T 1975/09 24-09-2012

Procedural issues

1. The appellant requested that the case be remitted to the opposition division for further prosecution concerning the basis for revocation, or the decision be corrected concerning the basis for revocation.

Both requests are rejected for the following reasons.

1.1 The patent in suit was opposed inter alia on the ground that the subject-matter of the European patent extended beyond the content of the earlier application as filed (Article 100(c) EPC 1973). In the reasons of the impugned decision the opposition division held that claim 1 of the main request, as well as that of the then pending auxiliary requests 1 to 5, did "not meet the requirements of Article 76(1) EPC" (see Reasons for the decision, items 2.2, 2.3 and 3).

1.2 Article 76(1) EPC 1973 sets out the conditions for filing a European divisional application. As a consequence arising from this provision, the Examining division is required to compare the content of the divisional application as filed and as amended during the procedure up to the grant of a patent with the content of the earlier application as filed (see also G 1/05, OJ EPO 5/2008, 271, item 3 of the Reasons).

Article 100 EPC 1973 exhaustively sets out the grounds on which an opposition may be filed, and its paragraph (c) defines inter alia the ground that the subject-matter of the European patent extends, if the patent was granted on a divisional application, beyond the content of the earlier application. It thus requires that the opposition division compares the subject-matter of the granted European patent (and not that of its underlying divisional application, see G 1/05, ibid, item 3.6), including claims, description and figures as granted, with the content of the earlier application as filed.

This Board finds that Article 100(c) EPC [1973] would have been the correct provision to be cited in the decision of the opposition division when the claims of the granted patent in suit were considered.

With respect to amendments made to the claims in the course of the opposition procedure, Article 101(3)a) and b) EPC sets out that the opposition division should form an opinion on whether or not the patent and the invention to which it relates meet the requirements of the Convention. Frequently Article 76(1) EPC is invoked in decisions of the opposition divisions, and is also referred to in some decisions in opposition-appeal proceedings by the Boards of Appeal, when the amended subject-matter is examined with respect to the content of the earlier applications as filed. Article 76(1) EPC relates however to a requirement for filing a divisional application, which is not a requirement of the Convention for an (amended) patent. This Board considers that the requirement of Article 123(2) EPC, which although not explicitly referring to the content of the "earlier application(s)", is the corresponding requirement of the Convention, in the sense of Article 101(3) EPC, to be met by the patent in relation to amendments made thereto, with respect to the content of the earlier and of the divisional application(s) as filed.

1.3 As is apparent from item 8 of the "Facts and Submissions" and for example item 2.1 of the "Reasons" for the decision in the impugned decision, the opposition division consistently and correctly compared the subject-matter of the granted claim with the content of the earlier application as filed, and thereby correctly examined the ground of opposition raised by the opponent in the notice of opposition. The opposition division did not comment or take any decision on the legal status of the divisional application underlying the patent in suit. That the opposition division erroneously referred to Article 76(1) EPC [1973] has no impact on the substance of the decision and at most constitutes an error in the citation of the correct Article of the EPC. For the decision taken, in substance, there is however absolutely no difference, since the same principles were applied.

From the grounds of appeal and the subsequent submissions in the appeal procedure, it is abundantly clear that the appellant understood the reasons why the decision revoking the patent had been taken and presented detailed arguments as to why the opposition division's conclusions in their substance were wrong.

Remittal of a case to the department of first instance lies in the Board’s discretion under Article 111(1) EPC 1973 after having examined the allowability of the appeal. In this respect it has to be noted that the wrong citation of legal provisions alone (without any influence on the examination in substance) does not make an appeal allowable. Consequently Art. 111 EPC 1973 cannot form a basis for the appellant's request for remittal.

According to Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA), a case may also be remitted if in the proceedings before the first instance fundamental deficiencies are apparent. In the present case the appellant did not even assert that the proceedings leading to the impugned decision had suffered from a fundamental deficiency of this nature. The Board itself is also unable to identify any procedural defect in the opposition proceedings (cf. item 1.3 above).

The request for remittal for further prosecution concerning the basis for revocation is thus rejected.

1.4 In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected (Rule 140 EPC). The request of the appellant to correct the wrong reference to Article 76(1) EPC 1973 might only be considered to fall under the third category mentioned before. The Board is not competent to decide on a request for correction of a written decision taken by the opposition division.

For this reason the appellant’s request for correction under Rule 140 EPC is rejected.

It may be useful to add that it appears anyway that such correction might not have been possible at all, even if this request for correction had been made to the opposition division. Although the impugned decision contains an error in the citation of the relevant Article of law, there is no evidence upon which the conclusion could be reached that this is an obvious mistake within the meaning of Rule 140 EPC. In the reply of the proprietor to the notice of opposition and in the opposition division’s communication in the annex to the summons to oral proceedings, as well as in the corresponding minutes, reference was made consistently to Article 76(1) EPC [1973]. It is therefore not clear that the opposition division intended anything else than what is stated in the impugned decision.

