T 0345/13 01-12-2014

I. The appellant (applicant) filed a notice of appeal on 7 January 2013 against the decision of the examining division, posted on 30 October 2012, by which European patent application No. 07 825 777.1 was refused on the grounds that the amended claims filed on 24 February 2010 related to unsearched subject-matter which did not combine with the originally claimed invention to form a single general inventive concept (Rule 137(5) EPC). The statement of grounds was filed on 15 January 2013.

II. The appellant requested that the decision under appeal be set aside and that the case be remitted to the first instance in order that the amended claims filed on 24 February 2010 (sole request) be searched and examined.

III. Independent claims 1 and 9 of the sole request read as follows:

"1. A method for intermittently cutting a moving target web (26), comprising:

rotating a knife roll (32) having at least one knife member (44) to provide an operative knife-member speed;

rotating an anvil roll (34) having at least one anvil member (46) to provide an operative anvil-member speed;

positioning the knife roll (32) and anvil roll (34) to provide an operative nip region (30) therebetween;

moving a substantially continuous target web (26) at a web speed through the nip region (30);

coordinating a rotational positioning of the knife member (44) with a rotational positioning of its cooperating anvil member (46) to provide an operative, cutting engagement between the knife member and its cooperating anvil member to thereby cut the moving web at cut locations (38) which are intermittently spaced along a machine-direction (22) of the web;

characterised by providing a speed difference between the moving knife-member (44) and its co-operating moving anvil-member (46) in the nip region (30)."

"9. An apparatus for intermittently cutting a moving target web (26), comprising:

a knife roll (32) which has at least one knife member (44) and is rotatable to provide an operative knife-member speed;

an anvil roll (34) which has at least one anvil member (46) and is rotatable to provide an operative anvil-member speed, the anvil roll (34) positioned to provide an operative nip region (30) between the anvil roll (34) and the knife roll (32);

a transport system (54) which moves a substantially continuous target web (26) at a web speed through the nip region (30);

a control system (36) which coordinates a rotational positioning of the knife member (44) with a rotational positioning of its cooperating anvil member (46) to provide an operative, cutting engagement between the knife member (44) and its cooperating anvil member (46) to thereby cut the moving web (26) at intermittent locations spaced along a longitudinal, machine-direction (22) of the web (26);

characterised in that said apparatus is configured to provide a speed difference between the moving knife member (44) and its co-operating anvil member (46) in the nip region (30)."

IV. In the examination proceedings the appellant had requested a decision according to the state of the file with 26 September 2012. The decision under appeal mentioned two communications of the examining division dated 29 June 2010 and 29 February 2012, wherein the applicant was informed that the application did not meet the requirements of the EPC and of the reasons for this finding, and the result of a consultation by telephone between a member of the examining division and the representative of the appellant, which took place on 14 September 2012.

V. The examining division was of the opinion (see the communication dated 29 June 2010, point 3.1) that the subject-matter of claims 1 and 14 as filed was known from the prior art and the problem of avoiding poor cutting/perforation quality via coordinating the rotational positioning of the knife member and anvil member was already solved by the prior art. The problem the invention as filed sought to solve was to provide a method and apparatus for intermittently cutting a moving target web allowing different spacings, cf page 2, lines 7 to 13, of the published version of the application as filed ("It has also been cumbersome and time-consuming to reconfigure conventional systems to produce different spacings between the desired cut locations along the lengthwise movement direction of the target web. As a result, there has been a continued need for improved cutting systems that provide improved reliability and versatility, along with an improved and more reliable definition of the perforation line."). This problem was solved by the subject-matter of claims 1 and 14 as filed, in particular by altering the web speed relative to the speed of the cooperating anvil and knife. Consequently, the search had been directed to the problem of cutting a moving web at different spacings.

Method claims 1 and 9 filed on 24 February 2010 contained (see the characterising parts of said claims) an additional feature taken from the description. A speed difference between the knife-member and the anvil-member did not affect the spacing of the cut locations in any way, and therefore was of no importance for the problem to be solved by the application as filed. The amended claims solved a different problem, namely to provide a more reliable and more consistent cutting operation (see said communication, point 3.2). The amended claims related to unsearched subject-matter which did not combine with the originally claimed invention to form a single general inventive concept (Rule 137(5) EPC).

