated January 12, 2010, pointed out that “it will have to be discussed whether the case may have to be remitted to the ED” […] at first was not pursued in the oral proceedings (OPs). A request for remittal was again made at the end of the OPs, at a time when the substantive examination had already been terminated. During this substantive examination, in which [the Board] acted as if it was the ED pursuant to A 111(1), second sentence, first half sentence, the subject-matter of claim 1 according to the main request, which had been amended following its discussion during the OPs, was extensively examined as to its compliance with the requirements of A 56 and A 84 (inventive step and clarity) ; the same holds true for claim 1 according to the auxiliary request.

[6.2] The request for remittal, according to the second way in which a Board of appeal may proceed, which is mentioned in A 111(1), second sentence, second half sentence, therefore, has been made at a time when the examination according to the first option of this article had already been terminated.

[6.3] As a consequence, the request for remittal could not succeed, on procedural grounds alone, because the EPC does not establish the right to have a Board act along both options mentioned in A 111(1) during examination appeal proceedings.

[6.4] Nor could the request succeed on factual grounds. It is true indeed, as argued by the appellant, that the impugned decision has been based on lack of clarity and lack of novelty only and that the amendment of the claims has restored novelty. However, […] in view of the claims to be examined, the factual situation is not completely new with respect to the factual situation underlying the impugned decision.

The same holds true for the prior art to be taken into account for the examination of inventive step. Besides document D1/D2, which has already been taken into account for the examination of novelty in the examining proceedings, only document D4, which had been referred to as closest prior art in the present application and which had the same applicant as the present application, has been taken into account.

Therefore, contrary to the appellant’s opinion, no new aspects which would justify a remittal have arisen during the appeal proceedings.

[6.5] Finally, it has to be noted, for the sake of completeness, that the appellant already had the opportunity to carry out the amendment within the framework of the examination of novelty and clarity before the ED, at least as an auxiliary request, as he has done during the appeal proceedings.

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T 1864/09 – Irrelevant Alternatives

When trying to establish the existence of an inventive step, attorneys sometimes argue that the skilled person would not have done this or that because there was a well-known path he would rather have chosen when trying to solve the problem under consideration. Depending on the concrete circumstances, there may be some truth to this, but the present decision shows that the argument will not always work.

If you hate mechanics, you better not read on.

The applicant filed an appeal against the decision of the Examining Division to refuse his application.

Claim 1 of the main request before the Board read (in English translation):

Power tool (1) having a drive motor (2) and a flange (3) connected to it so that it can be driven, wherein a disk (5), in particular a grinding disk (Frässcheibe) or a separating disk (Trennscheibe), which can be attached so that it is hindered from rotating (drehfest anbringbar) and to which at least one transmission body (11) projecting from the flange (3) is moulded, characterised in that the outer contour of the transmission body (11) has an oval or ellipsoid shape and, when the disk (5) is mounted on the flange (3), [said outer contour] is curved in the direction of the circumference of the disk, in that the transmission body (11) is inclined with respect to the direction of the circumference of the disk (5), in that the disk (5) comprises at least one recess (12) having an oval or ellipsoid shape, wherein the recess is inclined towards the direction of rotation (8) of the disk (5) and curved and has an inner contour that matches the outer contour of the transmission body (11), in that the position of the transmission body (11) matches the corresponding position of the recess (12), in that, when the disk (5) is mounted, the transmission body (11) of the flange (3) is supported in a tight-fit fashion (formschlüssig) by the inner contour of the recess (12) of the disk (5), in that the disk (5) comprises a through bore (9) that is tapered conically towards the drive motor and into which a bolt (7) can be inserted, and in that the bolt (7) can be screwed into a threaded hole (6) provided in the flange (3), such that the head of the bolt (7) is positioned in the conically tapered through bore (9) of the disk (5) and the free ends of the transmission bodies (11) and of the bolt (7) extend through the planes defined by the disk (5).