Main request - Article 100(c) EPC 1973

2. The subject-matter of claim 1 of the granted patent in suit extends beyond the content of the earlier application as filed.

2.1 Compared to originally filed claims 1 and 31 of the earlier application, in claim 1 of the patent as granted neither the "fastener feature" nor the corresponding feature of respective claim 31 (see item I above) is specified anymore. On the other hand, claim 1 of the patent in suit defines, in addition to the features in common with earlier claim 1 (and 31), a number of features which do not have any correspondence in the remaining originally filed claims of the earlier application and which are taken from the description of the preferred and single embodiment of a crank arm apparatus as part of a particular bottom bracket assembly. For example, the granted claim now defines two crank arms, additional features of their respective mounting bosses and additional features of the end portions of the axle, which are disclosed in paragraphs [0018] to [0020] of the earlier application as filed. In view of what follows it may be left undecided whether, and indeed which, other features, such as any of those mentioned in the cited paragraphs or in paragraphs [0009] and [0010], for example the spacers, would possibly have been required to define subject-matter which is directly and unambiguously derivable from the earlier application.

2.2 The so-called essentiality test relied on by the appellant in its arguments that the "fastener feature" and the "flush feature" are not essential features of the subject-matter of granted claim 1 and might consequently be omitted, is occasionally applied by the Boards in cases where it has to be determined whether a feature originally comprised in an independent claim may be omitted from it. The present case is different from that situation in that granted claim 1 of the patent in suit is not derived from the original independent claim 1 of the earlier application by a simple deletion of features. Rather, the subject-matter is, as noted above, a combination of selected features from the comparatively broad claim 1 and features taken in isolation from the preferred embodiment of the invention of the earlier application as filed. The appropriate test for such subject-matter is to establish whether the resulting combination of features is directly and unambiguously derivable from the earlier application as filed, here in particular, whether a bicycle crank arm apparatus according with all the features of claim 1 but without the "fastener feature" and without the "flush feature" is disclosed in the earlier application as filed.

2.3 A bicycle crank arm apparatus without the "fastener feature" is not directly and unambiguously derivable from the earlier application.

2.3.1 Paragraph [0001] of the earlier application comprises a broad general statement that the invention is directed to a bicycle crank assembly and to the components and tools used to assemble it. Paragraph [0004] indicates at its beginning the problem to be solved as being that of providing a crank assembly wherein the lateral position of the axle may be adjusted without one or more of the disadvantages of prior art axle assemblies. Subsequently, an embodiment of the invention is disclosed which corresponds almost literally to the wording of claim 1 of the earlier application, including the "fastener feature" (column 1, line 50 to column 2, line 5). It follows the description of "[a]t least one advantage of this structure..." (column 2, lines 5 to 10, emphasis added). The advantage "that the axle bolt may be used to laterally position the axle and the crank arms relative to each other" is thereby attributed to the entire combination of the features disclosed in the preceding lines, including the fastener. That the fastener, contrary to the axle bolt, is not explicitly mentioned for this advantage, cannot be seen as a direct and unambiguous disclosure for a bicycle crank arm assembly comprising axle, crank arms and axle bolt with all the specific features mentioned before and defined in earlier claim 1 but specifically without the "fastener feature".

2.3.2 Paragraph [0019], in combination with Figures 6 and 7, discloses a left side crank arm of the sole embodiment of the assembly. This arm, corresponding apparently to the second crank arm of granted claim 1, comprises inter alia a mounting boss with two mounting ears having threaded holes to receive two threaded crank arm bolts 343 and 346 for tightening the mounting ears towards each other and thereby clamping the axle mounting boss around the axle. This clamping function corresponds to the purpose specified in claim 1 of the earlier application for the "fastener feature", so that the crank arm bolts represent one, and in fact the only, embodiment of it. Paragraph [0023] discloses the complete method of the assembling of the axle and crank arms to the bottom bracket of the bicycle frame and to a number of other features not specified in the claim, such as a dust tube, O-ring seals and adapter assemblies (see column 7, line 48 to column 8, line 9). According to the final passage thereof, the assembling is not terminated once the axle bolt is screwed by the desired amount into the axle's thread. Rather, it terminates with the tightening of the bolts 343 and 346 which serve, in addition to the radial clamping function, the purpose to "set the final position of crank arm 60B and thereby the play between crank arms 60A and 60B and spacers 154A and 154B." (emphasis added by the Board). The "fastener feature", embodied by the bolts 343 and 346, is thus clearly linked to the lateral adjustment of the components of the crank arm assembly or apparatus. Neither this paragraph nor any other passage indicated by the appellant discloses an alternative to adjusting the lateral positions of the crank arms (and spacers) other than by using the "fastener feature", or that the setting of the final position and consequently the use of the "fastener feature" may be dispensed with.

