T 1050/09 07-04-2011

Reasons for the Decision

1. The appeal is admissible.

2. Remittal and refund of the appeal fee.

In deciding to revoke the patent the opposition division did not commit a substantial procedural violation.

The right to oral proceedings regulated by Article 116(1) EPC forms a substantial part of the right to be heard granted by Article 113(1) EPC. From this it follows that non-compliance with a request for oral proceedings deprives the party of an important opportunity for presenting his case in the manner he wishes and using the possibilities open to him under the EPC (see T 209/88, point 4.3 of the reasons for the decision).

Article 113(1) EPC, however, does not confer a formal position on a party to proceedings before the EPO but serves to ensure fair conduct of those proceedings. A successful party has no reason to doubt the correctness of the procedure leading to the decision in its favour. In accordance with the established case law of the boards of appeal (see Case Law, 6th edition, chapter VI.C.2.) the board consequently states that in the case of a request for oral proceedings by a party the opposition division has no power to issue a decision adversely affecting such party without first appointing oral proceedings (see T 686/92, point 3 of the reasons for the decision; T 795/91, point 3 of the reasons for the decision).

In the present case, however, in view of the positive conclusion in favour of the opponent the opposition division had reached regarding the question of novelty (see its communication dated 23 May 2008), oral proceedings at the unconditional request of the opponent would have served no purpose. The opposition division thus treated the opponent's request for oral proceedings as merely conditional in accordance with Articles 113(1) and 116(1) EPC (see T 494/92, point 2 of the reasons for the decision).

As stated above, it is true that a party to proceedings before the EPO has the right to present its case in the manner it wishes and using the possibilities open to it under the EPC. The party's right to oral proceedings, however, is subject to a clear request for such proceedings. With communication dated 23 May 2008 the opposition division informed the parties of its opinion that claim 1 was not novel and that revocation of the patent could be expected. Having received this communication without summons to oral proceedings it was up to the appellant to make a clear request for oral proceedings. The opposition division had no reason to investigate the proprietor's motivation with regard to procedural requests made by the opponent.

3. Article 123(2) EPC 2000

Claim 1 is based on claims 1 and 3 as originally filed. The latter claim relates to an embodiment allowing the possibility of updating the memory (see also paragraphs [0038] and [0039] of the application as published). Present dependent claim 3 adds the features disclosed in claim 4 as originally filed, which concerns an embodiment allowing the use of a plurality of rotational devices (see also paragraph [0043] of the application as published).

It is true that the application as filed does not state expressis verbis that said embodiments can be combined with each other. Nevertheless, it is apparent to the person skilled in the art that they relate to two independent preferred aspects of the claimed invention which can be combined without any difficulty. Therefore, the possibility of combining the features of originally filed claims 1, 3 and 4 is disclosed in the application as filed.

4. Novelty

4.1 D1/D1A discloses a rotational device comprising: an inner part (1) and an outer part (7), one of which is rotatable relative to the other; and main rotational bearings (2) disposed between the inner part and the outer part.

According to D1/D1A a lubricant is supplied to the bearing, which is mounted on a space flying object, by operating a pump at intervals of predetermined period or by a command from a ground installation (see abstract). This implies some sort of lubricant supply controller which provides a signal to initiate lubrication of the bearing when the period after lubrication reaches the predetermined period required between sequential lubrications for the bearing. Moreover, to perform this function the controller must comprise a memory which stores a measurement of the period elapsed since the last supply of lubricant and the predetermined period required between sequential lubrications of the rotational bearing (see in particular paragraphs [0011] and [0012]).

4.2 The appellant submitted that, since not all memories could be updated, a memory capable of being updated could not be seen as implicitly disclosed in D1/D1A. However, this argument is not convincing, since a memory not capable of being updated would not be used in a system of the type disclosed in D1, i.e. one which is partly mounted on a space flying object and can react to the data from a temperature sensor and rotational frequency counter (see paragraph [0012]). Therefore, the memory of the device disclosed in D1/D1A is capable of updating the predetermined period required between sequential lubrications if the time actually required between lubrications is less than that suggested by the predetermined period stored in the memory.

4.3 However, D1/D1A does not describe that the period elapsed since the last supply of lubricant and the predetermined period required between sequential lubrications are measured as a number of revolutions. Nor is this feature implicitly disclosed by the fact that the rotational frequency is measured, as D1 does not describe how exactly this measurement is used to decide that lubricant is needed. Accordingly, the subject-matter of claim 1 is novel.

5. Inventive step

5.1 Starting from the device disclosed in D1/D1A, the object underlying the claimed invention can be seen in selecting a unit for measuring the period elapsed since the last supply of lubricant and the predetermined period required between sequential lubrications. This object is achieved by selecting the number of revolutions of the bearing to measure said periods.

Contrary to the appellant's submission, the object underlying the claimed invention cannot be seen as simplifying the device of D1, since the measurements of the temperature and rotational frequency of the bearing in addition to the number of revolutions are not excluded in the claimed bearing.

5.2 It is true, as argued by the appellant, that D1/D1A does not mention the number of revolutions of the bearing. However, this parameter was commonly used when assessing the need for lubrication of a bearing, for instance when considering the so-called "Dmn value", whose use was common in the art, as acknowledged in the patent itself (see paragraph [0004]). Moreover, it is apparent that the number of revolutions can be used to express the length of the interval between two successive lubrications, since lubricant consumption increases with the number of revolutions.

Contrary to the appellant's submission, D1 does not lead away from the use of this parameter, since the wording "predetermined period" in paragraph [0011] merely indicates the predetermined length of the interval between two successive lubrications, without defining how said length is to be measured.

5.3 Therefore, it was obvious to achieve the object above by selecting, when realising the device shown in D1/D1A, the number of revolutions of the bearing as a unit for measuring the period elapsed since the last supply of lubricant and the predetermined period required between sequential lubrications. Accordingly, the subject-matter of claim 1 does not involve an inventive step.