The Board found claim 1 to differ from prior art document D4 by five distinguishing features:

(a) the outer contour of the transmission body has an oval or ellipsoid shape;

(b) when the disk is mounted on the flange, the outer contour is curved in the direction of the circumference of the disk;

(c) the transmission body is inclined with respect to the direction of the circumference of the disk;

(d) the disk comprises at least one recess having an oval or ellipsoid shape that is inclined towards the direction of rotation of the disk and curved; and

(e) the bolt can be screwed into a threaded hole provided in the flange.

The following paragraphs are taken from the Board’s discussion of the inventive step of this claim.

*** Translation of the German original ***

Effect of the distinguishing features

[4.3.1] According to the understanding of the appellant, which the Board considers to be correct and supported by the description of the application under consideration, the features (a) to (d) have the effect that the disk can be positioned precisely on the flange […].

As far as the at least one transmission body of the flange is concerned, the features (a) and (b) define its shape (in a sectional plane) and feature (c) defines its arrangement.

Feature (d) defines the corresponding [properties] of the at least one recess of the disk.

As regards the understanding of features (a) to (c) the Board – in favour of the appellant – bases its reasoning on the understanding that the outer contour of the transmission body at first has the basic shape of an oval or an ellipse (feature (a)) and that it is subsequently shaped in such a way that the transmission body is (over at least part of its length) curved in the direction of the circumference (feature (b)) and that the transmission body is arranged in such a way that it is inclined with respect to the direction of the circumference (feature (c)).

The same holds true for the shape and the arrangement of the recess in the disk.

As a consequence of this shape and arrangement of the at least one transmission body and the corresponding recess an interaction between the transmission body (or several transmission bodies) and the corresponding recess(es) is possible only if the disk is fit to the flange when the correct side of the disk faces the flange.

[4.3.2] Distinguishing feature (e) corresponds to an embodiment that differs – from a constructive point of view – from a power tool according to D4 by the way in which the bolt is screwed into the tool. Feature (e) was not discussed during the oral proceedings. It does not have any influence on the effect of the distinguishing features (a) to (d) and, when combined with the other features of claim 1, apparently does not give rise to any effect that has to be taken into account when inventive step is assessed.

The problem

[4.4] Considering the power tool according to the closest prior art D4 and taking into account the above mentioned effect of the distinguishing features (a) to (d), the problem to be solved corresponds to the first partial problem […], i.e. to adapt the known power tool such that the disk can be positioned precisely on a predetermined position of the flange.

The first partial problem is solved by a power tool having an appropriate shape of the flange, comprising at least one transmission body and the corresponding shape of the disk, comprising at least one recess, according to claim 1.

Obviousness

[4.5] When, depending on the way and the application in which the power tool according to D4 is used, [the skilled person] is confronted with the problem of positioning a disk precisely on a predetermined position of the flange, or in other words, of avoiding that the disk can be positioned on the flange in a position that is different from the precisely predetermined position, then it would be obvious to solve the first partial problem by arranging the known elements by which the disk is positioned on the flange, i.e. the pins, which have a circular cross-section and which are arranged symmetrically with respect to the centre of the flange, as well as the corresponding recesses, in an asymmetrical manner, so that the disk can be fit to the flange only from one particular side.

[4.5.1] In this context the Board agrees with the opinion of the appellant according to which there was a simple way of solving the partial problem in a way that differed from claim 1 and which allowed to keep the circular cross-section. If, as in D4 (Fig. 1), there were two pins, it was sufficient to asymmetrically arrange the two pins of the flange and the two recesses on the corresponding disk rather than having a symmetrical arrangement (in the circumferential direction) as in D4.

[4.5.2] However, the Board cannot endorse the further argumentation of the appellant, according to which, considering said obvious solution to the first partial problem, the different solution according to claim 1 cannot be considered to be obvious.

The Board is of the opinion that the present circumstance that, when starting from the power tool according to D4, there is another, obvious solution, which is different from the solution according to claim 1, cannot as such automatically lead to the conclusion that a further solution, such as the one of claim 1, is to be held non obvious.

[4.5.3] In the Board’s view, as far as the solution to the first partial problem according to claim 1 is concerned, and irrespective of any further obvious solutions, it rather has to be examined to which extent the solution according to claim 1 as such can be considered to involve an inventive step when starting from the closest prior art D4 and taking into account the remaining prior art, here D1/D2.