2.3.3 The Board concludes that, based on the passages indicated by the appellant, the earlier application does not disclose a crank arm apparatus according to claim 1 of the granted patent in suit which does not include the "fastener feature" according to claim 1 of the earlier application.

2.4 Although the aforegoing finding constitutes in itself a sufficient reason not to allow the appellant's main request, it is appropriate in view of the auxiliary requests to consider also whether a crank arm apparatus according to claim 1 without the "flush feature" is directly and unambiguously derivable from the earlier application. This is also not the case, for the following reasons.

2.4.1 The feature of claim 1 of the granted patent in suit according to which the plurality of second splines on the second end portion does not extend radially outwardly relative to the outer peripheral surface of the axle body is almost literally based on the sentence in column 7, lines 2 to 5 of the earlier application, starting with "[i]n this embodiment, splines 370 do not extend radially outwardly...". The sentence immediately following this commences with "[i]nstead , the splines 370 are flush...". The expression "instead" establishes a direct link to the previous sentence. It more precisely limits the preceding statement, namely that in "this embodiment", which is the sole embodiment disclosed, the splines, which do not extend radially outwardly, are flush with the outer peripheral surface. Therefore the feature "do not extend radially outwardly" added to claim 1 as granted leads to an inadmissible intermediate generalisation of the single embodiment with flush splines.

2.4.2 Although the Board can agree with the appellant that the purpose mentioned in the immediately following lines 6 to 14 of column 7, which is to enable the second end portion of the axle body to pass freely through the other components, could seemingly be obtained also with splines which are radially inwardly compared to the outer peripheral surface, this is nevertheless not sufficient to establish that the generalised feature, as present in the claim, is directly and unambiguously derivable from the earlier application. The skilled person is not supposed to apply common general knowledge in order to derive alternative embodiments (i.e. in this case, splines other than flush) or a general teaching ("do not extend radially outwardly") from a function attributed to a specific feature (flush splines in the single embodiment), unless there is a specific hint to do so, such as a clear statement to the effect that a certain function may be embodied differently by other known means or by the disclosure of other alternative embodiments. In the present case, there is no clear and unambiguous indication in the earlier application that would have led the skilled person to consider such alternative embodiments or the generalised feature introduced in granted claim 1.

2.4.3 The appellant's argument that the feature "do not extend radially outwardly" has no close functional relationship with the "flush feature" or even with other features of the claim, is not persuasive. It is meaningless to consider whether a generalised feature interacts with itself in its more specific form. The decisions referred to by the appellant in this respect (cf. item XIII(f) above), i.e. T 714/00, T 582/91 and, presumably, T 1408/04 instead of T 2008/04, which the appellant mentioned in the oral proceedings but which does seemingly not exist, are thus of no relevance. Also, in as far as these decisions were cited to establish the principle that these features are not essential for inclusion in the sense that there might be no close structural or functional relationship with each other, the Board whilst accepting this principle per se, finds that there is anyway an inextricable link between these features. The appellant has failed in the present case to establish, based on the originally filed disclosure, that there is no close structural or functional link; the appellant’s contention is simply based on, at best, an ambiguous interpretation of the paragraph in question.

2.4.4 Irrespective of whether the so-called "novelty test" is at all appropriate to decide on the disclosure of subject-matter resulting from the addition of a feature which itself, as in the present case, has to be considered a generalisation of disclosed subject-matter, the above conclusion on added subject-matter would not be changed. By simply adding a part of the disclosure "do not extend radially outwardly" the resulting subject-matter concerns a crank assembly with splines on the axle's second end portion which may be flush with or which may end radially inwardly of the outer peripheral surface. Only the first alternative is disclosed. The second alternative constitutes the new technical content because there is no disclosure for splines ending radially inwardly.

2.4.5 The appellant also referred to G 1/93 (OJ EPO 1994, 541), alleging that the "flush feature" merely represented a further limitation without any further technical contribution. The questions answered in G 1/93 address a different point of law. It is concerned with the conditions under which amending a granted claim, in which an originally undisclosed feature limiting the scope of protection of the claim in comparison with that of the application as filed, had been added during examination, can be allowed without contravening the requirement of Article 123(3) EPC. The granted claim of the patent in suit however does not comprise the "flush feature" as an originally undisclosed feature. The "flush feature" provides anyway a clear technical contribution to the invention since it is a selection of embodiments with flush splines out of all possible spline configurations which do not extend outwardly compared to the outer peripheral surface. In this respect it is irrelevant whether or not this feature provides an additional technical function compared to that achieved by the more general feature of non-outwardly extending splines.

2.5 At least for the above reasons the ground of opposition according to Article 100(c) EPC 1973 prejudices the maintenance of the European patent as granted, so that the appellant's main request is not allowable.

