T 1194/07 30-04-2009

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is thus admissible. However, it is not allowable for the following reasons.

2. The decisive issue is that of admissibility of the opposition. The relevant provisions governing admissibility of the opposition are those in force on the date of its filing, 12 October 2005, i.e. of the European Patent Convention in its previous 1973 version before entry into force of the revised text on 13 December 2007. These are Rule 56(1) in conjunction with Article 99(1), Rule 55(c).

This follows from the general legal principle that the competence to perform a procedural act derives from the law in force at the time of performing the procedural act, and that as a consequence any issue of competence must be decided within that legal framework, as explained in T 1366/04 (not published), reasons 1.2.

3. Rule 55(c) EPC 1973 stipulates that the notice of opposition state extent and grounds of opposition as well as indicate "facts, evidence and arguments presented in support of these grounds". As expounded in G 9/91 (OJ 1993, 408) and G 10/91 (OJ 1993, 420), Reasons 6, Rule 55(c) is not a merely formal requirement, but has an important substantive function in establishing the legal and factual framework for the substantive examination of the opposition. This is further underlined by T 222/85 (OJ 1988, 128), reasons 4, stating that the requirement of indication of facts, evidence and arguments "is substantive in nature, and calls for reasoning which goes to the merits of the opponent's case". It is "only satisfied if there is sufficient indication of the relevant "facts, evidence and arguments" ..., for the reasoning and merits of the opponent's case to be properly understood by the Opposition Division and the patentee ... on an objective basis, from the point of view of a reasonably skilled man in the art [of the patent]". In subsequent jurisprudence this is interpreted as meaning that the opponent's case should be understood "without further investigation" (cf. T 2/89 (OJ 1991, 51), reasons 3), or "without undue burden"(cf. T 199/92, reasons 1.2) to the patentee or opposition division. Thus substantiated a notice puts the patentee in a position to fairly react to the grounds raised against the patent, either by rebutting these with concrete counter arguments or formulating amendments addressing the contentious issues.

Consequently, unless the facts of a case are readily recognizable or immediately apparent from the evidence provided, the opponent will need to elucidate the facts by way of reasoning or arguments to satisfy the requirement of Rule 55(c) EPC 1973. This may, for example, mean citing specific passages or parts of a citation and correlating these with claimed features, see e.g. T 545/91 or T 621/91. Where inventive step is at stake, the notice should normally additionally indicate why various documents might suggest a lack of inventive step, see e.g. T 222/85, reasons 8.

Finally, as is repeatedly stated in case law, the indication of facts, evidence and arguments need not be conclusive or correct. That is an issue of merit. The Board however emphasizes that the merits of a case can only be assessed in a meaningful manner if the case has been stated fully, by an adequate indication of the relevant facts, evidence and arguments.

4. In the case at hand, the notice of opposition comprises just over two sides with the main body of facts, evidence and arguments appearing on page 2. The evidence is in the form of documents, numbered in the notice as E1 to E7; only E1, E2, E3 and E7 play a further role in the notice. Apart from E2 all pertinent citations are unambiguously identifiable. The publication number given for E2 does not figure amongst the examination citations as it should according the third paragraph of page 2 of the notice, but can be identified with minimum effort as the second reference cited on the front page of the patent specification, the number of which differs only in the last digit. This is thus of no consequence to the issue of substantiation, as is the notice's subsequent simple reference to E1 for the preamble features without further discussion. In this case, as stated in the notice, page 2, fourth paragraph, the opponent has relied on the specification's acknowledgement in column 2, lines 6 and 7. This is reasonable in the Board's view, as the reader should be able to take such statements in a patent publication regarding the basis for the preamble prior art at face value. Equally unobjectionable is the fact that, though the notice mentions Article 54 as well as Article 56 in conjunction with Article 100(a) as ground, only lack of inventive step is then argued. If properly substantiated this sole ground should satisfy the requirement of Rule 55(c) EPC 1973.

5. The notice is deficient under Rule 55(c) EPC 1973 where key elements linking the further cited prior art to the claim or relating to their validity as evidence, as well as crucial arguments informing the reader why the skilled person might have considered combining the features of such prior art with those of E1, are missing in the notice.

5.1 For the characterizing part of the claim - the "surplus" over E1 in the words of the notice ("Der vermeintliche erfinderische Überschuss gegenüber E1 ...", fifth paragraph, second sentence)- it draws on E2 and E3. E2 is referred to in the context of the bearing or support of the contact member features ("hinsichtlich der Lagerung des Kontaktelements"), corresponding to the first of the two characterizing features. E3 is cited against the final feature, see page 2, sixth paragraph ("Der letzte Teil des kennzeichnenden Teiles ...").

