T 2135/22 29-10-2024

1. Clarity

The feature f. added in opposition proceedings reads "in that the baffle outlet (88) is formed by a double walled portion of the baffle (64), said double wall portion forming the lubricant outlet passage (104)."

The first part of this feature is taken word for word from granted dependent claim 12 and as such may not be examined for lack of clarity (G 3/14, order).

The respondent argued that the orifice cover was situated over the orifice ("baffle outlet") itself and as such at this point there was no double wall. According to the respondent, this led to a contradiction within the claim which was consequently not clear.

The objection however relates to a feature that was in a granted dependent claim. Thus, clarity may not be examined in this respect (G3/14, order). Apart from this the Board considers the claim to be clear in itself.

The remaining part of the feature, "said double wall portion forming the lubricant outlet passage (104)" is also not unclear and not in contradiction to the other parts of the claim. Indeed this phrase accurately describes the baffle of the invention.

Hence, the modifications introduced during opposition proceedings according to auxiliary request 1 are clear in the sense of Article 84 EPC.

2. Novelty

The respondent raised the objection that the subject-matter of claim 1 of auxiliary request 1 was not novel with respect to the embodiment shown in Figure 40 of D3. In particular, there was an opening in the upper portion of the baffle shown in Figure 40, which surrounded a shaft in a way that the interior portion of the baffle wall plugged an inner bore formed by a peripheral portion of the baffle wall, in the sense of feature e.

As pointed out by the respondent, the patent, paragraph [0043] states that the baffle may have holes in it. The respondent argued that taking this into account, the claim covered a baffle which had a hole for a shaft but that the shaft must essentially seal the baffle. Therefore, the construction shown in Figure 40 fell under the scope of claim 1.

The Board agrees with the respondent in that claim 1 includes transmission systems in which the baffle has a hole which is closed by a shaft extending through it. However, for the variant depicted in Figure 40 it is not shown that the shaft blocks the hole and thus the baffle wall cannot be said to "plug" the inner bore. Also, the shaft shown in Figure 41 clearly has a much smaller diameter than the opening in the baffle.

Therefore, the subject-matter of claim 1 of auxiliary request 1 differs from the disclosure of D3 by feature e, and is thus new.

3. Inventive Step

3.1 In view of D3 taken alone

The respondent viewed the example shown in Figure 40 of D3 as the closest prior art. As discussed above, this example does not disclose feature e of claim 1, i.e. that the interior portion of the baffle wall was configured to plug an inner bore formed by a peripheral portion of the baffle wall. Moreover, the optimised designs of D3 do not disclose a double walled outlet.

The skilled person would understand that a closed inlet was preferable, i.e. the optimised designs shown in D3.

D3 describes the double wall outlet variant of the baffle (Figure 40) as being the "non-optimised" variant i.e. an inferior design. Indeed page 13, final paragraph states "[n]otice the unneeded complexity of the design and how many design guidelines I laid out are missed". Consequently the Board considers that the skilled person would rather take the complete optimised solution from D3 and would therefore not retain the double walled outlet of the Figure 40 example of D3 which D3 teaches away from.

Alternatively, starting from the embodiment shown in D3, Figure 40, the skilled person would have no reason to use the baffle known from D1, D4, D6 or D8 in this transmission because to do so would mean that there would be no through shaft and consequently the transmission would have to be fundamentally redesigned.

Hence, in view of the two examples of D3, the skilled person would not arrive at the subject-matter of claim 1 without an inventive step being involved.

3.2 Starting from D1, D4, D6 or D8 as closest prior art

The subject-matter of claim 1 differs from the transmissions disclosed in these documents by feature f.

Starting from D1, the problem to be solved was to provide a more compact arrangement.

The respondent argued that the skilled person would recognise that the double walled outlet was more compact than the pipe of D1 and thus utilise the double wall outlet design shown in D3, Figure 40.

However, as discussed above, the skilled person would be dissuaded by D3 from applying this single feature from the non-optimised baffle shown in Figure 40 to the known baffle shown in D1.

Starting from D4, D6 or D8 as closest prior art, the respondent argued that the double walled outlet had the effect of directing the lubricant away from the second gear and of reducing the likelihood of other lubricant flowing in (paragraph [0047] of the patent).

For the reasons given above, the skilled person would be dissuaded by D3 from applying this single feature from the non-optimised baffle shown in Figure 40 to the known baffle shown in D4, D6 or D8.

3.3 Hence, the subject-matter of claim 1 of auxiliary request 1 involves an inventive step.