T 0763/15 28-09-2017

1. The opposition division dealt with, inter alia, and decided on, the issue of patentability of the patent as granted, corresponding to the appellant's main request. Therefore, the board found it expedient to first review the contested decision with regard to the main request before deciding on the issue of the alleged procedural violations raised by the appellant.

2. Novelty over E5 (Article 54(1) EPC)

2.1 The subject-matter of claim 1 as granted is not new over the disclosure of document E5 (Article 54(1) EPC).

2.2 E5 discloses (Figure 1 and the detailed representation of a connecting device in Figures 7 and 8) a windscreen wiper device (1), comprising an elastic, elongated carrier element (Federschienen 13, Federschienenenden 14), as well as an elongated wiper blade (3) of a flexible material (Wischgummi 8), which can be placed in abutment with a windscreen to be wiped, which wiper blade (3) is of the flat blade type (paragraph [0002]) and includes at least one groove (12), in which groove (12) a longitudinal strip (13) of the carrier element is disposed. The windscreen wiper device (1) further comprises a connecting device (17) positioned near one end of said wiper blade (3). So far, these features of granted claim 1 have not been contested.

2.3 It was disputed whether the windscreen wiper device of E5 comprises a mounting head as specified in claim 1. The term "mounting head" is to be found in the remaining features of claim 1 (these will be referred in the following as features (a) to (d)).

Features (a) and (b) specify further the windscreen wiper device ("wherein said windscreen wiper device (1) further comprises"):

(a) "a mounting head (8) for transferring a reciprocal movement to said wiper blade (2)"

(b) "a connecting device (7) for detachably connecting said wiper blade (2) directly to said mounting head (8)"

Features (c) and (d) specify further the connecting device ("wherein said connecting device (7) comprises at least"):

(c) "one resilient tongue (10) engaging in a correspondingly shaped hole (11) provided in said mounting head (8)"

(d) "wherein said resilient tongue (10) is movable between a outward position retaining said wiper blade (2) onto said mounting head (8) and an inward position releasing said wiper blade (2) from said mounting head (8)"

2.3.1 The board acknowledges that a mounting head is the unit forming part of the wiper device which is connected to the drive shaft. However, in view of the patent specification showing e.g. a mounting head coupled to the drive shaft via a bushing, the board cannot accept the appellant's view that the term "mounting head" requires a direct connection between mounting head and drive shaft. Moreover, as expressed by the term itself, it simply describes a part ("head") of the wiper device for "mounting" the wiper blade to the drive shaft. A mounting head within this meaning is known from E5 in the first embodiment according to Figure 1 (articulated assembly 2/4 comprising hub 5 mounted to a drive shaft), as found by the opposition division. This mounting head identified in E5 also provides the function of transferring a reciprocal movement to said wiper blade according to feature (a). Moreover, as recognised by the appellant itself (see letter dated 2 August 2017, which caused the appellant to file new first and second auxiliary requests), E5 even discloses an alternative embodiment which avoids an intermediate oscillating arm (see paragraph [0028]: wiper arm 2 comprising hub 5 for mounting it to the drive shaft).

The appellant contests that the term "mounting head" might comprise the use of an intermediate arm, i.e. a unit consisting of two parts as shown in Figure 1 of E5 (driven part 4 and wiper arm 2). In this respect, the board follows the view of the opposition division that claim 1 is not limited to a one-piece or monobloc mounting head, since claim 1 defines the mounting head merely by its function (see definition (a)). However, in view of the alternative embodiment disclosed in E5 in paragraph [0028], as noted by the appellant itself, a mounting head made of one piece according to the more restrictive interpretation of the term "mounting head" as proposed by the appellant is also known from E5, so there is no need to further argue in respect of the embodiment shown in Figure 1 comprising an intermediate oscillating arm. The appellant's argument that in this case the mounting head would only be represented by the end portion of the integral part, i.e. of wiper arm 2, does not convince the board. The wording of claim 1 does not exclude an elongated mounting head having the shape of an arm. Such a restrictive interpretation would be at odds with the disclosure of the patent specification itself, which shows an elongated mounting head (reference sign 8).

2.3.2 The connecting device (17) known from E5 detachably connects the wiper blade (3) directly to the mounting head (2), as required by the feature (b). As explicitly said in E5 (paragraph [0029]), the wiper blade comprises a rubber (8), which in turn comprises longitudinal grooves housing longitudinal strips. Since the longitudinal strips (13) in E5 - which establish the connection to the connecting device (17), see Figures 7 and 8 - form part of the wiper blade, there is no doubt that the wiper blade in E5 falls under the wording of feature (b).

