T 0909/03 01-02-2005

1. Alleged substantial procedural violations

1.1 Hearing of the witness

It is objected by appellant II that the manner of hearing the witness, Mr Wedekind, at the oral proceedings before the Opposition Division constitutes a substantial procedural violation. As stated in the minutes of the oral proceedings before the Opposition Division, the hearing of the witness took place in the morning and the oral proceedings continued in the afternoon after an adjournment. Appellant II was present throughout the hearing of the witness and, as can be seen from the minutes of the hearing of the witness, was able to question the witness. Appellant II knew in advance of the oral proceedings that this witness was going to be heard as well as the subject of his testimony (see Annexes to the summons to oral proceedings dated 23 August 2002).

During the oral proceedings, appellant II was given sufficient opportunity to comment on the testimony of the witness, even though the written minutes of the hearing were not available to the parties. It is not required that the other party be given a copy of the minuted testimony before questioning a witness.

1.2 Admission of late filed material and grounds

In addition, it is objected by appellant II that the letters of appellant I of 14 April and 2 May 2003 should not have been admitted into the proceedings before the Opposition Division, since they were filed later than one month of the oral proceedings which took place on 13 May 2003. Whilst the first of these letters merely constitutes a summary of the arguments already presented, the second letter did include documents supporting the evidence of Mr Wedekind. Similarly, the Opposition Division admitted a ground of opposition under Article 100(b) EPC into the proceedings which was not mentioned in the notice of opposition.

These are, however, matters in which the Opposition Division is entitled to exercise its discretion under Article 114(1) EPC. The Board is of the opinion that the Opposition Division correctly exercised its discretion in these matters, since the nature of the late filed facts and ground of opposition was not such that the Opposition Division and the other party could not be expected to deal with them in the time available before the oral proceedings.

1.3 A substantial procedural violation thus did not occur during the proceedings before the Opposition Division.

2. Late filed document

It is submitted by appellant II that the second declaration of Mr Wedekind enclosed with a letter of 29 December 2004 should not be admitted into the proceedings before the Board of Appeal. This declaration was, however, submitted in response to issues raised by the Board in the annex to the summons to oral proceedings. In addition, it was filed within the period specified by the Board in the annex. This document is accordingly admitted into the proceedings.

3. Sufficiency of disclosure (Article 83 EPC)

Each of the independent claims of each of the requests of appellant II includes a passage corresponding to the passage in claim 1 as granted from column 19, line 37 to column 20, line 10, defining the shape of the belt strip. This definition corresponds to the shape of the belt strip as illustrated in Figure 9 of the patent in suit. This is an idealised shape which it is the object of the invention to obtain as accurately as possible (patent in suit, column 14, lines 53 to 58). It is clear to the skilled reader of the patent in suit that, after the step of cutting the belt material to form the belt strip, the strip has a form which deviates from the ideal form. Figure 10 of the patent in suit shows such deviations on an exaggerated scale.

Since the object of the invention forming the subject of the patent in suit is to reduce to a minimum the deviations from the ideal form, the skilled reader would not be led to expect that the belt strip would have the ideal form immediately after the cutting step. On the contrary, the definition of the shape of the belt strip is included in the independent claims in order to enable the definition of the claimed method or apparatus in terms of the belt strip which is to be fed to the building drum.

The disclosure of the patent in suit is thus sufficient to enable the person skilled in the art to carry out the invention.

4. Alleged public prior use

The Board is of the opinion that a public prior use of a belt strip feeding apparatus took place by virtue of the delivery of an automatic belt server referred to as a GS-2-300 in 1990 to Außenhandelsbetrieb der DDR, for installation at VEB Reifenwerke Riesa. Whilst it is alleged by appellant II that access to the Riesa Werke was restricted, this is not relevant to the question of public prior use which occurred as a result of the delivery of an automatic belt server to a third party.