At this juncture the Board adds that the citation of E2 and E3 against separate features indicates that E2 and E3 figure together in a single sole attack. This is confirmed by the paragraph bridging pages 2 and 3 : "As in particular both groups of features belong to elementary knowledge ... and are documented by publications E2 and E3 ... the subject-matter of claim 1 lacks inventive step" ("Da insbesondere die beiden Merkmalsgruppen ... zu den elementaren Grundkentnisse ... gehören und durch die Druckschriften E2 und E3 belegt sind, [beruht] der Gegenstand des Anspruchs 1 nicht auf einer erfinderischen Tätigkeit"). The sentence may not follow logically from the preceding paragraphs (the link between E2 and E3 and elementary knowledge is unexplained), it nevertheless reads as their conclusion.

5.2 Echoing the wording of claim 1 (in its German version), the notice singles out particular features in E2: its "Kupplungsglied" is said to be mounted on a sleeve integrally formed on the "Stellglied", the latter then said to be part of a transmission gear and corresponding to the movable member of the claim. The notices cites figures 3 and 4 and column 3, line 25, to column 4, line 41 as pertinent, but, apart from an introductory paragraph, this corresponds to the entire detailed description of the embodiments, encompassing a number of different embodiments. However short this section of E2 may be, the relationship between the features of the claim is nevertheless not readily recognizable therefrom. It requires some level of investigative effort on the reader, who now carries the burden of identifying the relevant passages, if any, and establishing the exact correspondence with the first characterizing feature and why.

Such correspondence is neither immediately apparent nor trivial. The opponent submits in his notice that the member (13) ("Stellglied") of E2 corresponds in essence to the movable member (3) of the claimed invention ("Das Stellglied 13 ... entspricht im wesentlichen dem beweglichen Element 3") and that the member 9 ("Kupplungsglied") of E2 corresponds to the contacting member (5) of the claim. However, granted claim 1 in its preamble requires firstly that the movable member (3) be disposed on the throttle shaft and "fixed thereto". Member (13) of E2 with which it supposedly corresponds is however not fixed but rotatably mounted on the throttle shaft. Secondly, according to claim 1 the contacting member (5) is "rotatably disposed on the throttle shaft", whereas its supposed counterpart in E2, member (9), is not rotatably disposed but welded on the throttle shaft.

The notice is wholly silent as to why - contrary to simple logic - the member (13) of E2 which is rotatably mounted should be construed as the claimed movable member (3) fixed on the throttle shaft, and the member (9) of E2 which is fixed on the throttle shaft can be construed as the contacting member (5) of the claim rotatably mounted thereon. There thus is no technically reasoned connection between the two members (3) and (5) of the claim and the two members (13) and (9) disclosed in E2. In the absence of any further substantiation, the skilled reader is unable to understand the conclusion drawn by the opponent in his notice that the latter members may be equated with the members (3) and (5) respectively, which are the subject of the characterizing part of granted claim 1.

5.3 For E3, the notice cites figures 1 to 4, and column 3, line 8, to column 4, line 8, which, again corresponds to the entire detailed description. No further information is provided and it is left to the reader to work out the details of the relationship between this document's content and the final feature of the claim. The statement that it corresponds to the last part of the characterizing part is no more than bold assertion.

Moreover, E3 is an intermediate "P" document (see also the search report), published (on 9 January 1997) between the patent's priority and filing dates (3 September 1996 and 29 August 1997 respectively). It belongs to the state of the art only if the claimed priority is not valid. It is not apparent from the notice that this has been verified. This task is again left to the reader. In as far as he would have found the claimed priority to be valid, so that E3 does not belong to the state of the art, the assertion regarding the final characterizing feature would be wholly unsubstantiated by fact.

5.4 Finally, a key element is missing in the notice's chain of logic leading from the prior art to the invention: it is not apparent to the reader from the notice why the skilled person would combine their teachings. The mere fact, however well founded, that different pieces of prior art together disclose all the claimed features, and that they therefore belong to the skilled person's "elementary knowledge" (paragraph bridging pages 2 and 3) is entirely inadequate. Any reasoning intending to demonstrate lack of inventive step must do so within the terms of the statutory definition of inventive step given in Article 56 which hinges on the notion of the skilled person. That notion implies a technical evaluation of claimed invention and prior art which goes beyond the mere identification of features in citations. The problem-solution approach adopted by the Boards of Appeal as standard test is the preferred way of doing so, though it is by no means the only way.

5.5 The net result of the omission of key facts and elements in the notice´s reasoning is that it amounts to little more than speculation or an outline of a possible case against the patent. To determine whether or not a case in fact exists that might prejudice the patent, the reader must first fill in the substantial gaps. He would need to find the relevant features in the citations and carry out the missing technical evaluation himself. The burden of proof will thus have been shifted away from the party contesting the validity of the patent.

6. In the light of the above the Board concludes that the notice of opposition does not include "an indication of facts, evidence and arguments" as required by Rule 55(c) EPC 1973 to support the grounds raised. As these deficiencies were not also remedied before expiry of the opposition period, the notice of opposition is inadmissible pursuant to Rule 56(1) EPC 1973.