It is noted that the respondent objected to the term "directly" in definition (b) in claim 1, basically objecting to its clarity, since the contested patent taught that the connection between the wiper blade and the mounting head was not established directly but via the longitudinal strips. However, since this feature already formed part of claim 1 as granted, it is not open to a clarity objection but has to be interpreted accordingly (see G 3/14). In fact, feature (b) only makes sense in the event that the longitudinal strips form part of the wiper blade, as taken into account by the appellant by filing a new second auxiliary request on 2 August 2017.

2.3.3 The mounting head (2) according to E5 is provided (see Figure 7) with a hole (67) cooperating with a resilient tongue (63, 64) as structurally required by feature (c) in claim 1. The appellant argues that the engaging function according to feature (c) was not provided in E5, since the term "engaging" required an interlocking or meshing relationship implying an engaging contact between the resilient tongue of the connecting device and the correspondingly shaped hole in the mounting head. In particular, the contested patent allegedly suggested a firm interlocking and excluded any play around the whole circumference of the hole, due to terms used in the patent such as "snapping/clipping into the hole", "bayonet-connection", or "retention/retaining ... onto the mounting head".

However, the board cannot accept such restrictive interpretation of the term "resilient tongue engaging in a correspondingly shaped hole" in feature (c). There is no basis in the patent specification for a perfect form-fit between the tongue and the hole, excluding any play around the whole circumference of the hole. Typical clip connections are established e.g. by a mushroom head entering a hole, in which the mushroom head might be slightly oversized so that some force is needed to make it entering the hole, but afterwards the lower portion of the mushroom head might be received with some play in the hole. The push button 64 of the resilient tongue 63 disclosed in E5 (see Figure 7) also snaps into the hole 67, irrespective of its primary function as an actuating means for releasing the resilient tongue and a further "snap"-connection provided in E5 between the tongue and the flexors (see paragraph [0045] in E5). The terms "engaging in" or "snapping/clipping" might only relate to the step of establishing the connection between the connecting device and the mounting head, when the resilient tongue enters the hole.

The board concurs with the respondent that in the field of wiper blades the term "bayonet-connection" refers to legs with inwardly bend edges, i.e. to an U-shaped cross-section of the mounting head comprising clamping members in order to provide an enhanced retention of the connecting device onto the mounting head in a direction perpendicular to the longitudinal direction of the mounting head, as described in the patent specification (paragraph [0021]), which is also disclosed in E5 (Figure 9). The board holds that no further limitation regarding the resilient tongue engaging in a hole can be derived therefrom.

The term "retaining" used in feature (d) itself cannot be interpreted as suggested by the appellant, allegedly excluding any play around the whole circumference of the hole, since it merely describes a complementary function to the function of releasing the wiper blade from the mounting head by pushing in the resilient tongue. Thus, it relates to the function of the tongue/hole-connection enabling an exchange of the wiper blade and possibly preventing that the wiper blade might get lost in case of forces acting in the longitudinal direction of the wiper blade, i.e. perpendicular to the wiping direction. Such function is also realised by the tongue/hole-connection in E5. The appellant also refers to paragraph [0014] of the contested patent, which describes an enhanced retention function ("closed holes enhance the retention of the connection device onto the mounting head in all possible directions, particularly both horizontally and vertically"). However, this passage relates to a further preferred embodiment which comprises, in addition to a hole in the base of the U-shaped cross-section of the mounting head, additional holes having a specific shape ("closed holes") provided in each leg of the U-shaped cross-section of the mounting head. As such, it cannot serve as a basis for construing the broader wording of claim 1 ("resilient tongue engaging in a correspondingly shaped hole") in a more limited sense.

2.3.4 In view of the foregoing, the board finds that E5 also shows (see Figure 7) a resilient tongue (64) movable between an outward position retaining said wiper blade (3) onto said mounting head (2) and an inward position releasing said wiper blade (3) from said mounting head (2) according to definition (d) in claim 1.

2.3.5 Therefore, irrespective of the fact that the appellant might have raised a new argument for the first time in appeal proceedings with regard to feature (c), the board does not follow the appellant's interpretation that this feature implies the meaning of form-fit, i.e. a resilient tongue being in contact with the whole circumference of the hole. Even taking into consideration the drawings of the patent specification, the board cannot see that such a limited interpretation would be justified. Moreover, as argued above, a mounting head within a meaning as supported by the patent specification itself is known from E5.

As a consequence, the subject-matter of claim 1 as granted lacks novelty over E5.

3. Alleged procedural violations

3.1 The appellant alleges that its interests in defending its case had been seriously damaged in opposition proceedings in several respects (alleged procedural violations 1 to 3). Allegedly, the decision not to admit e.g. the auxiliary request 2 filed in writing on 5 November 2014 into the opposition proceedings was taken without giving the patentee the opportunity to argue on its admissibility (alleged procedural violation 1), thus violating the party's fundamental right to be heard.