This prior use was established in the opposition proceedings on the basis of the documents referred to as Anlagen 1 to 5, 13 to 16, 21 and 23 to 25, together with the testimony of the witness, Mr Wedekind. Drawings of the machine have been supplied as Anlagen 6 to 12, 17 to 20 and 22.

As set out under point 3 of the decision of the Opposition Division, the testimony of the witness, Mr Wedekind, was regarded by the Opposition Division as being credible. As discussed below in the following paragraph, the documents supplied are consistent with one another and with the statements of Mr Wedekind as recorded in the minutes of the hearing before the Opposition Division.

Appellant II is of the opinion that at least some of the documents relating to the prior use should be disregarded. It was pointed out that Anlage 5 bore a date which was earlier than that of Anlage 5.1, whereas the contrary would be expected. It was, however, explained that the dates are that of the printing of electronically stored documents. In the case of Anlage 24, it is not inexplicable that an AG should have existed in 1990. In the case of Anlage 25, the fact that the document was signed "i.V" is no reason to disregard the document. The mere fact that the description of the control system in Anlage 16, which is part of a parts list, is somewhat lengthy, is also insufficient reason to disregard this document. Accordingly, the Board does not see any inconsistencies which would warrant these documents being disregarded.

As regards the second declaration of Mr Wedekind enclosed with a letter of 29 December 2004, as set out below at point 7.3, it is not decisive in the present matter whether or not the sensors of the belt strip delivery apparatus were connected to analogue sample and hold devices. It is accordingly not necessary to decide whether or not such devices were present in the apparatus for which delivery has been established.

5. Main Request

5.1 Novelty of Claim 12

As shown in Anlagen 6, 7, 8, and 12, the prior use apparatus comprises a supply reel for containing belt material, means for unwinding belt material from the supply reel, and conveying means for conveying the unwound belt material to a building drum having the features specified in claim 12. Adjusting means acting on the roller conveyor is shown in Anlage 7 (see Schnitt C-D). In addition, by virtue of the orientation of the cutting means, the belt strip has the form specified in the claim from column 21, line 52 to column 22, line 25. This was not contested by appellant II.

An arrangement for detecting the position of the edges of the belt strip is shown in Anlage 18, which is an enlargement of a portion of Anlage 17. As shown in the drawings constituting Anlagen 17 and 18, and discussed by the witness Mr Wedekind at page 3, lines 20 to 23 and page 4, lines 38 to 40 of the minutes of the hearing of the witness, the prior art apparatus comprises photo sensors for determining the position of the two side edges of the strip which produce analogue signals according to the degree to which the area on which the sensors are focussed are covered by the strip.

In addition, as discussed by the witness Mr Wedekind at page 3, lines 7 to 18 of the minutes of the hearing of the witness, the sensors are only activated at the moment they detect the presence of a belt strip. Thus, from the moment at which one of the sensors has detected a leading point of the strip until a portion of the strip is detected by the other sensor, that is, whilst the leading triangle passes the sensors, the signal from the first sensor is compared with a stored value ("Sollwert").

Since this stored value remains constant, it is equivalent to a signal representing a straight edge. Thus, at least during the time when the triangular leading and trailing ends are passing the sensors, the apparatus of the prior art is comparing the shape of the sections of one side of the belt strip with a shape of corresponding sections of a reference side. The apparatus accordingly comprises determining means for determining the shape of at least one side of the strip as required by claim 12.

It is argued on behalf of appellant II that this does not result in a determination of the shape of at least one side of the strip, since, at any one time, only one measurement can be made and used to control the transverse movement of the conveyor.

The prior art arrangement does not, however, differ from that claimed in the patent in suit in this respect, since it is only possible for the transverse movement of the conveyor to respond to the position of a side of the strip at a particular position at any one time and thereby adjust the shape of the strip. Thus, the only reasonable construction which can be given the reference in claim 12 to the shape of the strip which is consistent with the preferred embodiment disclosed in the patent in suit includes the arrangement of the prior art within its scope.

