T 2421/18 17-08-2022

1. Main request - Article 100(c) EPC

1.1 The following features were added to claim 1 during examination:

Feature 7 - such that friction occurs in between the friction element (17) and the piston (13) during the oscillatory relative movement of said first and second portions,

Feature 8 - wherein the friction element (17) is entrapped within a closed volume the outer ends of which are defined by the two stop bearings (18) and (19).

1.2 As the respondent argued, these features have a respective basis in the text on page 5, lines 15-17 and on page 7, lines 9-10, of the description as originally filed.

However, they belong to a disclosure where the friction relative movement is described more specifically. As pointed out by the appellant in items II.1.c) and II.2 of its grounds of appeal, the skilled person would derive from the disclosure of the application as originally filed that the friction element alignment member 15 not only "encapsulates" (as already defined in features 4 and 5 claim 1) but also exerts some kind of force on the friction element 17 radially towards the surface of the piston for the friction as defined in feature 7 to occur (see page 5, lines 14-19, and page 7, lines 1-14). For example, and as pointed out by the appellant in item II.1.b) of its appeal grounds, the bearing 19 is part of the lock ring 16, as disclosed on page 6, lines 6 by the wording "the bearing (19) within the lock ring (16)" and also as shown in Fig. 1 where lock ring 16 and bearing 19 are shown in uniform hatching, thus, as a single piece.

1.3 The argument from the respondent that the original application did not disclose any specific relationship between the bearing 19 and the lock ring 16 and that the lock ring 16 was not essential for the occurrence of friction does not alter the Board's conclusion.

According to the so called "gold standard", an amendment can be made only within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed (see G 3/89, G 11/91 and G 2/10). Thus, the opposition division basing its conclusions mainly on the argument that the omitted features were not essential, did not use the correct criteria and ignored the structural relationship between the omitted features.

Contrary to the arguments of the respondent and of the opposition division, it is thus irrelevant whether the lock ring being a part of the stop bearing is regarded as essential or not.

In order for the friction system to work and the shock absorber piston 13 to move within the casing 12 ("The movement... is enabled...") it is directly and unambiguously disclosed on page 6, lines 1 to 8 that, among other things, the casing bearing 18 and lock ring bearing 19 have to be within the shock absorber casing 12 and the lock ring 16, respectively. There is thus a functional and structural relationship disclosed between the lock ring 16 and the bearing 19 and the original application does not directly and unambiguously disclose any other construction that could lead the skilled person reading the disclosure to consider this arrangement between the bearing 19 and the lock ring 16 as merely an optional (or even a "non-essential") possibility. It thus forms an integral part of the disclosure of the structural relationship of the parts necessary for the friction to occur.

1.4 The respondent also argued that the second paragraph on page 9 disclosed that the friction element was wrapped around the second portion and encapsulated by an alignment member and therefore provided a basis for features 7 and 8 as it was in almost literal agreement with features 4 to 8 of claim 1.

The Board does not accept this argument. The paragraph on page 9 is not in literal agreement with the features 4 to 8 of claim 1 but rather describes a more specific arrangement, just as the passages cited in item 1.2 above. For example, the paragraph also describes "a friction element alignment member (15) forcing a friction element (17) radially towards said second portion (13) such that friction occurs...". Thus, this passage also discloses more specifically that the friction element alignment member 15 exerts some kind of force on the friction element 17 radially towards the surface of the piston in order that the friction as defined in feature 7 occurs. This aspect is however not reflected in claim 1.

The respondent's argument that the friction element is wrapped around the second portion and encapsulated by an alignment member, however, does not mean that the encapsulating member forces the friction member into contact with the piston. Thus, the respondent's argument is not persuasive.

1.5 The amendments made before grant to claim 1 (now forming claim 1 of the main request) do therefore result in subject-matter which extends beyond the content of the application as originally filed, such that the ground for opposition under Article 100(c) EPC is prejudicial to maintenance of the patent. Thus, the main request is not allowable.

2. Auxiliary requests 1 and 2 - Article 123(2) EPC

2.1 Claim 1 of auxiliary request 1 has been amended with regard to claim 1 of the main request by the introduction of the feature "said alignment member (15) forcing a friction element (17) radially towards said second portion (13)".

2.1.1 The respondent argues that the basis for this feature is to be found on page 9, second paragraph, lines 10 to 13.

The Board does not accept this argument since the specific structural features that allow the alignment member to force the friction element radially towards said second portion such as the circumferential protrusion 26 and the lock ring 16 are still missing from claim 1 (see also items 1.2 and 1.3 above). Thus, the respondent has only included some of the features which are disclosed in combination in that section of the description, without any basis for omitting the others.

2.2 The amendment in claim 1 of auxiliary request 1 does therefore (at least) not overcome the objections under Article 100(c) EPC discussed above against the main request and thus fails to meet the requirement of Article 123(2) EPC.

2.3 Claim 1 of auxiliary request 2 has been amended with regard to claim 1 of auxiliary request 1 by the introduction of the feature "wherein the friction element (17) does not move with respect to the alignment member (15)".

2.3.1 The respondent argues that the basis for this feature is found in the first paragraph on page 7.

However, page 7, lines 10 and 11, from which this feature has been extracted, belong to a disclosure of a more specific arrangement of a friction member and of an alignment member comprising further structurally and functionally linked features for achieving the immobilisation now defined in claim 1 of auxiliary request 2. For example, the circumferential protrusion 26 described on page 7, lines 16 to 18, to fix the friction element 17 with respect to the alignment member 15 is omitted.

2.4 The amendment to claim 1 of auxiliary request 2 thus not only fails to overcome the objections discussed above but also introduces a new objection under Article 123(2) EPC.

2.5 The subject-matter of claim 1 of auxiliary requests 1 and 2 therefore does not to fulfil the requirement of Article 123(2) EPC. Auxiliary requests 1 and 2 are therefore not allowable.

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