3.2 According to the established jurisprudence, the right of any party for oral proceedings to be held on request and to present its case orally is absolute and, with respect to the party's right to be heard on its case, a more specific embodiment of the general principle enshrined in Article 113(1) EPC. Moreover, the parties' absolute right to be heard in oral proceedings, Articles 113(1) and 116(1) EPC, is not restricted to new and substantial arguments which have not yet been presented in writing (see R 3/10, Reasons 2.11).

3.3 In the present case, the board cannot see any indication that the appellant was allowed to argue during the oral proceedings on the issue of admissibility of the auxiliary request 2 filed in writing on 5 November 2014. Without going into the merits of the case as regards the reasons for not admitting this request, according to the minutes (see point 7.) the chairman of the opposition division, after commenting on the amendment made to claim 1 of auxiliary request 2, immediately announced "that AUX2 is not admitted in the proceedings". As acknowledged by the respondent, a decision taken and pronounced by the opposition division cannot be challenged any more in the same proceedings. Therefore, it is considered irrelevant that "The Patentee did not react on this decision not to admit AUX2 in the proceedings", as recited in the minutes.

The respondent refers to point 3.2 of the contested decision ("As explained by the Proprietor, the feature ... has been added to claim 1 of the granted patent. This feature originates from ..."), allegedly proving that the patentee had the opportunity to be heard. However, the board cannot see that this passage, which rather relates to the submissions made in writing in the letter dated 5 November 2014 (and shows the basis for the amendment in the originally filed description), demonstrates that the patentee was given the right to present its case orally during the oral proceedings.

3.4 For this reason alone, irrespective of whether the allegations of further procedural violations 2 and 3 are acknowledged by the board, the board comes to the conclusion that the patentee's right to be heard had been violated. Although an effective and efficient conduct of oral proceedings is subject to the discretionary power exercised by the chairman in oral proceedings with regard to specific issues, it must nevertheless guarantee that the fundamental procedural rights of each party in adversarial proceedings, i.e. the right to a fair and equal treatment, including the right to present comments in oral proceedings are respected (Articles 113(1) and 116 EPC).

3.5 In addition, the board observes the following:

- It appears that the opposition division did not admit the second auxiliary request according to Rule 80 EPC, because it was considered not to be a limitation of the first auxiliary request and not an attempt to overcome the ground for opposition against auxiliary request 1. However, a limitation of the patent as granted which is an alternative to the limitation provided in a first auxiliary request might be an attempt to overcome a ground for opposition, irrespective of whether it limits the subject-matter of a first auxiliary request.

- It appears that the lack of clarity put forward by the opposition division against the new auxiliary requests 2 and 3 filed during oral proceedings was already present in requests already filed before, so the patentee was not given the opportunity to react correspondingly by way of amendment (alleged procedural violation 3).

4. Remittal

4.1 In view of the fundamental deficiency as found above, the board decides to remit the case to the opposition division (Article 111 EPC; Article 11 RPBA, Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536).

4.2 The respondent requested that the case should not be remitted because the second auxiliary request, which was not admitted by the opposition division, was not maintained any more in appeal proceedings. However, as pointed out by the appellant, this request was still there in substance in form of the first auxiliary request filed with the grounds of appeal, which was only amended by taking into account the further clarity objection raised during oral proceedings at a later stage against the new auxiliary request 2 filed during oral proceedings (see contested decision, point 5.2).

Moreover, a new issue was raised for the first time in appeal proceedings by the appellant with regard to paragraph [0028] of document E5, which might affect the discussion when coming to the assessment of inventive step of the subject-matter of the auxiliary requests on file. In fact, inventive step of the claimed subject-matter has not been discussed so far. Furthermore, the new first and second auxiliary requests filed by the appellant on 2 August 2017, allegedly an attempt to delimit the subject-matter claimed over E5 in this respect, might raise new issues to be discussed.

4.3 In view of the foregoing, the board finds it appropriate to follow the appellant's request to remit the case in order to give the appellant the appropriate opportunity to be heard on its arguments.

5. Reimbursement of the appeal fee

According to Rule 103(1)(a) EPC the reimbursement of the appeal fee is ordered where the board deems an appeal allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

In the present case, the appeal is allowable and the substantial procedural violation acknowledged above concerns non-admission of the second auxiliary request filed on 5 November 2014, which forms the basis for filing a first auxiliary request with the grounds of appeal (taking into account further objection raised later in oral proceedings as stated above). Since the board confirms the contested decision as regards the appellant's main request, there is a self-evident causal link between the violation of the appellant's right to be heard and the necessity to appeal. Therefore, and in the absence of any grounds to the contrary, the reimbursement of the appeal fee is equitable.