The subject-matter of claim 12 is thus not novel in view of the public prior use of a belt strip feeding apparatus which took place by virtue of the delivery of an automatic belt server referred to as a GS-2-300 in 1990 to the Außenhandelsbetrieb der DDR.

6. First Auxiliary Request

6.1 Allowability of amendments

As compared with the claims as granted, each of the independent claims has in effect been divided in two, each of each pair of claims including a different limitation. This amendment is, however, seen by the Board as being occasioned by grounds for opposition specified in Article 100 EPC. In view of the fact that it has been held that claim 12 of the main request is not new, appellant II is justified in attempting to save as much of the subject-matter of the independent claims as possible, even if this involves an increase in the number of claims.

The Board is aware of the fact that, in decision T 937/00 the competent board remarked that there is no objection in principle to an increase in the number of independent claims (point 2.1 of the reasons), whilst in decision T 181/02 the competent board decided that the replacement of a single independent claim by two independent claims was not allowable. It must, however, depend on the facts of the individual case whether or not such an amendment is reasonable and appropriate. In the present case, the amendment does not involve any undue complication or delay in the procedure and may be seen as balancing the interest of appellant II in attempting to obtain satisfactory protection of his invention with the interest of appellant I and the public in an efficient procedure.

The introduction of claims 20 to 35 thus complies with the requirement of Rule 57a EPC, so that the amendments involved in the first auxiliary request are formally allowable.

6.2 Novelty of Claim 27

Claim 27 of the first auxiliary request differs from claim 12 of the main request in that it is specified that the reference in the claim to "at least one side" refers to one of "the group consisting of the short side (36) of the leading end (33), the hypotenuse (35) of the leading end (33), the hypotenuse (39) of the trailing end (34) and the short side (40) of the trailing end (34)."

As discussed above in respect of the main request, the Board is of the opinion that the requirements specified in the claim with respect to "at least one side" are satisfied in the cases of the short side of the leading and trailing ends.

The subject-matter of claim 27 of the first auxiliary request is thus not novel for the reasons given above in respect of claim 12 of the main request in view of the public prior use. The first auxiliary request therefore is not allowable.

7. Second Auxiliary Request

7.1 Clarity

7.1.1 The references in claim 1 to determining "the shape of at least one side" or "the shape of the sections of the at least one side" of the belt strip are understood as referring to determining successively the position of the at least one side. This is described in the patent in suit at column 15, lines 1 to 49 and illustrated in Figure 13. The stored measured values are considered to represent the shape.

7.1.2 It is objected by appellant I that the reference in claim 1 to "adjusting the shape of the sections of the at least one side of the belt strip (17) to the shape of the corresponding sections of the reference side" is not clear, since the shape of two sides cannot be adjusted simultaneously. Nevertheless, in the case of a single strip, it is the case that, for example, the short side of the leading and trailing ends and a long side of the central rectangular part are all adjusted. In such a case, three sides are adjusted simultaneously.

7.1.3 It is further objected by appellant I that the reference in claim 1 to "fixing the thus adjusted shape of the sections of the at least one side of the belt strip" is also not clear, since only the entire width of the strip can be fixed. This term is, however, understood as referring to the fact that, at any one point along the length of the strip, an attempt may have been made to bring at least one side of the belt strip into a desired position, in which it is subsequently fixed.

7.1.4 Corresponding considerations apply to claim 12, which contains corresponding apparatus features.

7.1.5 Claims 1 and 12 are thus clear and comply with the requirements of Article 84 EPC.

7.2 In addition, the amendments comply with the requirements of Article 123(2) and (3) EPC. This was not disputed by appellant I.

