Claim 1 of the patent as maintained by the Examining Division read (in English translation; the amendments with respect to the claim as granted are underlined):
Method for manufacturing a clutch cage of a double clutch (1), characterized by the following method steps:
- rolling a toothing system (20) into a sheet metal strip (21 ) by means of two rolls (28,29) arranged on both sides of the sheet metal strip (21), wherein the two rolls (28, 29) have an outer contour (Aussenkonturierung) generating the toothing system (20);
- separating a toothed strip (22) from the rolled sheet metal strip (21 );
- rolling up the toothed strip (22) to form a drum (23); and
- joining the butt ends of the drum (23).
The opponent contested the novelty of this claim, but the Board did not agree:
*** Translation of the German original ***
[2.1] E1 concerns a method for manufacturing a toothed hollow-cylindrical part, e.g. a sprocket (Zahnkranz) […]. The method comprises : rolling a toothing system into a sheet metal strip by means of two rolls arranged on both sides of the sheet metal strip; separating a toothed strip from the rolled sheet metal strip; rolling up the toothed strip to form a drum; and joining the butt ends of the drum.
[2.2] This document does not mention the manufacture of a clutch cage of a double clutch, but the [opponent] is of the opinion that this feature only concerns the use of the method and cannot establish the novelty of claim 1. However, [the Board] cannot share this opinion.
[2.2.1] A claim that is directed at the manufacture of a product concerns an activity comprising one or several method steps the final result of which is precisely this product and which do not only have to be suitable for its manufacture. Thus the step of manufacturing this product is part of the claimed activity, even if the wording of the claim does not repeat this manufacturing step in the list of the method steps. Within the framework of a method for manufacturing a product the manufacture of this very product indeed is a technical feature that can establish the novelty of the claimed method.
The decisions invoked by the [opponent] do not support a different understanding. Quite to the contrary, it clearly follows from G 2/88 [2.5] that the technical features of a claim to an activity are the physical steps which define such activity. None of decisions T 1179/07, T 304/08 and T 1343/04 took the view that the novelty of a claim directed at the manufacture of a product could not be acknowledged on the basis of this manufacture.
[2.2.2] Thus, as already stated by the Opposition Division […], the manufacture of a clutch cage of a double clutch alone distinguishes the claimed method from the method according to E1. […]
[2.4] Claim 1 is, therefore, novel.
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