T 1252/01 05-05-2004

Reasons for the Decision

1. Interpretation of claim 1

1.1. Claim 1 specifies shaped particles having a consistent cross-sectional shape along a longitudinal axis. The Board understands this feature as defining the longitudinal axis. The Board understands the feature that the cross-sectional shape is consistent as meaning that that the ratios between the various cross-sectional dimensions do not change along the axis even though the magnitude of the individual dimensions may vary. In the case of a rectangular cross-section this means that the ratio of the lengths of the perpendicular sides does not change along the longitudinal axis even if their magnitudes do change. A shape which remains rectangular along the longitudinal axis but with varying ratios between the lengths of the perpendicular sides of the rectangle does not, in the view of the Board, provide a consistent cross-section in the sense of claim 1. This view was confirmed by the appellant.

The Board is also of the opinion that the reference in the claim to aspect ratio cannot be taken in isolation from the rest of the claim. The term longitudinal inherently refers to length. Since a longitudinal axis has been defined in the claim it is clear that the aspect ratio must be seen in the light of this definition. This means that for deriving the length to be considered for the aspect ratio the starting point is the longitudinal axis. This length should then be compared with the dimensions perpendicular thereto, as is normal for the aspect ratio. This view of the Board is consistent with the description of the patent.

1.2. Claim 1 specifies a fibrous web with adhesive particles adhered thereto. The Board understands by this that the particles are adhered to the surface of the web as opposed to the interior of the web. This interpretation is consistent with the description of the patent.

2. Novelty

2.1. The appellant has argued that document D1 does not disclose a nonwoven fibrous web with abrasive particles adhered thereto. The Board agrees with the appellant. Document D1 discloses that alumina fibres as abrasive fibres together with other fibres may be bonded with a resin (column 1, lines 68 and column 2, lines 51 to 63). In the opinion of the Board this does not constitute a disclosure of a web. There is no indication that the connections between the fibres are such that a nonwoven fibrous web is formed and that abrasive particles are attached thereto. Rather there is a disclosure of a simple mixture of two types of fibre and a resin. Also, in Example 1 of the document, to which the respondent referred, there is merely a statement that unidirectional alumina fibres were spread to make a sheet which was sandwiched between resin films. Again here there is no indication that a web is formed and no indication that abrasive particles are attached to such a web. Document D1 does not therefore take away the novelty of claim 1.

2.2. Document D2 discloses individually many of the features of claim 1. However, the document does not disclose these features in combination. The document is not directed exclusively to abrasive materials. In column 11, lines 19 to 22. there are mentioned eight products. Only one of the products is an abrasive grain. It is disclosed that abrasive grain may be used in conventional abrasive products which include not just nonwoven webs (column 11, lines 34 to 46) but also other types of abrasive products (column 11, lines 47 to 60). The abrasive grain may be shaped by cutting or machining (column 7, lines 16 to 17), or alternatively crushed (column 7, lines 17 to 21) to a shape which is presumably an irregular shape. In this respect the Board does not agree with the appellant that in every case the grain is crushed since the sentence in column 7, lines 16 to 19 quite clearly describes two alternative processes. Examples 1 to 5 of document D2 do not disclose the production of an abrasive. Example 6 discloses the production of abrasive grain by crushing (column 16, line 63 to column 17, line 3), which would produce irregular shapes. Example 7 uses the abrasive grain according to Example 6 (column 17, lines 62 to 65). Examples 8 to 11 disclose the production of fibres without however indicating any abrasive use. According to column 4, lines 11 to 18 the fibres have a number of uses. None of these uses is an abrasive use. According to column 4, lines 4 to 11 the abrasive embodiments make use of abrasive grains. Although the shaping of grains is disclosed there is no indication in the document that the abrasive grains according to document D2 have a shape corresponding to the characterising portion of claim 1. Document D2 does not therefore take away the novelty of claim 1.

2.3. Document D3 discloses an abrasive product having the features of the preamble of claim 1 and the appellant has not disputed this view. The appellant however disputes that the abrasive material has a form corresponding to the characterising portion of claim 1. When applying the earlier mentioned interpretation of aspect ratio to document D3 the conclusion is reached that the document does not disclose the characterising feature of claim 1 but rather the opposite. Document D3 uses a definition of aspect ratio which, even if it may be conventional, is the opposite of the definition used in claim 1. This means that the statement in document D3 referring to an aspect ration of 1.5:1 or more leads, in the terminology of claim 1, to a disclosure of an aspect ratio of 0.67:1 or less.

The respondent and the Opposition Division took the view that the aspect ratio must be considered separately from the definition of the longitudinal axis. They considered that the conventional definition of aspect ratio should be used which they considered to be that the greatest dimension is taken and then this is divided by the greatest dimension perpendicular thereto. The Board cannot agree with this view. The longitudinal axis is defined in the claim with respect to the axis along which the material has a consistent cross-sectional shape. The term longitudinal by definition implies lengthwise and hence the longitudinal axis specifies a length. Since the claim immediately after defining the longitudinal axis defines an aspect ratio it is quite clear that these two features cannot be taken isolation but must be considered together. The defined longitudinal axis must be used for the length when deriving the aspect ratio. The greatest perpendicular dimension to this longitudinal axis must be used to calculate the aspect ratio.

