T 1015/19 30-06-2022

Reasons for the Decision

1. Main request - Articles 100(a) and 56 EPC

1.1 E1/E1a discloses all the features of claim 1 with the exception of feature M1.9:

"a third housing (14) having a cylindrical shape with one end closed, and joined to the second housing (13) to form an accommodation space (T) for accommodating the motor drive circuit (41)".

1.2 Figure 1 of E1 discloses a cover member 7 in the form of a disc, which, due to its joined arrangement with respect to the second housing, forms a third housing. Specifically, this cover member 7, as shown in Figure 1, is screwed to the wall 3c, which itself corresponds to a second housing as defined in claim 1, and is therefore joined to a second housing to form an accommodation space (i.e. the accommodation space of the third housing) for accommodating the drive circuit - Figure 1 also discloses a drive circuit 6 in this accommodation space which corresponds to the motor drive circuit defined in claim 1.

1.3 However, the cover member 7 does not have a cylindrical shape with one end closed as defined in feature M1.9. Although the disc shaped cover member 7 in Figure 1 of E1 has a circular cross-section like a cylinder shaped body, it is a solid body and therefore does not have one end closed since this wording implies a hollow space inside the body that can be "closed".

1.4 Both parties agreed that E1 disclosed the remaining features of claim 1 and the Board also does not see a reason to find otherwise.

1.5 The proprietor argued that the cylindrical shape with one end closed "to form an accommodation space" of the third housing as defined in claim 1 meant that the third housing, as such, had to provide a volume. This allegedly provided more space and easier access for mounting the electronic components during assembly in comparison to the corresponding space seen in Figure 1 of E1. According to the proprietor's argument during oral proceedings, the portion of paragraph [0029] in column 7, at lines 42-55 of the patent specification also disclosed this effect.

The Board does not find this argument persuasive. The accommodation space defined in feature M1.9 of claim 1 is formed by joining the second and third housings and the claim does not define any further dimensions for these housings such that the definition of the basic shape of the third housing as cylindrical with a closed end alone does not provide more space or easier access for mounting the electronic components.

The Board further notes that column 7, lines 42-55, of the patent specification as cited by the proprietor, discusses the assembly of the second housing 13 with the first housing 12 and not the third housing 14, as well as the resulting ease of assembly of the electric motor 18 to the connecting terminal 30 mounted to the second housing 30. Although the first housing is also defined as being cylindrical with one end closed, the cited passage does not attribute any of these advantages specifically to the third housing.

1.6 The Board thus finds that any possible assembly advantage would result only from the interaction of both the shape and sizes of the second and the third housings which are, however, not defined in the claim, and does not result from the third housing simply having a cylindrical shape with one end closed. The objective problem can thus only be seen as providing an alternative shape for the third housing.

1.7 E2, Figure 2, discloses a compressor having cover ("Haube 4") joined to the second housing ("Statorbuchse 1") to form an accommodation space for accommodating the motor drive circuit ("Leistungselektronik 13") already having a cylindrical shape and with one end closed. The skilled person looking for an alternative shape for the cover member 7 of E1 and faced with the teaching of E2 would adopt a cylindrical shape of the cover 4 and arrive at a compressor as defined in claim 1 without exercising an inventive step.

1.8 The proprietor argued that adopting a protruding cover would go against the teaching of E1, where a thermal protector is exchanged for a discharge temperature detecting means (see paragraph [0013] of E1), in order to increase the design freedom and the space for mounting the compressor (see paragraph [0003] of E1/E1a). According to the proprietor, when starting from E1, the person skilled in the art would not be motivated to change the housing and thus increase the overall volume of the compressor. In addition, the proprietor argued that the compressor of E1 already provided enough volume such that there was no reason to make any change.

1.8.1 The Board does not find these arguments persuasive either. The size of the cover and of the housings are not defined in claim 1 nor would a cover having the shape of a cylinder with an open end necessarily require the readoption of a thermal protector (leading to more parts) instead of the discharge temperature detecting means proposed in E1. Nothing in the teaching of E1 would therefore deter the skilled person from adopting a cover having the shape of a cylinder with an open end, such as the one of E2.

