T 0376/98 09-03-1999

Summary of Facts and Submissions

I. European Patent application No. 92 201 263.8, filed on 6. May 1992 and published under the publication No. 0 549 001, was refused by a decision of the Examining Division announced during oral proceedings held on 28 November 1997 and issued in writing on 5. December 1997.

The Examining Division held that the subject-matter of claim 1, filed with the applicant's letter dated 26. October 1994, did not involve an inventive step having regard to the prior art disclosed in:

D1: EP-A-0 011 088 and

D4: EP-A-0 362 885.

The minutes of the oral proceedings indicate that document D4 had been introduced by the Examining Division during the oral proceedings as proof of the known experimental approach to determine data concerning the time of start and end of torque management in a manner similar to that of the present application. The Examining Division was of the opinion that, when compared to the prior art disclosed in D1, the single novel feature remaining in the method of claim 1 of the application related to such experimentally determined data and that therefore the combination of teachings of D1 and D4 would lead the skilled person in an obvious manner to the subject-matter claimed.

The oral proceedings had been interrupted between 09.15 and 09.30 hrs for deliberation on the applicant's side after which the applicant requested a decision to be issued on the basis of the claims and description on file.

II. On 13 January 1998 a notice of appeal was lodged against that decision together with payment of the appeal fee. In the statement of grounds of appeal, filed on 19 March 1998, the appellant (applicant) submitted that the introduction of D4 during the oral proceedings had led to a substantial procedural violation requiring reimbursement of the appeal fee.

III. With a communication in preparation for oral proceedings, the appellant was informed that the Board did not see sufficient proof of a substantial procedural violation. The minutes of the oral proceedings, the content of which had not been contested by the appellant, revealed that the oral proceedings had been interrupted to give the applicant time for consideration and it was the appellant who requested a decision based on the documents on file.

It would be necessary to discuss at the oral proceedings whether the subject-matter of the amended claims 1 and 15 contained novel and inventive subject-matter vis-à-vis the prior art disclosed in D4, and in the alternative whether there was an inventive step having regard to the combined teachings of D4 and D1.

IV. With a letter dated 8 February 1999 the appellant filed new claims 1 and 15 which read as follows:

"1. A method of managing the torque of an engine (12) during a gear change so as to reduce the engine torque between a start and an end time during the gear change, comprising the steps of determining the type of gear change on the basis of the gear to be disengaged and the gear to be engaged; measuring one or more engine operating parameters and in addition optionally at least one transmission operating parameter during the gear change; obtaining one or more values for determining the most appropriate start and/or end time of torque management from a storage medium on the basis of the determined type of gear change and the measured operating parameter or parameters, each of the values in the storage medium being experimentally derived and selected from the storage medium on the basis of the engine operating parameter or parameters; and managing the engine torque between the determined start and/or end time."

"15. Apparatus for managing the torque of an engine during a gear change so as to reduce the engine torque between a start and an end time during the gear change, comprising detection means (14, 16, 30) operative to determine the type of gear change required on the basis of the gear to be disengaged and the gear to be engaged; sensing means (14, 16) operative to measuring one or more engine operating parameters and in addition optionally at least one transmission operating parameter during the gear change; a storage medium for storing a plurality of values for use in determining the start and/or end time of torque management, each of the values being experimentally derived, and selected from the storage medium on the basis of the engine operating parameter or parameters; processing means (32) operative to obtain one or more values from the storage medium on the basis of the determined type of gear change and the measured operating parameter or parameters and to determine the most appropriate start and/or end time for torque management; and means (32, 36) for managing the engine torque between the determined start and/or end time."

V. During oral proceedings, held on 9 March 1999, the appellant filed new claims 1 to 30 in accordance with an auxiliary request. The independent claims 1, 2, 16 and 17 of this request read as follows:

"1. A method of managing the torque of an engine (12) during an upshift gear change so as to reduce the engine torque between a start and an end time during the gear change, comprising the steps of:

a) determining the type of gear change on the basis of the gear to be disengaged and the gear to be engaged;

b) measuring the engine speed (NE) and at least one more engine operating parameter during the gear change;

c) selecting a value (K1) from a storage medium to determine the start time, on the basis of the determined type of gear change and the operating parameter measured during the gear change, each of the values in the storage medium being experimentally derived to provide substantially the most appropriate start time for torque management;

d) selecting a value (K2) from the storage medium to determine the end time, on the basis of the determined gear change and the engine speed (NE) measured during the gear change, each of the values in the storage medium being experimentally derived to provide substantially the most appropriate end time for torque management;

e) determining the most appropriate start and end time of torque management on the basis of the selected values and the engine speed (NE) measured during the gear change; and

f) managing the engine torque between the determined start and end time."

"2. A method of managing the torque of an engine (12) during a downshift gear change so as to reduce the engine torque between a start and an end time during the gear change, comprising the steps of:

a) determining the type of gear change on the basis of the gear to be disengaged and the gear to be engaged;

b) measuring the engine speed (NE) and at least one transmission operating parameter (OS) during the gear change;

c) selecting a value (NEref1) from a storage medium to determine the start time, on the basis of the determined type of gear change and the transmission operating parameter (OS) measured during the gear change, each of the values in the storage medium being experimentally derived to provide substantially the most appropriate start time for torque management;

d) selecting a value (NEref2) from the storage medium to determine the end time, on the basis of the determined gear change and the transmission operating parameter (OS) measured during the gear change, each of the values in the storage medium being experimentally derived to provide substantially the most appropriate end time for torque management;

e) determining the most appropriate start and end time of torque management on the basis of the selected values and the engine speed (NE) measured during the gear change; and

f) managing the engine torque between the determined start and end time."