The Board has considered the application of the definition in claim 1 to document D3 by considering which axes of the abrasive particles may be considered to correspond to the longitudinal axis as defined in claim 1 and which aspect ratios may then be derived. In the case of the triangular shapes mentioned for instance in Example 1, it is not possible to identify a longitudinal axis in accordance with claim 1 other than the axis which is perpendicular to the plane of the triangle. If an axis is considered in the plane of the triangle which passes through an apex of the triangle then the cross-sectional shape will not be consistent along the axis. The cross-sectional shape will be rectangular but the ratio of the lengths of the sides will vary along the axis. The same applies to the disc shape in Example 2 if a diameter is used as an axis. In the case of the square shape disclosed in Example 3 an axis passing through one of the side face will have a rectangular cross-section perpendicular thereto. This shape will also be consistent along the axis, without indeed the dimensions changing. However, the greatest perpendicular dimension - a diagonal across the face of the rectangular cross-section - will in fact be slightly greater than the length along the axis. This implies an aspect ratio in the sense of claim 1 which is less than 1:1. Examples 4 to 11 all disclose triangular shapes so that the same considerations apply as to Example 1. The Board therefore concludes that none of the abrasive particles disclosed in document D3 comply with the characterising feature of claim 1. Document D3 does not therefore take away the novelty of claim 1.

2.4. Document D12 discloses the preparation of abrasive grains and their application to certain types of abrasive products. On page 13, line 14 to page 14, line 3 a nonwoven web is disclosed as a backing. Abrasive grain, as described in the document, is adhered to the backing by an organic binder. The Board considers that the skilled person would implicitly understand a polymer as the organic binder. The Board is therefore satisfied that this passage discloses the preamble of claim 1. In the section of document D12 which describes the preparation of the base grits the shaping of a gel is described on page 8, lines 18 to 24. Five specific shapes are described. The respondent specifically referred to the shape of a rod and indeed there is no indication or possible expectation that the other shapes would necessarily have an aspect ratio approaching 1.5:1 or more. The shape of a disk for instance seems to imply an aspect ratio of less than 1:1. With regards to the rod the Board is aware that the normal expectation is that this shape is long relative to its width. However, the Board considers that the term must be considered in the context of its disclosure and taking into account the fact that it is one of five possible shapes. The Board considers that in this particular instance a rod shape does not imply a length which is necessarily much greater than its width. In the case of a rod with circular cross-section if the length were less than its diameter it would be termed a disk. Since a disk is also mentioned as a possible shape the Board considers that the only implicit disclosure derivable from the term rod in the context is that it has a length greater than its diameter. This disclosure does not go so far as to imply a length of 1.5:1 or more times the width. Indeed, such an implication would mean that the rod is very different to the four other disclosed shapes. The Board has also considered the shapes disclosed in figure 1 which is a coated abrasive product. The shapes appear to be irregular and the maximum perpendicular dimension cannot be ascertained since the figure only shows two dimensions and knowledge of three dimensions is needed to derive the maximum dimension.

The Board considers that document D12 does not disclose the rod shape in combination with the features of the preamble of claim 1. The rod shape is one of five shapes in a list. Also on page 13, line 16 the nonwoven web is disclosed as one of five backing materials, wherein some of the others, e.g. cloth, are not a nonwoven web. This means that there is no specific disclosure of the said combination, nor is the number of possible combinations so small as that it could be considered that all combinations are specifically disclosed.

With respect to document D12 the respondent referred to the embodiment of figure 3, referring to page 14, lines 17. to 25. However, the abrasive grains are stated to be distributed throughout the structure and bonded therein in contrast to claim 1 which requires that they be adhered thereto. Moreover, as explained above the rod shaped grains are not disclosed to have the required aspect ratio.

Document D12 does not therefore take away the novelty of claim 1.

2.5. The disclosure of documents D13 and D14 does not go beyond that of document D12. Neither of documents D13 and D14 therefore takes away the novelty of claim 1.

2.6. Therefore, the subject-matter of claim 1 is novel in the sense of Article 54 EPC.

3. Insufficiency

3.1. This ground was mentioned for the first time during appeal proceedings. The proprietor however agreed that the ground could be introduced into the appeal proceedings.

3.2. Claim 1 sets out a definition of the aspect ratio. This definition may be different to that which is conventional in the art. However, the description describes methods of molding abrasive particles which comply with this definition. The Board can see no reason therefore why the skilled person cannot carry out the teaching of claim 1. The mere fact that the definition of aspect ratio may differ from the conventional does not prevent the skilled person from carrying out the teaching of claim 1 since the description is consistent with the definition used in claim 1.

3.3. Therefore, the invention as claimed in claim 1 of the patent is sufficiently disclosed in the sense of Article 83 EPC.

4. Late filed evidence

During the appeal proceedings the appellant filed the results of tests performed by the appellant. The appellant indicated that these tests related to the question of inventive step. The Board did not therefore take a decision as to whether this evidence should be admitted into the proceedings.

5. Remittal to the First Instance

The Opposition Division has not yet examined claim 1 with regard to inventive step. In accordance with Article 111(1) EPC, the Board therefore considers it appropriate to remit the case to the first instance so as to give the parties the possibility to argue their case before two instances.