T 0819/14 23-02-2016

I. With the decision dated 5 February 2014 the opposition division rejected the opposition against the European patent no. 1 580 388. In particular, the opposition division found that the subject-matter of claim 1 of the patent was new and involved an inventive step.

II. The appellant (opponent) filed an appeal against this decision. The notice of appeal and the statement setting out the grounds of appeal were filed within the given time limits and in due form.

III. Oral proceedings took place before the Board of Appeal on 23 February 2016.

IV. The appellant requested that the decision under appeal be set aside and that the patent be revoked.

The respondent (patent proprietor) requested that the appeal be dismissed, or in the alternative, that the patent be maintained in amended form according to one of the first or second auxiliary requests filed with the letter dated 17 December 2014.

V. Claim 1 of the main request (patent as granted) reads:

"A longitudinally extending thermally insulating bar-like body (11) for making metal thermal-break sections,

a) the body (11) having a cross-section comprising a stem (12) and two enlarged end heads (13), the enlarged end heads (13) being provided substantially at the respective ends of said stem (12),

b) said enlarged end heads (13) having a profile, in cross section, substantially in the form of a trapezium with its longer base forming a first support surface (13d) for engaging with a corresponding bottom surface (14d) of a recess for the said thermally insulating body and with its inclined sides for engaging with longitudinal inclined retaining teeth or longitudinal shoulders of metal half-shells, characterized in that

c) said body further comprises a first male member (15b) and a corresponding first female member (15a) that are suitable to mate with a female member (15a) and a male member (15b), respectively, of an analogous thermally insulating body in order to form a substantially tubular-like thermally insulating body,

d) said first male and female members (15b, 15a) are arranged substantially at the ends of said stem (12) in proximity of said enlarged end heads (13)."

The other requests are not relevant for this decision.

VI. The following documents are cited in this decision:

E1: WO 2005/008011 A2

D2: CH 654 897 A5

D3: DE 26 34 668 A

VII. The appellant argued essentially the following:

a) Novelty

The subject-matter of claim 1 was not new with respect to E1, which was state of the art under Article 54(3) EPC, and with respect to D3, which was state of the art according to Article 54(2) EPC.

E1 disclosed a longitudinally extending thermally insulating bar-like body with enlarged end heads, see below an enlargement of Figure 3 (taken from the statement setting out the grounds of appeal).

longer base inclined sides teeth

FORMULA/TABLE/GRAPHIC

wire trapezium bottom surface

Claim 1 required that the end heads had a profile, in cross section, substantially in the form of a trapezium. Because of the term "substantially" this feature was to be broadly interpreted. The end heads shown in Figure 3 of E1 were indeed substantially in the form of a trapezium. Even if it were to be considered that this was not the case, E1 further disclosed, page 9, 2nd paragraph, that the projections 32 were pressed into the head - this deformation of the head would result inevitably in a trapezoidally shaped head, especially if the wire 9, which was described as optional, were to be omitted. The body shown in Figure 3 further comprised male and female members as claimed. Hence all features of claim 1 were known from E1.

D3, Figure 14, also disclosed a bar-like body with enlarged end heads, see below.

Longer base 2nd inclined side End head

FORMULA/TABLE/GRAPHIC

1st inclined side of trapezium The functional part of the head was formed by the surfaces, shown in bold above, that were in contact with the recess. The remainder of the head did not play a role in the function of the head and could therefore be disregarded. The shape formed by these surfaces was a trapezium, see figure above. The bar-like body also had male and female members, see the parts indicated with reference sign 6. Thus, all features of claim 1 were known from D3. The subject-matter of claim 1 was therefore not new (Article 54 EPC). b) Inventive step D2 was the most relevant prior art and disclosed all features of claim 1 except that one male and one female connecting member were provided. D2 however disclosed that male / female members could be provided (page 4, right hand column, lines 1-3).

The end head shown in D2 was in the form of a trapezium. The longer base could be seen as being suitable to be used as the support surface in a recess because the recess was not part of the claimed object. Should this feature not be regarded as being known from D2 then it was, in any case, merely an everyday workshop modification for the person skilled in the art.

The problem to be solved was therefore simply to provide an alternative arrangement to that known from D2.

The skilled person would arrive at the subject-matter of claim 1 as part of his normal design work because the choice of male / female members for connecting the two stems merely involved a simple choice amongst a very limited number of possibilities in order to arrive at the subject-matter of claim 1.

The subject-matter of claim 1 did not therefore involve an inventive step with regards to D2.

VIII. The respondent argued essentially the following:

a) Novelty

E1 did not disclose an end head in the form of a trapezium but rather a rectangular end head 4. E1, page 9, lines 10-12, disclosed that the end heads had sides that were arranged substantially perpendicularly to each other. Therefore, the end heads shown in E1 did not have inclined sides as required by feature (b) because the feature of inclined sides excluded a perpendicular end form. Also the use of the plural for "sides" meant that there had to be at least two inclined sides.

D3 disclosed a bar-like body with rectangular end heads.

The end heads did not have inclined sides. Moreover, even if a trapezium could be seen in the end heads, the "longer base" would not be suitable to form a support surface for engaging with a corresponding bottom surface of a recess. Although the recess was not part of the claimed object it was still necessary for the end head to have a certain arrangement in order to be suitable for this purpose.

Therefore the subject-matter of claim 1 was new with respect to both E1 and D3.

b) Inventive step

D2 disclosed an end head in the form of a trapezium.

However this end head did not have inclined sides because it had only one inclined side and not a plurality. The end head was arranged so that the shorter base provided the support surface for engaging with a corresponding bottom surface of a recess. The longer base provided the connection to the stem and, thus, was not suitable to provide the support surface. Moreover, D2 did not disclose a first male member and a first female member.

The problem to be solved by the patent was to provide a thermally insulating bar-like body which may be adapted

to different housings, see patent, paragraph [0005].

Faced with this problem, or even the problem suggested by the appellant, the cited prior art did not provide any hint that would have led the person skilled in the art to the solution claimed in the patent.

Therefore, the subject-matter of claim 1 involved an inventive step.