"16. Apparatus for managing the torque of an engine (12) during an upshift gear change so as to reduce the engine torque between a start and an end time during the gear change, comprising:

a) detection means (14, 16, 30) operative to determine the type of gear change required on the basis of the gear to be disengaged and the gear to be engaged;

b) sensing means (14, 16) operative to measuring the engine speed (NE) and at least one more engine operating parameter during the gear change;

c) a storage medium for storing a plurality of values, each of the values being experimentally derived to provide substantially the most appropriate start and end times for torque management;

d) processing means (32) operative to select a value (K1) from the storage medium to determine the start time, on the basis of the determined type of gear change and the operating parameter measured during the gear change each of the values in the storage medium being experimentally derived and to select a value (K2) from the storage medium to determine the end time, on the basis of the determined type of gear change and the engine speed (NE) measured during the gear change, each of the values in the storage medium being experimentally derived and to determine the most appropriate start and end time of torque management on the basis of the selected values and the engine speed (NE) measured during the gear change; and

f) means (32, 36) for controlling the engine torque between the determined start and end time."

"17. Apparatus for managing the torque of an engine (12) during a downshift gear change so as to reduce the engine torque between a start and an end time during the gear change, comprising:

a) detection means (14, 16, 30) operative to determine the type of gear change required on the basis of the gear to be disengaged and the gear to be engaged;

b) sensing means (14, 16) operative to measuring the engine speed (NE) and at least one more engine operating parameter during the gear change;

c) a storage medium for storing a plurality of values, each of the values being experimentally derived to provide substantially the most appropriate start and end times for torque management;

d) processing means (32) operative to select a value (NEref1) from the storage medium to determine the start time, on the basis of the determined type of gear change and transmission operating parameter measured during the gear change each of the values in the storage medium being experimentally derived and to select a value (NEref2) from the storage medium to determine the end time, on the basis of the determined type of gear change and the transmission operating parameter (OS) measured during the gear change, each of the values in the storage medium being experimentally derived and to determine the most appropriate start and end time of torque management on the basis of the selected values and the engine speed (NE) measured during the gear change; and

f) means (32, 36) for controlling the engine torque between the determined start and end time."

The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of:

(main request)

- claims 1 and 15 filed on 8 February 1999; claims 2 to 14 and 16 to 28 and

- description and drawings underlying the appealed decision

or (auxiliary request)

- claims 1 to 30 submitted at the oral proceedings of 9 March 1999,

- description: page 1 filed on 6 April 1996; pages 1a and 1b filed at the oral proceedings on 9. March 1999; pages 2 to 17 as originally filed,

- drawings as originally filed.

The request for reimbursement of the appeal fee was maintained.

VI. In support of its requests the appellant relied on the following submissions:

Request for reimbursement of the appeal fee

Even though it had been marked as a particularly relevant document in the search report, document D4 had never been discussed during the examination procedure and had only been introduced at the oral proceedings. As indicated in the minutes of the oral proceedings, the appellant was given 15 minutes for studying D4, a document comprising more than 12 pages with partly confusing contents and 19 figures. Such an approach taken by the Examining Division constituted a procedural violation. Attention was drawn to decisions T 433/93 (OJ 1997, 509) and T 951/97 (OJ 1998, 440, item 4.1). In the latter decision the appeal fee was refunded because the decision to refuse an application was based on a document which had already been mentioned in the search report but which was introduced for the first time into the procedure during the oral proceedings.

Furthermore the decision to refuse the present application included objections to the dependent claims which were based on the disclosure of D4. At no stage of the oral proceedings was there a mention of D4 being a ground for objection to the dependent claims. The applicants had never been given an opportunity to comment on this issue, so also in this respect a procedural violation requiring reimbursement of the appeal fee had occurred.

Novelty and inventive step

None of the cited documents disclosed a method or apparatus for managing the torque of an engine by using experimentally determined values which were selected on the basis of operating parameters measured during the gear change and therefore the subject matter of the independent claims was novel.

By using the momentary operating parameters, it was possible to react to sudden changes in the engine speed or changes in other operating parameters, for example the throttle position. Furthermore, by selecting experimentally derived values for the start and end time of torque control such control could be initiated very quickly because the values concerned did not have to be calculated in some process first.

In document D4 the experimentally derived values related to varying time delays between the start of the gear change and the start of the torque control. The throttle opening value which was used for determining the time delay value had to be measured before the start of the actual gear shifting and therefore no account could be taken of a changing throttle opening during the gear change. Document D1 disclosed two possibilities for determining the start and end time of torque control but also here the start and end time were determined at the start of the gear change and were not determined on the basis of an operating parameter measured during the gear change. The subject-matter of the application was therefore novel and inventive over the cited prior art.

The claims in accordance with the main request defined the inventive subject-matter of the present invention in a manner sufficiently complete to meet the requirements of Article 84 EPC. The claims in accordance with the auxiliary request took account of the different operating parameters for selecting start and end values when an upshift or a downshift gear change was concerned.