Prior art document D1/D2 discloses a power tool comprising a disk that can be fitted onto a flange, which is comparable in view of the allocation of a disk to a flange, and, therefore, in view of the first partial problem to be solved (cf. […] D1, figures 2 and 6).

When starting from the power tool according to D4, the skilled person would consider document D1/D2 because this document also aims at solving a problem that corresponds to the first partial problem. According to D1/D2, each transmission body and, accordingly, each recess that is associated with it, is arranged asymmetrically on the flange […]. According to an embodiment of D1/D2, one transmission body has a triangular shape and another has a U-shape, and the recesses in the disk have a corresponding shape […]. The transmission body and the recess, therefore, lead to an asymmetric configuration only because of their shape and arrangement – there is no need for an inclined arrangement of the triangular transmission body and the recess according to feature (c) […]. The effect is that the disk can be fit to the flange only from one particular side.

The Board is of the opinion that, starting from the power tool according to D4 and considering the way in which D1/D2 has solved the first partial problem, it is to be considered obvious to arrange the transmission bodies having a circular cross section according to D4, in an asymmetrical manner, by changing their cross sectional shape, taking into account the approach according to D1/D2.

It also has to be taken into account – as explained by the Board during the oral proceedings – that the features (a) to (c) of claim 1 concerning the shape and arrangement of the transmission body contribute to the solution to the first partial problem only to the extent that they lead to an asymmetrical arrangement of the transmission body on the flange. The same holds true for the disk, in view of feature (d). The shape or the arrangement of the transmission body (or the recess, respectively) does not contribute to the solution of the first partial problem beyond that point.

In this regard, the shape and the arrangement of the transmission body (and, in analogous manner, of the recess), such as, for instance, a kidney-shaped design, which features (a), (b) and (d) aim at, according to the appellant, are irrelevant and, therefore, arbitrary, if only the asymmetrical arrangement is maintained.

[4.5.4] As a consequence, the features (a), (b) and (d), which are directed to specific – not necessarily asymmetric – cross sectional shapes of the transmission body and the recess, cannot, neither alone nor in combination with the remaining features of claim 1, lead to subject-matter that involves an inventive step, because, as already explained, the cross-sectional shapes defined by those features cannot be ascribed any further effect beyond their asymmetrical arrangement according to feature (c) in view of the first partial problem to be solved.

[4.5.5] For the sake of completeness, it has to be noted in this context that, starting from the circular cross section of the transmission bodies according to D4, and taking into account the triangular cross section according to D1/D2, the transformation of the known spherical cross section into an oval one appears to be obvious.

As a consequence, the whole power tool according to claim 1 does not involve an inventive step within the meaning of A 56 over the closest prior art D4 of the further prior art according to D1/D2 is taken into account for solving the first partial problem.

[4.6] The above result also holds true if the further arguments of the appellant are taken into account.

[4.6.1] The further main argument of the appellant is based on a further effect of the features (a) and (d) within the combination of features of claim 1, which goes beyond the solution of the first partial problem and solves the second partial problem concerning the connection for operating the drive (triebliche Wirkverbindung) […]. According to this second problem of the present application […] an appropriate (gattungsgemäß) power tool is to be developed in such a way that the connection for operating the drive is both reliable and permanently available.

[4.6.2] The appellant is of the opinion that this problem is solved because, as explained in the description […] the transmission bodies fit without clearance to the recesses where the force is transmitted, which results in the torque of the flange being optimally transmitted without there being any abrupt stresses or peak values of shear forces resulting therefrom.

Moreover, as also stated in the description […] the available surface on which the torques act, is considerably increased by the inclined arrangement of the transmission bodies and recesses according to features (b), (c) and (d).

[4.6.3] Neither D4 nor D1/D2 contained any suggestion to shape and arrange the at least one transmission body and the corresponding recess according to features (a) to (d) in such a way that the power transmission via the at least one transmission body and the corresponding recess was also improved in view of solving the second partial problem. Document D4 only disclosed in this respect that two shear pins extending through corresponding through holes in the grinding disk were provided for the power transmission […]. As explained in the present application, the diameter of each recess was to be greater than the diameter of the corresponding pin in order to correct any manufacturing inaccuracies. In particular when the power tool was switched on and off, there would be strokes because the clearances resulting therefrom had to be overcome, and these strokes would lead to increased shear forces […] and could result in increased wear

[4.6.4] Moreover, the shape and arrangement of the at least one transmission body and the corresponding recess according to features (a) to (d) would greatly increase the available surface on which the torques could act […] so that the surface pressure between the transmission body and the recess was advantageously reduced.