In the communication dated 29 February 2012 (see points 1.3 and 1.4) the examining division reiterated that claims 1 and 14 as filed lacked novelty. Consequently, a lack of unity "a posteriori" had to be applied according to the April 2010 Guidelines for Examination C-VI, 5.2(ii), second paragraph. The first inventive concept underlying the main claim and its dependent claims as filed was defined in the passage on page 2, lines 7 to 13, of the application as filed. The effect of the second inventive concept (less wear of the anvil and knife blade and/or improved cutting performance) was unrelated to the effect of the first inventive concept (different spacing and/or sheet length).

VI. In support of its request, the appellant submitted the following:

The present case was one wherein an additional search ought to be conducted in accordance with the April 2010 Guidelines for Examination C-VI, 5.2(ii). According to the last part of the first paragraph of this section, an objection to an unsearched feature originally disclosed in the description, which was added to an originally filed claim in order to meet an objection, should not be made under Rule 137(5) EPC. In this case, however, an additional search may be required. An objection under Rule 137(5) EPC may be raised if an amendment related to a general inventive concept distinct from the general inventive concept of the main claim and its dependent claims (see the second paragraph of said section). However, this was not the case in the present application.

The problem addressed by original claim 1 was that high web processing speeds required high knife speeds, which resulted in high impact forces between the knife blades and the stationary anvil, cf paragraph [0003] of the application as filed. In order to control the impact force and reduce the wear that this caused, it was conventional for the interference between the knife blades and the anvil to be set to a relatively small value so as to reduce the wear, but this had resulted in poor quality perforations. In contrast to the conventional arrangement, wherein the anvil roll was stationary, the original independent claims required that both the knife roll and anvil roll rotated. Paragraph [0006] of the application as filed recited (see page 3, lines 6 to 9) that "the method and apparatus can provide better control of the relative speeds at which the co-operating anvil members and knife members contact or otherwise engage each other in the nip region between the knife and anvil rolls". It was therefore clear that the general inventive concept of original claim 1 was to rotate both the anvil roll and knife roll so that the web cutting operation could be performed at high speed whilst still controlling the relative speeds between the anvil roll and knife roll, so that the impact forces were not so high that they caused excessive wear and not too low to reliably cut the web.

The independent claims refused by the examining division required that there was a speed difference between the rotating knife member and the rotating anvil member in the nip region, cf paragraph [0006], page 3, lines 9 to 13. Paragraph [0006] further recited (see page 3, lines 14 to 16) that "[impact] loads between the knife member and its cooperating anvil member can be more efficiently and effectively controlled to provide a method and apparatus that can require less maintenance and provide greater reliability", see also paragraph [0030]. The general inventive concept of the claims refused by the examining division was therefore to rotate the knife and anvil rolls so that the web cutting operation can be performed at high speed whilst still controlling the relative speeds between the anvil and knife rolls so that the impact forces were not so high that they caused excessive wear and not too low to reliably cut the web. The inventive concept of these claims was therefore the same as for original claim 1 and was not distinct from the general inventive concept of original claim 1. Accordingly, an additional search ought to have been performed by the examining division, as required by the April 2010 Guidelines for Examination, C-VI, 5.2(ii).

In the communication of the examining division dated 29 February 2012 it was explained that the lack of unity "a posteriori" approach has been applied. However, this has not been applied correctly. The examining division objected that "the arguments of the applicant, that claims 1 and 14 are directed to the problem of providing a more reliable cutting operation cannot be followed, because claims 1 and 14 are not new over the prior art / general knowledge and therefore there was no objective problem when applying the unity a posteriori approach". According to decision T 1394/04, which was referred to in the relevant part of the Guidelines cited above, the fact that a prior art document destroyed the novelty of the subject matter of original claim 1 was not sufficient reason to establish lack of unity ("a posteriori"), see point 6 of the reasons, first paragraph. This paragraph went on to state that "In fact, as decision T 274/03 clearly demonstrates, if it is assumed, as is usually the case, that the original main claim contains at least in very broad terms the general inventive concept of the invention as set out further in the dependent claims, if any, and in the description, then it is certainly possible to determine whether later amendments form part of said general inventive concept, quite independently of the question whether the subject-matter of the main claim lacks novelty".

The examining division's approach therefore went against the reasoning in decision T 1394/04, because the general inventive concept common to original claim 1 and pending claim 1 (and which was described in the description) had been ignored on the basis that original claim 1 was considered to lack novelty and solved no objective problem. This was in contradiction to decision T 1394/04, which essentially stated that the assessment of a common general inventive concept should be performed independently of a review of the prior art. It was for this reason that lack of unity and unsearched subject matter objections were to be found "very rarely in practice" according to T 1394/04, point 6, second paragraph. The present case was not one of these very rare situations.