T 1596/14 19-11-2018

Reasons for the Decision

1. Admissibility of the appeal of the patent proprietor

The opposition division's finding of lack of inventive step of claim 1 as granted starting from document D16 assumed that the feature ("in such a way that the force required for the securing of the insert pipe (21) in the second position is absorbed by the outer surface (4) of the pipe (1, 1*)") of claim 1 as granted was disclosed in document D16. Should this not be the case, then the opposition division's decision in this respect cannot stand as it is, because it necessarily does not take into account the new arguments con­cer­ning the above feature advanced by appellant I on appeal.

By contesting the disclosure of the above feature in document D16, appel­lant I has provided at least one legal or factual ground as to why the deci­sion of the opposition divi­sion should be set aside. The requirements of rule 99(2) EPC are satisfied.

There is thus no reason not to admit the appeal of appellant I into the proceedings (rule 101(1) EPC): the appeal of appellant I is admitted.

2. Admissibility of the new main request and of amended auxiliary request I

2.1 According to article 13(3) of the rules of procedure of the boards of appeal (RPBA), "amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

This is not the case with the new main request or with amended auxiliary request I, because the set of claims corresponding to the new main request was already filed with the grounds of appeal as auxiliary request III. Similarly, the set of claims corresponding to amended auxiliary request I concern a minor amendment to the claims according to the new main request, in reaction to an objection under article 123(2) EPC raised by appellant II. The new main request and the amended auxi­liary request I limit appellant I's previous requests in reaction to the objections raised by appellant II and repeated in the preliminary opinion of the board. These requests thus do not raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings. In particular, amended auxiliary request I does not create a new case and cannot surprise appellant II. In consequence, the article 13(3) RPBA is not appli­cable to the new main request and the amended auxiliary request I.

2.2 According to article 13(1) RPBA, "any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy".

Since the new main request and the amended auxiliary request I are based on auxiliary request III filed with the grounds of appeal and limit appellant I's previous requests in reaction to the preliminary opinion of the board, neither the complexity of the new subject-matter submitted, nor the current state of the proceedings nor the need for procedural economy stand in the way of admitting these requests.

Appellant II's opinion that amended auxiliary request I filed during the auxiliary proceedings constitutes an intentional abuse of procedure is merely speculative, since there is no evidence that the omission of the feature from claim 9 of the new auxiliary request I is not merely accidental. Correcting such an obvious error does not amount to an abuse of procedure.

Furthermore, appellant II correctly presumed that the previous auxiliary requests of appellant I were with­drawn. Appellant I confirmed his request situation as soon as the doubts of appellant II in this respect became known to him.

Thus there is no reason why the board should not admit the new main request and the amended auxiliary request I on this basis.

2.3 According to article 12(4) RPBA, the board has the power "to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings".

The first instance proceedings in this respect can be summarised as follows:

- The provisional opinion of the opposition division of 13 February 2014 issued with the summons to oral proceedings was favourable to appellant I.

- With letter of 1 May 2014 appellant II filed document D16 and briefly outlined a lack of novelty with respect to document D16.

- With fax of 13 May 2014 appellant I reacted to (late filed) document D16 and argued that the subject-matter of granted claim 1 was new with respect to this document.

- With a 27 page long letter of 13 May 2014 appellant II filed further documents D17 to D20 (points 1.2 and 1.3) and inter alia argued in detail a lack of novelty with respect to document D16 (point 3.1) and a lack of inventive step with respect to docu­ment D16 in combi­nation with document D5 (point 11).

- With a further letter of 16 May 2014 appellant II reacted to appellant I's fax of 13 May 2014 and argued in favour of the admissibility of document D16 and the lack of novelty of the subject-matter of granted claim 1 with respect to document D16.

