T 2285/08 15-04-2011

Summary of Facts and Submissions

I. The appellant (patent proprietor) lodged an appeal against the decision of the Opposition Division posted on 10 October 2008 revoking European patent No. 1 109 657 on the grounds of Article 100(c) EPC.

II. Oral proceedings were held before the Board of Appeal on 15 April 2011.

III. The appellant requested that the decision under appeal be set aside and that the patent in suit be maintained on the basis of the set of claims filed on 20 January 2009 (main request), or, as an auxiliary measure, that the patent in suit be maintained on the basis of the set of claims filed as auxiliary request 1 on 14 March 2011.

The respondent (opponent) requested that the appeal be dismissed.

IV. Independent claim 1 according to the main request reads as follows:

"1. Method for producing items of composite material, for example fibre reinforced material such as glass fibre reinforced epoxy or polyester, which items constitute partly closed structures containing cavities (2), which method comprises:

a) that the reinforcement material such as fibre and/or matrix material, which optionally may be pre-impregnated with moulding material, is placed around a mould core (7, 8) consisting of an outer part (7) of a flexible material and an extractable filling material (8, 10, 11) arranged inside the outer part (7),

b) that the reinforcement material is moulded with the moulding material,

c) that the composite material subsequently hardens or cures,

d) that the extractable filling material (8) of the mould core subsequently is taken out through at least one opening in the flexible outer part of the mould core and further taken out through at least one opening (3) in the item (1) produced,

e) that the filling material (8, 10, 11) of the mould core is mouldable and that the filling material (8, 10, 11) of the mould core or mould cores comprises a material consisting of parts (10, 11) being substantially smaller in relation to the extension of the moulding core

f) that the filling material is removed after hardening or curing of the composite material,

characterised in

- that a string (12) or the like is secured to the filling material, and the filling material is pulled out through the opening of the item produced by pulling the string, and

- that the filling material comprises pieces (10), being constituted by an elastically deformable material (11), while the volume of the filling material is reduced to a cross section which is smaller than the opening (3) of the item (1) produced, when the filling material is pulled through the opening of the item produced".

V. The arguments of the appellant in the written and oral proceedings can be summarised as follows:

Admissibility of the appeal

The patent was revoked on the grounds of Article 100(c) EPC, since the Opposition Division held that the amendments to respective claim 1 of the main request and of the first and second auxiliary requests introduced subject-matter extending beyond the contents of the patent application as filed, Article 123(2) EPC.

Granted claims 1 to 13 are replaced by claims 1 to 7 filed with the statement of the grounds of appeal. Replacement claim 1 is based on a combination of granted claim 1 with the second alternative of granted claim 9. The filing of the amended claims obviates the objection under Article 123(2) EPC and therefore deprives the contested decision of its basis. The appeal is therefore admissible.

Admissibility of the main request

In accordance with current case law, the patent proprietor is entitled to claim the full scope of the original disclosure in appeal after revocation. Independently thereof, in the present case, the subject-matter of claim 1 of the main request was already present as independent claim 15 of the then auxiliary request 1 on which, amongst others, the decision of the opposition division is based. Furthermore, the inclusion of subject-matter from granted claim 9 into granted claim 1 further focuses the scope of claim 1 of the main request without introducing completely new subject-matter. The main request is therefore admissible.

Clarity and sufficiency of disclosure

The skilled person is able to understand that "the volume of the filling material is reduced to a cross section which is smaller than the opening (3)" does not refer to the filling material as a whole but to the individual parts 11 as they pass through the opening (paragraphs [0032], [0033], [0041] and [0042], patent as published).

Therefore, the subject-matter of claim 1 of the main request not only meets the clarity requirements of Article 84 EPC, but the invention is also disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art in accordance with Article 83 EPC.

Article 123(2) and (3) EPC

Claim 1 of the main request is based on claims 1, 7 and 9 as filed. Furthermore, the skilled person would consider the terms "parts" and "pieces" to be synonymous in the context of the present patent (see also figure 4 and description page 8, lines 11 to 31 of the application as published).

The additional inclusion of subject-matter from granted claim 9 into granted claim 1 results in a narrower scope of protection.

Therefore, the subject-matter of claim 1 of the main request meets the requirements of Article 123(2) and (3) EPC.

VI. The arguments of the respondent in the written and oral proceedings can be summarised as follows:

Admissibility of the appeal

According to Enlarged Board of Appeal decision G 9/91 the "purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the opposition division on its merits". However, the grounds of appeal lack sufficient substantiation as to why the contested decision should be erroneous.

Furthermore, the appellant is not adversely affected by the decision as required by Article 107 EPC, since he actively abandoned claims based on claims 1 and 9 as granted instead of obtaining a decision on their allowability.

The appeal is therefore not admissible.

Admissibility of the main request

The appellant pursues as main request a new independent claim which, although based on claims 1 and 9 as granted, extends beyond the requests discussed during the opposition procedure and thus constitutes a violation of Article 123(3) EPC. Filing new requests raising issues never considered by the opposition division is not in accordance with the main purpose of appeal proceedings according to the above quote from Enlarged Board of Appeal decision G 9/91.

Furthermore, the appellant has, during the opposition proceedings, from the beginning only requested that the patent be maintained in amended form. In this context it is noted that the subject-matter of claim 1 of the now main request corresponds to the subject-matter of requests already presented during the opposition proceedings, (for example, claim 15 of auxiliary claim set 4 filed on 22 August 2008). However, all of these requests were withdrawn by the appellant during the opposition proceedings. In so doing the appellant actively chose not to pursue the allowance of these claims. Accordingly, the appellant is not allowed to appeal the decision and the introduction of the present main request into the appeal procedure is used only as a measure of protracting the procedure and hence constitutes an abuse of procedure which renders it inadmissible as well.

Therefore, the appellant's main request should not be admitted in the appeal proceedings.

Clarity

According to claim 1 (main request), "the volume of the filling material is reduced to a cross section which is smaller than the opening (3) of the item (1) produced". It is unclear as to how a person skilled in the art would reduce a three-dimensional volume to a two-dimensional cross-section. Therefore, claim 1 (main request) does not meet the clarity requirement of Article 84 EPC.

Insufficiency of disclosure

In the feature of claim 1 (main request), "the volume of the filling material is reduced to a cross section which is smaller than the opening (3) of the item (1) produced", the reduction relates to the total volume of the filling material. This leaves the skilled person in doubt as to how to go about reducing the total volume of the filling material by the required several factors to a size, where the filling material can be easily removed, and at the same time making the core part strong enough to support a layup procedure in which reinforcement material (e.g. fibre glass) is placed around the mould core as stated in step a) of claim 1 (main request). Alternatively, the filling material would have to be pulled out of the cavity with an unrealistically high pulling force, which cannot be carried out without either breaking the string, stripping the filling material off the string or breaking the shell of the item being manufactured. These arguments apply all the more so for the manufacture of large wind turbine blades as envisaged by the patent in suit.

Therefore, the invention is not disclosed in a manner sufficiently clear and complete to enable it to be carried out by a person skilled in the art (Article 83 EPC).

Added subject matter

Claim 9 as filed does not mention that "the filling material comprises pieces (10), being constituted by an elastically deformable material (11)". The inclusion of this feature in claim 1 of the main request introduces new subject-matter in violation of Article 123(2) EPC.