1.8.2 Further, faced with the problem of simply looking for an alternative shape and not with the problem of increasing the space (see item 1.5 above) the skilled person adopting a cover with a cylindrical shape with an open end would not need to increase the volume of the overall compressor in a meaningful way. Indeed, even a very shallow peripheral wall on the disc shaped member 7 in E1, as argued by the opponent, would already correspond to the housing shape defined in claim 1, while a taller peripheral wall like that in E2 was also not excluded by claim 1.

1.9 The Board thus finds that the subject-matter of claim 1 of the main request does not involve an inventive step when starting from E1 as the closest prior art and, given the technical problem to be solved, when considering the teaching of E2.

1.10 The ground for opposition under Article 100(a), 56 EPC prejudices maintenance of the patent as granted.

2. Auxiliary request 7 - Article 123(2) EPC

2.1 Claim 1 of auxiliary request 7 differs from claim 1 of the main request in that the following feature was appended at the end of feature M1.8:

"the second housing (13) being formed substantially in a disk shape having a diameter large enough to close the open end of the first housing (12),".

2.2 The proprietor argued that page 5, lines 26-28 of the description as filed provided a basis for this amendment. It was further argued that the added feature was not inextricably linked to the other features related to the diameter and fixation of the wall disclosed in the same paragraph on page 5, as these were not essential.

According to the proprietor, the use of the term "specifically" on page 5, line 29, together with the feature "the diameter of the second housing 13 being substantially the same as that of the cylindrical wall member 121 at the second flange portion 121C" meant that the feature was an additional more specific disclosure that was not essential, but just a possible example.

2.2.1 The Board does not accept these arguments. First the Board notes that for compliance of an amendment with Article 123(2) EPC, it is not of relevance whether features disclosed in an embodiment in the description and Figures which are not taken-up into the claim are considered "essential to the invention" or not. Rather the standard to be met (gold standard) is that the subject-matter resulting from the amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed (see e.g. G2/10).

2.2.2 In the present case, page 5, lines 26-28 of the description as filed literally includes the wording "the second housing 13 is formed substantially in a disk shape having a diameter enough to close the rear open end of the first housing 12 or the cylindrical wall member 121" which corresponds to the amendment made to feature M1.8 of claim 1 of auxiliary request 7.

However, the skilled person reading the description understands from the previous sentence at the beginning of the third paragraph on page 5 starting with "The following will describe in detail the second housing 13" that at least the whole third paragraph will provide a disclosure of the second housing 13, not simply some part of it.

In addition and contrary to the argument of the proprietor, the skilled person would not understand that the term "specifically" renders the relationship between the diameters of the second housing 13 and of the cylindrical wall member 121 at the second flange portion 121C merely as a possible example. In the present case, the word "Specifically" starts the sentence immediately following the wording introduced into claim 1, such that quite the opposite of what the proprietor argues is the case. The term "specifically" links the fact of both the second housing and the second flange portion 121C having the same diameter to the previous sentence which requires that the second housing has "a diameter enough to close the rear open end of the first housing 12 or the cylindrical wall member 121" in order to build a single disclosure.

Also, the wording is taken from a description of an embodiment which is shown in Figure 1 (also seen in Figure 3). Figures 1 and 3 of the application, however, only disclose a more specific compressor with a second housing 13 having the same diameter as that of the cylindrical wall member 121 at the second flange portion 121C, such that the Figures also do not provide any hint to the skilled person that having the same diameter is only one of several possibilities.

2.2.3 The application as originally filed thus provides a single disclosure of how to close the open end of the first housing 12 and the diameters of the involved parts are structurally and functionally linked features to the disk shape of the housing 13 for achieving this closure. The skilled person would therefore not directly and unambiguously derive from the whole of the application as filed a second housing closing the rear open of the first housing having a disk shape but with a diameter other than that of the cylindrical wall member at the second flange portion.

The equal diameter of the second housing and of the cylindrical wall member 121 at the second flange portion 121C thus forms an integral part of the disclosure of the structural relationship of the parts, but has been omitted from the introduced wording.

2.3 Consequently, the subject-matter of claim 1 of auxiliary request 7 does not fulfil the requirement of Article 123(2) EPC. Auxiliary request 7 is thus not allowable.

3. In the absence of any request which meets the requirements of the EPC, the patent has to be revoked (Article 101(3)(b) EPC).