- With fax of 10 June 2014 appellant I reacted to appellant II's letter of 13 May 2014 and protested about the amount of material provided by appellant II therein and inter alia re-iterated its argument that the subject-matter of granted claim 1 was new with respect to document D16. Appellant I in particular argued that :

- "in terms of the number of pages used for sub­mit­ting the views of the Opponent, many many more pages have been submitted after the end of the opposition term as compared to the number of pages submitted before the end of the opposition term";

- "the total amount of information and documenta­tion of which it is as yet unclear whether this will be admitted into the proceedings or not is consequent­ly much larger than the amount of information and documentation of which it is clear that it has been admitted into the procee­dings"; and

- "the annex to the Summons aims to assist parties in preparation for the oral proceedings. Under the present circumstances, it is very unclear what the Opposition Division will consider as important for discussing during the oral procee­dings".

- During the oral proceedings on 13 June 2014 docu­ment D16 was admitted into the proceedings and the subject-matter of claim 1 of the patent as granted was found to lack an inventive step with respect to document D16 in combination with document D5.

Thus, although appellant I could theoretically have prepared suitable fallback requests in view of document D16, the board does not consider that it was readily evident for appellant I to anticipate which of the numerous late filed additional lines of argumentation of appellant II might succeed (even though the preli­minary opinion of the opposition division was in favour of appellant I), while preparing for all possible out­comes would not appear to be practical for the same reasons, i.e. because the large number of late filed additional lines of argumentation of appellant II.

2.4 In consequence, the board uses its discretion to admit the new main request and amended auxiliary request I into the proceedings.

3. Claims 1 and 9 according to the new main request - article 123(2) EPC

A lever drawn over a dead centre position is only disclosed in the application as published, page 4, lines 5 to 13. However, the phrase "so the lever engages the insert pipe in the second position" was omitted from this passage.

The fact that "the displacement means comprises a lever which acts on the insert pipe" (see current claim 1 and appli­cation as published, page 4, line 10) is not ne­ces­sarily related to the end position of the lever when it serves as "locking means" (see current claim 1 and application as published page 4, lines 11 to 13). A statement to the effect that the lever "acts on the in­sert pipe" during displacement thus leaves open whe­ther the lever actually "engages the insert pipe in the se­cond posi­tion" when acting as "locking means" once the insert pipe 21 has reached its second position. Fur­ther­more, a lever may act indirectly on an insert pipe 21 without actually engaging it. The omission thus adds subject-matter, because there is no basis in the appli­cation as filed for claims according to the new main request without the lever engaging the insert pipe in the second position.

Thus claims 1 and 9 according to the new main request do not meet the requirements of article 123(2) EPC.

4. Amended auxiliary request I - Amendments

4.1 The added subject-matter objection raised in the context of the new main request (point 3. above) was overcome by adding the missing feature into claims 1 and 9 of the amended auxiliary request I and was not contested by appellant II.

4.2 The text "due to an outward bending of the blocking ring" further added to claims 1 and 9 was contested by appellant II.

4.3 The board notes that this amendment does not add any substantive information, because the independent claims as granted already require the feature "the outer dia­meter of the blocking ring being larger in the folded form than in the stretched form". Since "folding" im­plies "bending" to achieve the fold, the skilled person would already expect the blocking ring to bend out­wards. This corres­ponds to appellant I's position that the amendment merely constitutes a further explanation. Appellant II's objection with respect to the clarity of the expression "outward bending", is an objection rela­ting to the breadth of this expression when viewed in isolation rather than a lack of clarity when read in the context of the claim as a whole. Thus the amendment meets the requi­re­ments of article 84 EPC.

4.4 According to the description as filed, the "compressive force acting on the blocking ring causes the blocking ring to bend outward in its radial direction, as a result of which the outer diameter of the blocking ring increa­ses. The outward bending brings the blocking ring into its folded state" (application as published, page 2, lines 6 to 9). The application as filed thus provi­des a clear basis for this amendment.

4.5 One of appellant II's objections under article 123(2) EPC relates to the [axial compressive] force needed to bend the blocking ring into its folded form. However, a force is not a structural feature of the claimed appa­ratus and method: the relevant structural features such as the insert pipe and its displace­ment causing the bending and folding are already pre­sent in claims 1 and 9. Not explicitly additionally mentioning the axial compressive force in the text of the claims thus does not give rise to any intermediate genera­li­sation.

