T 1180/02 21-07-2004

Addition of subject-matter (Article 100(c) EPC

Main request

1. The patent relates to a structure for supporting foamable material in the cavity of a hollow structural member such as a roof side panel of a vehicle body. The foamable material is in the form of a block and when subjected to heat it foams and expands to close the cavity. The structure includes a support member for the foamable material and claim 1 contains the feature at the beginning of the characterising portion that the support member is provided with "at least one support piece" with which at least one engagement slot in the foamable material is engageable.

2. In the application as originally filed two embodiments of the structure are described. In the first a support member comprises two mutually spaced support plates between which the block of foamable material is located. The support plates are joined by five "connecting pieces" of varying lengths which extend upwards from the lower edges of the plates and span the space between them. The block is inserted from above and comprises slits which "engage" the connecting pieces as it moves into the space. The block furthermore comprises lateral projections which engage in holes in the plates to "position and retain" the block. In the second embodiment a single support plate is provided and the block is located on a pair of "support strips" which project from the surface of the support plate. The block of foamable material comprises a pair of slots which are "configured and dimensioned to be closely engaged" with the support strips. A single independent claim covers both embodiments and defines the support member as being "adapted to retain" the foamable material. Claim 6 relates to the first embodiment and defines "apertures and projections ... to position and retain" the foamable material. Claim 2 relates to the second embodiment and defines "at least one support strip ... to position and retain" the foamable material. The claims contain no feature in respect of the connecting pieces.

3. The expression "at least one support piece" is not contained in the application as originally filed and the appellant is challenging the basis in the original disclosure for this expression in three respects:

- firstly, that there is no disclosure in respect of the first embodiment that the elements which engage the slits provide support and argues that the attribution of this function to the "connecting pieces" extends the teaching of the disclosure;

- secondly, that there is no disclosure in respect of the first embodiment of only one connecting piece, as defined by the wording "at least one" in claim 1;

- thirdly, that there is no disclosure of a support "piece" of undefined form.

The Board will now consider each of these objections individually.

3.1. The expression "support piece" in present claim 1 is being used by the respondent to represent both the feature originally disclosed as a connecting piece in the first embodiment and the feature originally disclosed as a support strip in the second embodiment. It is stated on page 2, lines 43. to 45 of the A-publication that the support strip is provided to position and retain the foamable material on the support plate and that it prevents the foamable material from moving on and dropping out from the support plate. Similarly, page 5, lines 14 to 16 and lines 47 to 51 explains that pairs of the support strips position and retain the foamable material on the support plate. The term "support" therefore is originally disclosed as having the meaning of positioning and retaining. The corresponding function of positioning and retaining the foamable material and preventing it rotating and dropping out in the first embodiment is performed not by the connecting pieces but by the engagement of projections on the foamable material in apertures on the support plates (page 3, lines 7 to 9 and page 4, lines 36 and 37). By using the term "support piece" to represent the element originally disclosed as a "connecting piece" the respondent is attributing to the latter the function of positioning and retaining the foamable material. The respondent's view that the term "support" has a very broad meaning overlooks the fact that the term had already been given a particular interpretation in the original application. The application of that interpretation to the function of the connecting pieces of the first embodiment extends the subject-matter of the patent beyond that of the original application.

The respondent also takes the view that the description page 2, lines 12 to 14 teaches that a part which engages another provides "support" for it and that the disclosed engagement between the slits and connecting pieces of the first embodiment therefore discloses providing support. The passage referred to by the respondent reads: "The foamable material 121 is engaged ... by sticking ... Thus the foamable material is supported in a cavity" (emphasis added). In the Board's view this text does not serve to define the term "support" within the meaning of the patent because it concerns an adhesive engagement, which is not the case in the present patent.

Moreover, the Board cannot accept the respondent's argument that it is implicit for the skilled person when seeing figure 1 that the connecting pieces support the foamable material. It is established case law that the disclosure in the original application of a feature which is to be introduced as an amendment must be direct and unambiguous (see T 514/88 (OJ EPO 1992, 570), T 527/88 and T 685/90 (both not published in OJ EPO)). This requirement is not satisfied in the present case.

