T 0380/00 07-05-2002

1. The appeal is admissible.

2. Procedural matters

2.1. Admissibility of the late filed arguments and evidence in respect of an alleged public disclosure by Mr Fairlee.

The appellant with its statement of the grounds of appeal for the first time relied on the disclosure of technical features of the invention by Mr Fairlee during a job interview.

In respect of the circumstances of the disclosure the statutory declaration by Mr Fairlee, filed with the statement of the grounds of appeal, only refers to the year 1986, without any further precision, and it does not identify the persons present at the interview. Although Mr Fairlee in its declaration submits that he was under no obligation to confidentiality, the technical drawings he submits to have shown at the interview all bear the mention "This drawing is confidential and may not be used in any manner detrimental to Oldham and Son". The drawings numbered 10259 and 10261 are dated May 85 and June 85, respectively, which suggests that they illustrate a quite recent development of Mr Fairlee's employer.

The respondent convincingly submitted that according to standard practice the persons present at the interview on behalf of the prospective employer would have felt bound by an at least implicit obligation of confidentiality. The appellant did not with its statement of the grounds of appeal provide any evidence to the contrary, nor did it even seek to demonstrate that information obtained by the interviewer(s) during the interview was actually passed over to the general public.

In these circumstances, the Board considered that the alleged public disclosure by Mr Fairlee, as relied upon late by the appellant in its statement of the grounds of appeal, is too poorly substantiated to justify that the matter be further investigated, which incidentally would have called for the case being remitted back to the first instance to avoid a loss of instance.

The submissions made by the appellant in respect of Mr Fairlee's job interview shall therefore be disregarded under Article 114(2) EPC.

2.2. Postponement of the oral proceedings

The appellant both before and during the oral proceedings of 7 May 2002 requested that the oral proceedings be postponed on the ground that the owner of the appealing company had changed and that the new owner should be given an appropriate opportunity to review the opposition and appeal files, and also to obtain any information from Mr Fairlee which they contended was required by the Board. This had not been possible because of the short time interval between the change of owner, which became effective only on 25. March 2002 and was followed by a phase of disorganisation comparable in effect of a situation of bankruptcy preventing adequate consideration of the matters involved in the present procedure.

However, as is apparent in particular from a press release dated 7 January 2002 as filed by the respondent with its letter of 27 February 2002, the change of ownership had been agreed upon even before the Board issued the summons to oral proceedings.

Accordingly, taking into account also the early request by the respondent, as filed on 7 December 2001, that the prosecution of the appeal be expedited, the Board at the oral proceedings of 7 May 2002 announced its provisional view that postponement of the oral proceedings was not considered justified, which was not challenged further by the appellant.

3. Compliance of the amendments brought to the patent with the requirements of Article 123(2) and (3) EPC

3.1. As compared to claim 1 as originally filed claim 1 now specifies that the claimed method is "automated" and that compressing of the assembly of plates and separator is also performed "automatically". The automatic character of the claimed method was stressed for instance in the last paragraph of page 9 of the original patent application as published under the PCT, and in all the specific embodiments described.

In addition, claim 1 now further specifies that automatic compression of the assembly of plates and separator is achieved "by acting upon it by a compression means such that the compressed cell assembly is aligned with the opening of said battery cell container" and that insertion into the battery cell container is achieved "by acting upon said compressed cell assembly by a reciprocating means which slides said cell assembly laterally relative to said compression means into said battery cell container". These features were disclosed expressely in the application as originally filed in conjunction with the first embodiment described there (see page 31, line 15 to page 32, line 3).

The appellant in this respect submitted that this first embodiment, in which the plates are cut from a continuous length of battery plate stock, was not covered by claim 1 which was directed to the use of plates from a stack of individual plates. The respondent insisted that claim 1 actually covered such a method using plates cut from a continuous length of plate stock. In the Board's view at least the third and the fourth embodiments as originally disclosed (see page 33, line 21 to page 43, line 25) clearly encompass the manufacturing of cell assemblies from stacks of individual battery plates. Concerning the compression and insertion of the cell assemblies into the cell container, the original description in relation to these embodiments explicitely refers to the arrangement disclosed earlier in relation to the previous embodiments (see page 42, lines 23 to 25). The third and the fourth embodiments as originally disclosed thus provide an adequate support for the amendments brought to claim 1.

The appellant submitted that further details of the compression arrangement as originally disclosed, in particular the indexation of the cell assembly at the cell compression station and the downward direction of the compression means, should also have been taken up into claim 1. The Board in this respect, however, concurs with the respondent's view that various options are obviously available for the positioning of the cell assembly at any stage of the manufacturing process and for the direction of compression, among which the skilled person can select in accordance with the circumstances of a particular application. The description as originally filed does not comprise any suggestion that the specific indexing arrangement and compression direction disclosed there would be essential nor even particularly recommended, and the skilled person cannot reasonably be considered to have understood that they were so.

Thus, claim 1 as granted was amended only by the addition of features adequately supported by the application documents as originally filed.

3.2. The same conclusion applies to independent claim 10, which was amended by the inclusion of substantially equivalent features.

The appellant submitted that the amendments brought to claim 10 offended against the provisions of Article 123(3) EPC. In its view, claim 10 as granted by referring to "means for compressing ... and automatically inserting" required the compression and insertion being performed by the same structure, whilst the expression "means for compressing ... and means for automatically inserting" in claim 10 as amended no longer required a single means to perform a double function.