[4.6.5] As regards the interaction between the transmission bodies and the recesses, D1/D2 only taught that the disk could be positioned precisely on a predetermined position of the flange thanks to an appropriate design and arrangement of these elements. According to this document, a further flange was provided between the flange and the disk for the power transmission (see figure 1 of D2 […]; there was no statement in D1/D2 on any interaction between the transmission body and the recesses in view of the power transmission.

[4.6.6] As a consequence, a combination of documents D4 and D1/D2 would not have led to the design and arrangement of the at least one transmission body and the corresponding recess according to features (a) to (d) in view of improving the co-operation of these elements to the transmission of power from the driven flange to the disk.

[4.7] Regarding this line of argument directed at the solution of a second partial problem, the Board is of the opinion that, as far as the assessment of inventive step is concerned, it may remain unanswered to which extent the power tool according to claim 1 may be considered obvious over the present prior art as solution to the second problem, when, as explained above […] the whole claimed power tool does not involve an inventive step as solution to the first problem over the present prior art.

[4.7.1] Moreover, the Board is of the opinion that, taking into account the corresponding arguments of the appellant, the power tool of claim 1 is to be considered obvious with respect to documents D4 and D1/D2 even if, as argued by the appellant, the second partial problem is taken into account.

First of all, as regards the power tool defined in claim 1, it is questionable to which extent the mentioned effects (absence of clearance, increased surface for power transmission) can be derived from the combination of claim 1 with the features (a) to (d). As far as the allocation of the transmission bodies to the recesses without any clearance is concerned, claim 1 – as explained by the Board during the oral proceedings – does not contain any explicit indication. The same holds true for the greatly increased surface that is said to be available for the transmission of power, because claim 1 does not contain any definition regarding the dimension of the cross sectional areas of the transmission bodies and the recesses, respectively, nor does it define the extent of the inclined positioning of those elements.

[4.7.2] But even if it is considered, in favour of the appellant, that these effects are indeed obtained as a consequence of the combination of features of claim 1, the line of arguments based thereon is not persuasive.

The Board is of the opinion that it may indeed remain unanswered to which extent document D1/D2 teaches that, as contested by the appellant, the transmission bodies and recesses of the embodiment according to figures 6(a) and 6(b) (in connection with figure 2) of D1 contribute to the power transmission from the driven flange to the disk.

[4.7.3] As a matter of fact, in view of the contribution of the at least one transmission body and the corresponding recess, it has to be taken into account that in the power tool according to D4, these elements already co-operate in the way in which they were said to co-operate in the argumentation of the appellant in view of the power tool according to claim 1. In this respect, D4 explains that “for the transmission of power, two shear pins are provided on the driving shaft 5 and extend through corresponding through holes in the grinding disk 4” […].

One has to consider that the skilled person, when designing the transmission bodies and the recesses asymmetrically, according to D4 taking into account the approach according to D1/D2 […], would not modify the power transmission via those elements, not only because of the explicit reference to this way of transmitting power in D4, but only because in the power tool according to D4, according to the approach of claim 1 […] the disk is held on its side that is opposite to the drive motor only by means of a fixing screw (see D4, figure 1). Therefore, a power tool according to the closest prior art, similar to a power tool according to the present application (figure 1) and contrary to the one of D1/D2 (cf. figure 2) does not have a second flange which could also serve for power transmission.

[4.7.4] For the sake of completeness, it should be noted that the skilled person further developing the closest prior art in order to solve a technical problem, here the first partial problem, has no reason to carry out modifications that do not contribute to the solution of the problem, in the present case by modifying the shape of the at least one transmission body and the corresponding recess. This is particularly true when, as in the present case, the modification would considerably change the construction of the power tool because it would modify the constructive elements serving the power transmission.

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