3.2. The support plates in the first embodiment are formed of a synthetic resin by injection moulding and the connecting pieces are explicitly disclosed as serving to space apart the support plates by a desired distance. Five connecting pieces are shown in figure 1, equally spaced across the width of the support plates and it is implicit that the connecting pieces act to stabilise them. There is no disclosure in the original application that only one connecting piece would be sufficient to stabilise the support plates. The disclosure of "at least one" in the original application is an explicit one in respect of the support strips of the second embodiment which, as explained under 3.1 above, have a different function to the connecting pieces and the skilled person would perceive no relationship between the respective disclosed quantities. It follows that the specification in claim 1 of "at least one" of the elements originally disclosed only as connecting pieces also extends the subject-matter of the patent beyond that of the original application.

3.3. The appellant's third challenge relates to the disclosure of a support "piece", i.e. of undefined form. As already set out under 3.1 above the original disclosure provides no basis for attributing to the connecting pieces a support function within the meaning of the application. It follows that any argument which is based on the disclosure in respect of the first embodiment of a support element of a different form to the support strip in the second embodiment must fail. Moreover, even if this were not the case, the connecting pieces in the first embodiment are also in the form of strips and so provide no basis in themselves for generalisation. Furthermore, it is clear to the skilled person that the formation of the support element in the second embodiment as a strip serves in combination with the slot in the foamable material to rotationally position the latter relative to the support plate. There is nothing in the original disclosure which would lead the skilled person to understand that any shape of support element, as falls within the definition "support piece", could satisfactorily locate the foamable material. In this respect the Board notes that the requirement in claim 1 that the support piece engages with a slot in the foamable material does not limit the form of the support piece since it is not specified that the form of the latter must correspond in any way with that of the slot. It follows that also in this respect the subject-matter of the patent extends beyond that of the original application.

4. In the light of the foregoing the main request must be refused.

Auxiliary requests

5. Each independent claim according to the auxiliary requests contains the feature of "at least one support piece". In the first auxiliary request claim 1 relates only to the first embodiment and results in extension of subject-matter for the reasons explained under 3.1 and 3.2 above. Claim 7 relates only to the second auxiliary request and results in extension of subject-matter as explained under 3.3 above. In the second auxiliary request claim 1 covers both embodiments and results in extension of subject-matter as explained under 3.1 to 3.3 above. Moreover, claim 1 according to the second auxiliary request specifies that the engagement slot in the foamable material is configured and dimensioned so as to be closely engageable with the support piece. Whilst this is explicitly disclosed in respect of the second embodiment there is no such disclosure in respect of the first embodiment.

It follows that the auxiliary requests also must be refused.

Apportionment of costs

6. According to Article 104(1) EPC each party to the proceedings normally shall meet the costs he has incurred. The board may, for reasons of equity, order a different apportionment of costs.

6.1. In a number of decisions it has been found that the late filing of a relevant document by one party, without giving any convincing explanation for the late introduction of the document, normally calls for an apportionment of costs in the other party's favour. According to T 326/87 (supra), cited by the respondent itself, there may be mitigating circumstances, for example where evidence introduced was obscure and therefore difficult to get hold of (reasons 2.3, final sentence). The present Board, albeit in a different composition, has already considered a case in which evidence was filed only four weeks before the date set for oral proceedings (T 1016/93, not published in OJ EPO). It based its judgement of whether costs should be awarded upon the matter of whether the appellant's reasons for the late citation pointed towards negligence or circumstances that would amount to an abuse of procedure. The matter to be considered in the present case is therefore whether the particular circumstances justify a different apportionment.

6.2. In the present case the evidence whose filing has led to the respondent's request for apportionment of costs relates to two instances of alleged public prior use. They involve the supply of parts by the companies Happich S.A. and Ymos Belgium S.A. for fitment to automobiles. The appellant does not dispute that it presently owns the supplying companies Happich and Ymos. However, it states that this was not the case until at least five years after the alleged instances of public prior use took place. The appellant states that an attempt had been made to obtain information directly from the automobile manufacturers to which the parts were supplied but this had been unsuccessful.

6.3. The Board finds the appellant's explanation for the reasons behind the late filing plausible and there is nothing which points towards negligence or an abuse of the procedure. The Board therefore takes the view that the circumstances in this case do not justify a departure from the normal principle that each party shall bear its own costs.