4.6 Appellant II further objected that for method claim 9 this amendment extended beyond the appli­cation as filed, because some aspects were only obtai­ned from device embodiments. However, the passage in the application as filed (WO-publi­cation, page 4, lines 5 to 13) is in the general part of the disclo­sure and is thus to be read in the context of the first two lines of the application which similarly refer to the method in general. Thus there is no added subject-matter due to a generalisation selectively extracted from device embodiments.

4.7 The subject-matter of claims 1 and 9 thus meets the requirements of article 123(2) EPC.

5. Amended auxiliary request I - Sufficiency of disclosure (article 83 EPC 1973)

5.1 There is no explicit detailed example of a lever confi­guration in the figures of the application as filed, such that the lever also serves as locking means when it is drawn over a dead centre position when the insert pipe is moved from the first position to the second position. However, such a lever is clearly disclosed in the general part of the description (page 4, lines 10 to 15) and as variants of two embodiments (page 6, lines 33 to 39 and page 8, lines 20 to 22). A patent description is written for the skilled person. In this case the relevant skilled person is a mechanical engineer with experience in the technical field of pipe connec­tions.

5.2 The board considers that basic mechanisms are part of the common general knowledge of a mecha­nical engineer, since they necessa­rily form part of the training required to obtain a mechanical engineering qualifi­cation. One such basic mechanism is a lever confi­guration such that the lever locks, when it is drawn over a dead centre position. In consequence, the indications provided in the descrip­tion are sufficient for the skilled person to be able to practice the invention in terms of a lever confi­guration such that the lever also serves as locking means when it is drawn over a dead centre position when the insert pipe is moved from the first position to the second posi­tion. Thus the requirements of article 84 EPC 1973 are also met.

5.3 In consequence, there is no lack of disclosure and the requirements of article 83 EPC 1973 are met.

6. Amended auxiliary request I - Claims 1 and 9 - Novelty (article 54 EPC 1973)

6.1 Document D2 discloses a "coupling sleeve for connection of a branch pipe to a main pipe" (column 1, lines 3 and 4). There are only two features which were contentious between the parties: the initial shape of the seal and the locking means for the lever.

6.2 Document D2 does not disclose the initial shape of the seal 8 corresponding to the first position. How­ever, for the correct operation of the disclosed con­nec­tor, it must be nevertheless possible to insert the coupling into the main pipe and this implies that the seal 8 can pass into the main pipe through the opening in the wall of the main pipe.

The opposition division decided that "the as­sumption of the initial shape of the seal corresponding to the first position - based on customary practice is specu­lative. The subject-matter of claim 1 [as granted] is new in view of D2" (point II.4.4). In the absence of a direct and unambiguous disclosure of the seal in a stretched configuration, the board has no reason to depart from the conclusion reached by the opposition division.

Appellant II's argument that the stretched configu­ra­tion should be merely interpreted as any configuration which allows the seal 8 to pass into the main pipe can­not be followed as it would go against the explicit wording of claims 1 and 9 of the amended auxiliary request I which requires a stretched form of the blocking ring (article 84 EPC 1973, first sentence).

6.3 In addition, document D2 does not disclose a confi­gura­tion of the lever such that it is drawn over a dead centre position.

6.4 Appellant II's argument that in the absence of a concrete embodiment of such a lever in the patent in suit, the expression "drawn over a dead centre posi­tion" should be interpreted as any stable position cannot be followed, because it would go against the actual wording used in claims 1 and 9 (see point 5.2 above), which require the lever to be configured such that it is drawn over a dead centre position when the insert pipe is moved from the first to the second position.

