T 1835/08 – Is Everything Clear?

The question to which extent claims that are based on the claims as granted can be objected to in opposition proceedings for being unclear is a delicate one and, as far as I can see, there is some disagreement between the Boards on this matter.

The present decision shows us how to deal with a borderline case.

Claim 1 of the sole request before the Board was based on claims 1, 2, 5, and 8 as granted and read (in English translation; amendments with respect to the granted claims are marked):

1. Towing hitch for towing vehicles (2), comprising a tow-bar (8) which is mounted pivotably about at least one rotatory axis (16,18) and is movable by a mechanical drive (13) between an extended operating position (47) and a retracted inoperative position (48) on the towing vehicle (2), the towing hitch (1) having an automatic locking device (56) which can be actuated by the mechanical drive (13), characterized in thatwherein the locking device (56) has a transmission device (57) for converting the rotating driving movement into a translatory locking movement for the actuation of form-fitting locking elements (58,59) which act on the tow-bar (8),

2. Towing hitch according to Claim 1, characterized in that the transmission device (57) has a wheel (68) which is connected to the mechanical drive (13) and has at least one slotted guide mechanism (71, 80), which wheel displaces the locking elements (58, 59) at the end of the movement of the tow-bar and brings them into blocking engagement with the tow-bar (8)

5. Towing hitch according to one of the preceding claims, characterized in thatwherein the locking elements (58, 59) are designed as toothed strips (60, 61) or as blocking balls (62,63,64,78) with ball receptacles (65, 7876, 79) and ball guides

8. Towing hitch according to one of the preceding claims, characterized in thatwherein one or a plurality of ball receptacles (65) for the locking elements (58) are arranged at the tow-bar end (11).  

*** Translation of the German original ***

[3.1] Claim 1 of the sole request on file is based on a combination of granted claims 1, 2, 5, and 8, wherein the embodiment of the locking element as toothed strips according to claim 5 was deleted, as well as the variant wherein there is only one ball receptacle at the tow-bar end, as claimed in claim 8. Moreover, it was specified that the receptacles at the tow-bar end are ball receptacles, the reference to the locking elements defined in the preamble of claim 1 was established by using of the definite article “the” and reference numbers were corrected.

[3.2] A 100 EPC 1973 provides an exhaustive list of the grounds for opposition. According to the established case law, it is not possible to invoke further reasons (that would have led to a refusal of the application during the examination proceedings) against the patent as granted during opposition proceedings. Therefore, the objection of lack of clarity is not a ground for opposition and cannot, as a consequence, be invoked against the claims of the patent as granted (see, for instance, decision T 23/86, which has been confirmed in a great number of decisions of the Boards of appeal).

[3.3] However, if the patent proprietor amends the claims with respect to the claims as granted and requests the maintenance of the patent in amended form, the Opposition Division - and, in opposition appeal proceedings, the Board of appeal - is competent and entitled, pursuant to A 103(3)(a) (which corresponds to A 102(3) EPC 1973), to fully examine these amendments as to their compatibility with the requirements of the EPC (G 9/91 [19]). When doing so, they can – according to the established case law – also examine grant requirements that are not grounds for opposition. Therefore, amendments of the patent can be examined in view of the requirements of A 84 EPC 1973.

[3.4] The structure of the claims as granted of the present patent requires claim 2 to directly depend on claim 1, whereas claims 5 and 8 may depend directly on claim 1 but also on claim 2 or – as far as claim 8 is concerned – from claim 5.

If the amendment consisted in a mere combination of the claimed features as granted in the above mentioned order, then it would only have the effect of bringing together the wording of the granted claims under consideration, even if one of the two variants claimed in claim 5 and 8 was deleted. According to the established case law (see T 381/02 [2.3.7] and T 1855/07 [2.2-4]), such a combination cannot be considered to be a substantive amendment (sachliche Änderung) that would allow for an objection of lack of clarity pursuant to A 84 EPC 1973 for combinations of granted claims. Decisions T 1459/05 and T 656/07, which have been referred to by [opponent 2] during the written proceedings, deal with particular exceptional situations which do not apply in the present case.

However, in the present case, there have been amendments with respect to the claims as granted, such as the insertion of the definite article “the” before “locking elements” and the use of the expression “ball receptacles” instead of “receptacles”, which amendments have to be fully examined as to their compatibility with the requirements of the EPC (such as A 84 EPC 1973).

The insertion of the definite article “which wheel displaces the locking elements at the end of the movement of the tow-bar” has the meaning that, in comparison with the corresponding feature without the definite article in claim 2 as granted, the form-fitting locking elements according to claim 1 as granted, which are actuated by a translatory locking movement and which act on the tow-bar, are limited to the embodiment defined in claim 2 as granted (i.e. locking elements that are displaced at the end of the movement of the tow-bar and brought into blocking engagement with the tow-bar, as shown in the embodiments comprising blocking balls).

As a consequence, it is now clear which locking elements are meant, whereas the embodiment according to claim 2 as granted (without the definite article “the”) does not specify whether it is only the form-fitting locking elements defined in claim 1 as granted that are displaced or whether this refers to different locking elements: it is the locking elements defined in preamble of claim 1 that are displaced.

The definition of “ball receptacles” (instead of “receptacles”) for the locking elements at the tow-bar end results in a limitation to the embodiment presented as the preferred embodiment in the impugned patent, which comprises locking elements having the shape of blocking balls (see impugned patent, column 10, lines 12 to 13: “At the tow-bar end (11) there are one or several recessed receptacles, preferably ball receptacles (65).”

Therefore, said amendments only result in a limitation of the claimed subject-matter according to claim 1 of the present request with respect to the claims as granted and comply with the requirements of A 84 EPC 1973.

To download the whole decision (in German), click here.

The file wrapper can be found here.