7.3 Novelty

Claim 12 of the second auxiliary request differs from claim 12 of the main request in that it is specified that the comparison means comprises "a first memory for storing the shape as determined of the at least one side of the strip (17), a second memory for storing the shape of the at least one reference side concerned, calculating means for calculating the difference between the shape as determined of the at least one side and the shape of the reference side, and an electronic unit (24) for controlling the adjusting means, depending on the calculated difference."

As set out above in connection with the main request (see point 5.1), the apparatus of the public prior use is regarded as possessing a memory in the sense of the second memory specified in the claim, which stores the shape of a reference side. The apparatus does not, however, possess a memory for storing the shape as determined of the at least one side of the strip. The sensors are analogue sensors which supply a continuous signal representing the shape of the side being detected.

As stated at the end of page 5 of the minutes of the hearing of the witness, Mr Wedekind stated that he could not say whether or not the signals from the sensors were stored.

Whilst, in the declaration of Mr Wedekind filed on 29 December 2004, it was stated that sample and hold devices connected to the sensors were included in the prior art apparatus, these are not considered to constitute a "first memory" in the sense of the claim, since when a continuous signal is received from an analogue device, no storage of a value occurs, as each measured value is constantly replaced by a subsequent value. The sample and hold devices only have a function when a side of the strip is no longer detected by a sensor, at which point the signal from the sensor is replaced by a signal from one of the sample and hold devices which is used as a stored value until the sensor once again detects the presence of a side.

The subject-matter of claim 12 is thus novel. Claim 1, directed to a method for feeding a belt strip to a rotating building drum, specifies the corresponding feature of "comparing the shape of the sections of the at least one side of the belt strip (17) stored in the first memory with a shape of corresponding sections of a reference side, which has been stored in a second memory". The subject-matter of claim 1 is thus also novel for the same reasons as claim 12.

7.4 Inventive step

7.4.1 Closest prior art

The closest prior art is represented by the public prior use of a belt strip feeding apparatus which took place by virtue of the delivery of an automatic belt server referred to as a GS-2-300 in 1990 to the Außenhandelsbetrieb der DDR.

However, as discussed above in connection with the question of novelty (see point 7.3), the apparatus does not possess a memory for storing the shape as determined of the at least one side of the strip.

7.4.2 Object of the invention

The object of the invention can be regarded as being to provide a method and apparatus which enable a better positioning of the belt strip on the building drum.

7.4.3 Solution

According to claim 1 of the patent in suit, this problem is solved in the case of the method by storing the shape as determined of the at least one side of the strip in a first memory and comparing the shape of the sections of the at least one side of the belt strip stored in the first memory with a shape of corresponding sections of a reference side, which has been stored in a second memory.

According to claim 12 of the patent in suit, this problem is solved in the case of the apparatus by the provision of a first memory for storing the shape as determined of the at least one side of the strip, calculating means for calculating the difference between the shape as determined of the at least one side and the shape of the reference side stored in the second memory, and an electronic unit for controlling the adjusting means, depending on the calculated difference.

The presence of such a first memory enables, for example, a stored shape of a side of the leading end to be used in adjusting the shape of the trailing end and thereby enable a better positioning of the belt strip on the building drum.

The Board is not aware of any prior art which discloses a method or apparatus for feeding a belt strip to a rotating building drum incorporating such a memory. It is not accepted that there is an obvious need to store the measured values, since it is feasible, as was the case in the apparatus of the public prior use, to use measured values of the position of a side of the belt strip directly, that is, without storing those values, to adjust the shape of the strip. This also applies to the control device EKR 1 shown in annex 2 of the declaration by Mr Regterschot. The input to the device is an analogue signal which is compared with a stored value. The measured value is not stored.

The subject-matter of claims 1 and 12 thus involves an inventive step. Claims 2 to 11 and 13 to 19 are directly or indirectly appendant to claims 1 and 12 and relate to preferred embodiments of the method of claim 1 and the apparatus of claim 12, respectively. The subject-matter of these claims thus similarly involves an inventive step.