6.5 Appellant II's arguments that figures 1, 2 or 4a of document D2 disclose levers that are drawn over a dead centre position when the insert pipe is moved from the first position to the second position finds no support in the description which discloses other means for securing these levers:

FORMULA/TABLE/GRAPHIC

- figure 1: "securing means are present in the form of a protuberance 11 on the lever and an inwardly curved lip 12 in the side walls 13 exten­ding up­wards on either side of the lever resting face 14. When the lever 9 has reached the end position the protuberance 11 falls behind the inwardly curved lip 12, and the lever 9 cannot be released without further ado. The lever is shown in the end position on the right hand side of Fig. 1; the position of the protuberance 11 and the inwardly curved lip 12 relative to each other can be seen there" (column 4, lines 41 to 52, figure 1);

FORMULA/TABLE/GRAPHIC

- figure 2: "Securing is achieved here through the fact that the securing means 11 and 12 are formed by holes present in the lever 9 and the side walls 13, through which a securing pin can be inser­ted" (column 4, lines 53 to 58);

FORMULA/TABLE/GRAPHIC

- Figure 4a: "Securing means 11 and 12 are also pre­sent in this case to prevent the levers 9 from being released without further ado when the coup­ling sleeve is fitted" (column 6, lines 22 to 24).

6.6 Appellant II considered that the left hand side of figure 2 disclosed a lever drawn over a dead centre position. However, there is no direct and unambiguous teaching to this effect either in the schematic figure 2 itself or in the corresponding description. The schematic patent drawings of figures 1, 2 and 4a do not clearly indicate that any of the levers might be drawn over a dead centre position when the insert pipe is moved from the first position to the second posi­tion. In addition, there are no indications in document D2 that there might be any other securing means in addi­tion to those explicitly men­tioned in the descrip­tion or that any lever is being moved over a dead cen­tre position.

In consequence, document D2 does not disclose a lever which also serves as locking means by configu­ring the lever such that it is drawn over a dead centre position when the insert pipe is moved from the first position to the second position.

6.7 Therefore, the subject-matter of claims 1 and 9 accor­ding to amended auxiliary request differs from the disclosure of document D2 in:

- a deformable blocking ring which can assume a stretched form during the arranging thereof on the flange of the insert pipe; and

- a lever which also serves as locking means by configu­ring the lever such that it is drawn over a dead centre position when the insert pipe is moved from the first position to the second position.

6.8 Therefore, the subject-matter of claims 1 and 9 accor­ding to amended auxiliary request is new with res­pect to document D2 (article 54 EPC 1973).

6.9 In the written procedure appellant II further raised an objection of lack of novelty with respect to document D11.

However, document D11 was not admitted by the opposi­tion divi­sion, because it does not go beyond the dis­closure of document D16, which shows the seal in both positions and does not contain additional infor­mation that could be decisive for the decision (point 3.2 of the contested decision).

In view of the above, it is not apparent that the oppo­sition division exercised its discretion under Article 114(2) EPC 1973 according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775).

Consequently, the board has no reason to overrule the opposition division's decision not to admit document D11 into the proceedings. In further consequence, the lack of novelty objection with respect to document D11 does not need to be considered on appeal.

7. Amended auxiliary request I - Claims 1 and 9 - Inventive step (article 56 EPC 1973)

7.1 Document D2 forms the closest prior art from which the subject-matter of claims 1 and 9 differs in terms of:

- the stretched form of the blocking ring and

- the configu­ra­tion of the lever moving over a dead centre position

(see point 6. above).

7.2 The technical effect of these differences are:

- the smaller outer diameter of the stretched form of the blocking ring facilitates passing it through the opening in the wall of the pipe (patent in suit, paragraph [0007]);

- once the dead centre position has been passed, the lever prevents the insert pipe from moving back toward the first position, so that the lever also acts as a locking means (patent in suit, paragraph [0021]).

7.3 These two differences concern separate objective problems, namely respectively:

- facilitating the insertion of the connection assembly into the main pipe; and

- providing a simple locking means to hold the insert pipe in position.

7.4 Appellant II's position that the second objective problem was merely to provide stable position of the lever cannot be followed, because it ignores the claimed requirement relative to the lever passing a dead centre position (article 84 EPC 1973, first sentence).

7.5 Contrary to appellant II's position, there is no teaching in document D2 as a whole, nor in figure 2 of document D2 in particular, of a lever passing through a dead centre position (see point 6. above). Thus, the skilled person starting from document D2 would not find any teaching therein concerning a lever moving over a dead centre position. Instead document D2 discloses other locking means such as a protruberance 11 and an inwardly curved lip 12 or holes for inserting a securing pin (column 4, lines 41 to 45 and 55 to 58).