Auxiliary requests of groups I to III - Article 13(1) RPBA

3. The auxiliary requests of these groups were filed after the end of the period for submitting the grounds of appeal and therefore constitute an amendment to the appellant's case which may be admitted and considered at the Board's discretion (Article 13(1) RPBA). The appellant conceded that the auxiliary requests of group I do not comprise any amendments which are appropriate to overcome the aforegoing objections with respect to the main request. Similarly, the auxiliary requests of groups II and III comprise amendments which respectively address only one of the two deficiencies considered in item 2 above. The appellant did not provide any additional arguments concerning these requests beyond those already addressed with respect to the main request. Consequently none of these auxiliary requests was prima facie allowable in the sense that it at least overcame the previous objections of added subject-matter in view of the earlier application as filed. The Board thus exercised its discretion under Article 13(1) RPBA not to admit these auxiliary requests into the proceedings, because they do not fulfil the need for procedural economy.

Auxiliary requests of group IV - Article 13(1) RPBA

4. The auxiliary requests of group IV, which were filed together with those of groups I to III and which therefore also constitute an amendment to the appellant’s case, comprise, besides the "flush feature", also the "fastener feature" in its original wording of claim 1 of the earlier application as filed. The patent in suit and the underlying divisional application as filed undisputedly do not comprise anymore the generalised broad wording for the "fastener feature", neither in the claims nor in the description. The introduction of the "fastener feature" therefore introduces subject-matter extending beyond the content of the divisional application as filed, contrary to the requirement of Article 123(2) EPC. Since the other amendments to claim 1 of each of the auxiliary requests of group IV are not related to the definition of the fastener, these requests were not prima facie allowable in the sense that they overcame the previous objections without introducing any new objection. Consequently the need for procedural economy is not fulfilled and these requests were also not admitted into the proceedings (Article 13(1) RPBA).

5. The appellant argued that the "fastener feature" as defined in claim 1 of the auxiliary requests of group IV had its basis in Figures 2 and 3 of the divisional application as filed, as well as in paragraphs [0019] and [0023]. The figures and the passages of the description referred to by the appellant however only disclose the details of a single embodiment of a crank assembly (see also above item 2.3.2). The "fastener feature" specified in claim 1 of auxiliary requests of group IV encompasses however other embodiments of fasteners, such as clamps, for which there is apparently no basis in the application, at least not within the passages indicated by the appellant. There is hence no basis for such generalised wording of the "fastener feature" in the divisional application as filed.

Auxiliary request labelled "GROUP V." - Article 13(1) RPBA

6. The auxiliary request labelled "GROUP V." was submitted as a reaction to the objection under Article 123(2) EPC to the requests of group IV raised for the first time during the oral proceedings. The amendment concerns essentially an introduction of wording taken from paragraph [0019] of the earlier and divisional applications. According to the appellant this passage was the only relevant part of the description for the addition of the respective features, since the problem mentioned in paragraph [0005] of the divisional application was still the one of paragraph [0004] of the earlier application, i.e. the adjustment of the lateral position of the axle. It was solved by the features now defined in claim 1. Paragraph [0019] comprises however, at the end, a reference ("...as discussed below") to the following parts of the description, which can only be understood as referring to the assembling described in paragraph [0023]. In this paragraph the added features are disclosed in close functional relationship to a number of other features (see above item 2.3.2). For example, as pointed out by the respondent and already referred to above, tightening of the threaded bolts not only clamps the crank arm to the axle, but also sets the final position of the crank arm relative to the spacers. The amendment therefore raises the question whether other features of the single embodiment, including for example the adapter assemblies or the spacers as part of the former, are separate components or whether these are indeed functionally linked to the features of the crank arm apparatus according to this amended claim 1. These questions would have required a detailed examination of the structural and functional relationship of the entirety of the combination of features disclosed in the earlier and divisional applications as filed. This would have been too complex to be carried out during the oral proceedings at this latest possible stage of the proceedings. The Board thus exercised its discretion under Article 13(1) RPBA not to admit this request into the proceedings.

7. The appellant pointed to paragraph [0009] of the earlier and the divisional applications to emphasise that the disclosed embodiment comprised several distinct assemblies or components, so that the crank arm apparatus of claim 1 constituted a complete and independent combination of features. The Board is unconvinced by this argument since it is not immediately clear from that paragraph that the components mentioned therein do not have close functional links to the claimed crank arm apparatus, in particular in view of the problem relied upon by the appellant. For example, according to column 3, lines 43 to 46, of this paragraph, the adapter assemblies are used in part to position the axle laterally within the bottom bracket so that the front sprockets are properly aligned with rear sprockets. The functional relationship between all the components disclosed in the description is evidently highly complex and it is not immediately clear which further features might have been relevant in this respect.