The Board, however, concurs with the respondent's view that claim 10 as granted already encompassed the possibility of the means for compressing and inserting" comprising different structural elements, each dedicated to one of the two functions, as is clearly disclosed in all the embodiments described in the specification. The scope of this claim therefore was not extended.

3.3. The dependent claims and the description of the patent as granted remained unamended.

3.4. For these reasons, the amendments brought to the patent in accordance with the respondent's request meet the requirements of Article 123(2) and (3) EPC.

4. Clarity of the claims and their support by description

In the course of the oral proceedings the appellant submitted that claim 1 lacked clarity insofar as its subject-matter was designated as a method of making a battery cell assembly, whilst it comprised steps in which such cell assembly was actually compressed and inserted into a container, rather than being manufactured. The appellant also contended that none of the embodiments disclosed in the patent were actually covered by claim 1, since they all involved intermediate storage of the individual components before they were processed.

These objections do not arise from the amendments brought to claim 1 and they cannot therefore constitute valid grounds for opposition under Article 100 EPC.

These objections are also clearly unfounded. Claim 1 defines a method of manufacturing a lead-acid battery cell assembly, in which compression and insertion of sub-assemblies formed of plates and separator only constitute intermediate processing steps. Moreover, all the embodiments disclosed in the specification involve sequential assembly of individual cell components in a continuous manufacturing process, without substantial interruption of the processing flow nor actual storage of sub-assemblies before they are finally assembled.

5. Novelty

Document D1 discloses an automated method of making a lead-acid battery in which a stack of battery plates, which does not comprise any compressible separator, is inserted into an empty battery container 72 by a reciprocating means 87 (see Figure 2 and column 5, line 61. to column 6, line 14). The method and apparatus disclosed in document D1 does not involve compression of any battery cell assembly.

Documents D5 and D6 provide evidence that battery cells comprising compressible separators were known at the date of the patent, but they do not disclose or suggest any method or apparatus for their automated assembly.

The remaining documents on the file do not come closer to the claimed subject-matter, which therefore is novel within the meaning of Article 54 EPC.

6. Inventive step

The parties agreed to consider document D1 as disclosing the closest prior art.

The claimed method and apparatus are distinguished from this prior art essentially by the features directed to the automatic compression of the cell assembly so that it is aligned with the opening of the battery cell container and to the sliding of the cell assembly laterally relative to that compression means into that battery cell container.

The Board agrees with the appellant to consider that the formulation of the technical problem solved by these features, which is to allow for the automated insertion of a cell assembly comprising compressible separators in a cell container, does not in itself provide any positive contribution to inventive step. As a matter of fact, compressible cells being known per se, it is no more than a normal endeavour for the skilled person to strive at designing methods and apparatuses for their automated assembly.

However, the Board cannot endorse the appellant's view that the claimed features, in particular the sliding of the compressed cell assembly laterally relative to the compression means, are obvious.

In particular, the method and apparatus of document D1 clearly call for the battery cell exhibiting dimensions so as to fit into the cell container when acted upon by the reciprocating means. The skilled person could easily realize that the very same technique might still be used with battery cells comprising compressible separators, provided these were simply compressed beforehand and maintained in a compressed state, e.g. by means of fixing clamps or strips. The so maintained cell assemblies could then be freely inserted into a cell container using the same reciprocating means as disclosed in document D1 for the insertion of a non-compressed cell assembly.

Moreover, the claimed technique cannot merely be considered as a straightforward automatisation of a manual procedure. In such manual procedure, the cell assembly would be compressed by hand and, whilst so maintained, directly engaged into the opening of the cell container. Straightforward automatisation of this procedure would at best result in a clamping tool being used both to compress the cell assembly and to move it towards and engage it with the opening of the cell container. Such procedure would not however result in lateral sliding of the cell assembly relative to the compression means as is set out in independent claims 1 and 10.

The appellant did not show, nor even contend, that the claimed insertion procedure was known already for the insertion of different compressible elements, and that the skilled person would have applied it in an obvious way also to the manufacture of compressible battery cells.

For these reasons, and taking into due account also the fact that the prior art is devoid of any disclosure of a fully automated procedure for inserting a compressible cell-assembly into a cell container, the board is satisfied that the subject-matter of independent claims 1 and 10 involves an inventive step within the meaning of Article 56 EPC.

7. Apportionment of costs

According to Article 104 EPC each party to the proceedings shall meet the costs it has incurred, unless a different apportionment of costs during taking of evidence or in oral proceedings is ordered for reasons of equity.

In the present circumstances, the Board notes that besides the late filed submissions relating to Mr Fairlee's alleged public disclosure, on which the respondent bases its request for apportionment of the costs, the statement of the grounds of appeal also invoked an objection under Article 123(2) EPC and it further pointed at an obvious mistake in the version of the amended claims as maintained by the opposition division, which did not correspond to what had actually been decided.

The appellant's submissions in respect of the objection under Article 123(2) EPC cannot be considered unreasonable, even if they could not convince the Board. The respondent also implicitly admitted the correctness of the appellant's point that the version of claim 1 as proposed for grant by the opposition division was erroneous, and it actually took the opportunity of the appeal to redress this error by filing new claims which have been discussed with reference to novelty and inventive step at the oral proceedings.

Accordingly, the Board sees no reason to depart from the general principle laid down in Article 104 EPC that each party shall meet the costs it has incurred.