7.6 Document D23 concerns a branch pipe joint used when providing a branch part in the middle of piping lines (Machine translation D23, page 2, section "[Industrial Application]"). Document D23 discloses a lever like locking member 15 with a handle 15B to be held between concave engagement parts 13B and 18A. The lower surface of the lever like locking member 15 has a "rugged form" shown in figure 5 to prevent the lever from rotating (Machine translation D23, page 4, lines 62 to page 5, line 34, figures 1, 5 and 6). Document D23 does not mention or otherwise disclose a dead centre position over which the lever is drawn.

FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC

7.7 Contrary to appellant II's position, the mere fact that the lever like locking member 15 is held in a stable position between concave engagement parts 13B and 18A does not amount to a disclosure of the lever having been drawn over a dead centre position: the arrangement of document D23 is based on the geometrically inter­locking shapes of the lever like locking member 15 and the concave engagement parts 13B and 18A to ensure that the lever cannot return. Document D23 thus uses a different mechanism for preventing further movement of the lever.

Even if the skilled person starting from document D2 and seeking a simple locking means to hold the insert pipe in position were to consult document D23, he would only adopt the shaped lever and the two concave engagement parts and thus not arrive at the claimed subject-matter of a lever which also serves as locking means by configu­ring the lever such that it is drawn over a dead centre position when the insert pipe is moved from the first position to the second position.

Thus, neither figure 2 of document D2 nor document D23 disclose the use of a lever configured such that it is drawn over a dead centre position when the insert pipe is moved from the first to the second position. The subject-matter of claims 1 and 9 is thus not disclosed or suggested by the cited prior art.

Although the solution of the first objective problem in terms of a stretched configuration of the blocking ring is generally known from, for example, document D4 (page 1, paragraph 1, figures 1 to 3) or document D16 (page 9, line 21 to page 10, line 5, figures 1 and 2), the non-obvious solution to the second objective problem is on its own sufficient with respect to the requirements of article 56 EPC 1973.

In consequence, the subject-matter of claim 1 and 9 does not lack an inventive step with respect to document D2 alone or in combination with document D23.

8. Amended auxiliary request I - Description

The description was amended by appellant I with respect to the claimed subject-matter and there were no more objections from appellant II.

9. Request for apportionment of costs (article 104(1) EPC)

Appellant II objected to appellant I's fifteen requests filed with the grounds of appeal which were subse­quently reduced to only three requests one month before the oral proceedings before the board of appeal.

These fifteen requests corresponded to selected permutations of only five additional features, respec­tively concerning outward bending, sealing, a lever, a support plate (i.e. granted claim 2) and a groove.

When taking into account the events during the opposi­tion procedure (see point 2.3 above), the board does not consider such requests to be excessive or that they constitute an abuse of procedure. In consequence, the request for the apportionment of costs for preparing a response to the fifteen requests filed with the grounds of appeal is refused.

10. Obiter dictum - Concerning the fact that the opposition decision could not be notified to both parties at the same time

Appellant I (patent proprietor) objected to the fact that the decision of the opposition division was sent to them with a date of 9 July 2014 and resent only to appellant II (opponent) at the later date of 22 July 2014.

This situation arose because the opponent had changed address without the EPO being aware of this, so that the decision could not be delivered on the first attempt.

10.1 Appellant I requested "that the Board sees to a consi­de­ration of the legal constellation and provides for a view as to how appeal proceedings like the present one should be handled such that unequal treatment of the parties is resolved".

10.2 Appellant I argued that the two different notification dates of the decision to the par­ties have as conse­quence that the time limits for fi­ling a notice of appeal and the statement setting out the grounds of appeal were also different.

10.2.1 Appellant I filed their notice of appeal on 7 July 2014, two days before the date of notification of the decision to the parties on 9 July 2014.

Thus, appellant I decided to file an appeal at a very early stage even before the time limit was set to start.

Appellant II filed their notice of appeal on 28 Au­gust 2014, i.e. within the time limit as calculated from the date of 9 July 2014 (theore­tically, with regard to the second notifi­ca­tion date of the decision, the time limit was 1 October 2014).

So far the fact that the oppo­sition division notified the decision on two diffe­rent dates does not have any biasing effect. Both par­ties filed their respective appeals without any spe­cific delay or without having any apparent particular advantage or dis­ad­van­tage.

10.2.2 The situation differs slightly with regard to the time limit for filing the grounds of appeal.

Appellant I filed their statement of grounds on 19 Nov­ember 2014 which was the last day of the time limit with regard to the date of their notification of the deci­sion, i.e. 9 July 2014.

For appellant II the time limit expired on 1 December 2014 (in view of the later date of their notification of the decision of 22 July 2014) and they filed their state­ment of grounds on 28 No­vem­ber 2014.

Thus, it appears that appellant II had nine days more than appellant I to file their grounds (and theoreti­cally eighteen days more with regard to the calculation of the time limit).

Nevertheless, appellant I did not provide evidence that this situation was detrimental to their position as ap­pel­lant. It is correct that in the present case appel­lant II knew appellant I's argumentation before filing their own statement of grounds (grounds of appeal of appellant II of 28 November 2014, page 3 section "Re­gar­ding the Grounds of Appeal as filed by the Pro­prietor on November 19, 2014").

But there is no general rule that in each and every ap­peal proceedings the parties file their statement of grounds in the last minute of the last day of the time limit. In fact, the situation would have been the same if appellant I had filed their statement of grounds, for example, nine days before the expiration of the time limit, e.g. 10 November 2014 and appellant II then only filed their statement on the last day of the "first" time limit, i.e. 19 November 2014.

It is a mere assumption that in the present case the parties would have filed their respective statements of grounds simultaneously on the last day of the time limit.

Furthermore, there is no evidence that appellant II gained any advantage in knowing appellant I's argu­ments in advance.

10.3 Appellant I further argued that the parties were put on an unequal footing because business decisions might have been taken on an understanding of a legal situa­tion which later on turned to be significantly diffe­rent, such as a missed time limit for filing the state­ment of grounds by an appellant.

This argumentation is not persuasive.

Both parties were aware that they had respectively filed an appeal. Furthermore, the parties had the possibility of monitoring the procedure online.

It is not persuasive that appellant I might have taken important business decisions with regard to the patent in suit or in relation to its subject-matter such a short time before expiration of the procedural time limits, knowing that the opponent had also filed an appeal and was seeking to have the patent revoked.

Furthermore, appellant I did not provide any evidence that they took, or intended to take such business deci­sions and whether there were any consequences or pre­judices resulting from the situation.

10.4 There is no specific sanction or remedy foreseen in the EPC for this situation and it seems difficult to as­sume that appellant I's suggestion to re-send the decision with a new common notification date would be a remedy, since the parties are by now already aware of each other's arguments.

Furthermore, appellant I made general statements to the effect that the situation could lead to an unequal treatment of the parties, but in the present case no evidence was provided that a party was prejudiced.

Appellant I did not file a specific request with regard to a substantial procedural violation or inadmis­sibi­li­ty of the appeal of appellant II.

10.5 Appellant I further questioned form 23XX of 22 July 2014 in Epoline which suggests that the outcome of the opposi­tion proceedings was also notified to the patent proprietor on 22 July 2014 even though this was never received by appellant I: Form 23XX in an internal form with the addresses of the parties to the opposition proceedings and is presumably generated automatically by the computer systems in consequence of the second attempt to notify the opponent of the outcome of the opposi­tion procee­dings, once the valid address of the opponent had beco­me available.

10.6 Conclusion: there is no evidence or indication that the alleged unequal treatment of the parties induced by different dates of notification of the same decision was detrimental to any party's interests, and in particular, not to appellant I's interests. There do not appear to be any consequences for the admissibility of the appeals or for the due course of the ensuing appeal proceedings.