T 0111/24 10-01-2025

1. Main request

1.1 Compliance with Rule 80 EPC

Rule 80 EPC provides that claims may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100 EPC.

Claim 1 as amended requires the apparatus to be suit­able for adjusting the height of a leg that is suitable for supporting a cabinet. The leg of claim 1 as granted has to be suitable for supporting a cabinet, appliance or structure. The limitation to a cabinet limits the claimed subject-matter. Thus, the amendment is poten­tial­ly suitable for overcoming a ground for opposition under Article 100 EPC. Consequently, the set of claims complies with Rule 80 EPC.

1.2 Claim interpretation

1.2.1 Feature 8

According to feature 8, the coupling is a foot compri­sing the driven member and a threaded socket for engaging a corresponding threaded shaft to form the height adjustable leg.

One issue that had to be decided by the board is whether the feature requires the threaded socket to be part of the foot ("a foot comprising the driven member and a threaded socket") or whether it could also be under­stood in such a way that the coupling is made up of a foot and a threaded socket.

Appellant I argued that the latter understanding was excluded in the absence of a comma ("the coupling is a foot comprising the driven member, and a threaded socket"). This argument did not persuade the board because no supporting evidence was filed and because comma rules are not always applied consistently even by native speakers of English (cf. the so-called "Oxford comma").

In view of the established rule that a claim should be interpreted in the broadest technically meaningful way, the board concluded that according to feature 8, the threaded socket can be, but does not have to be, part of the foot. A coupling comprising (i) a foot and (ii) a threaded socket that is not part of the foot would also fall under feature 8.

Moreover, the threaded shaft is not necessarily part of the claimed apparatus, but it can be.

Appellant I also pointed out that feature 8 corresponds to the first of the two alternatives of claim 6 of the patent as granted and should be interpreted according­ly. In the first alternative of claim 6 as granted, the socket is driven; in the second, the shaft. However, the interpretation of a claim feature that as such is clear cannot be based on the context from which it has been isolated. It has to be inter­preted as it stands, regardless of how it came to be. Therefore, it is not warranted to read feature 8 in such a way that the socket has to be driven. In the context of claim 1, feature 8 does not require this narrow interpretation.

1.2.2 Feature 10

Feature 10 requires the tool to comprise a guide for

setting the driving member at a height relative to the floor surface so that the driving member is positioned axially relative to the coupling for engagement with the driven member, the height of the driven member and height of the driving member both being referenced from the floor surface.

The guide according to feature 10 sets the driving member at a certain axial distance from the floor. Feature 10 does not require the guide to be such that the driving member moves along a predetermined path.

The crucial matter is whether "for engagement" is to be understood such that the guide brings the driving member to the axial position at which the engagement takes place or whether the indication is an indication of purpose to which the guide has to contribute but does not have to establish on its own. In the latter case, "for engagement" is understood as meaning "for the purpose of engagement".

In this context, it is important to note that feature 5 also refers to "engagement". According to this feature, the tool and the coupling are complementarily adapted to releasably maintain engagement between the driving member and the driven member. It is clear from this feature that "engagement" refers to the final state in which the driving member and the driven member are connected, rather than to the process of bringing them together. In other words, "engagement" is not just about making contact; it designates the state in which the parts are engaged with each other.

Therefore, the board interprets "for engagement" in feature 10 within the meaning of an indication of the purpose of the driving member being in engagement with the driven member when the height of the leg is being adjusted. For feature 10 to be present, it is not required that the guide is such that the connection between the driving member and the driven member is established as soon as the guide has played its role. This conclusion is also in line with dependent claim 8, according to which the tool comprises a ramp surface that axially positions the tool to the coupling.

1.3 Novelty of the subject-matter of claim 1 over document D6

Document D6 concerns a device for adjusting the height of a device standing on legs. Fig. 1 shows tool 22 for rotating the rotating member 3 provided at the bottom of device 1:

FORMULA/TABLE/GRAPHIC

The opposition division reached the conclusion that document D6 disclosed all of the features of claim 1 of the main request (see point 2.6 of the Reasons for the decision under appeal). Appellant I contested the disclosure of features 1, 6, 8 and 10.

1.3.1 Feature 1

Feature 1 limits the claim to an apparatus for adjusting a height adjustable leg having a longitudinal axis and for vertically supporting a cabinet.

The opposition division identified features 2, 3, 18 and 23 of the device shown in Fig. 1 of document D6 as the height adjustable leg and device 1 as the cabinet according to feature 1.

Appellant I argued that threaded shaft 18 moved in an axial direction along nut 23, resulting in a height adjustment of device 1. The height of the leg itself remained unchanged because it is the upper end of shaft 18 located in the device that defines the constant, unchangeable height of the support.

This interpretation of the expression "height adjust­able leg" is unfounded. The skilled person would have understood that the height to be adjusted is the leg's effective height, i.e. the part of the leg responsible for the height adjustment of the cabinet. Therefore, feature 1 is disclosed in document D6.

1.3.2 Feature 6

According to feature 6, the driving member and the driven member of the tool are "gears that releasably mesh together when the tool is engaged with the coupling [...] from any lateral angular direction relative to the longitudinal axis of the leg".

The opposition division identified gears 7 and 3 of the device of document D6 as the driving member and driven member, respectively. In the context of "any lateral angular direction", the opposition division referred to the arrow in Fig. 3 of document D6:

FORMULA/TABLE/GRAPHIC

According to the opposition division, feature 6 only requires "that the driving member and the driven member mesh together when the tool is engaged with the coupling". Thus, a combination of a lateral movement of the tool and an axial movement of guide plate 15 as shown in Fig. 4 of document D6 is not excluded.

FORMULA/TABLE/GRAPHIC

Appellant I's main counter-argument is based on its interpretation of feature 6, according to which the feature requires an adaptation of the tool and coupling in such a way that they can be brought into a driving connection by an exclusively lateral approach.

In the board's view, it is unwarranted to read a limi­tation to an exclusively lateral approach into feature 6. The feature as it stands is open to a broader technically meaningful interpretation. Consequently, the board concludes that document D6 discloses feature 6.

1.3.3 Feature 8

According to feature 8, the coupling is a foot comprising the driven member and a threaded socket for engaging a corresponding threaded shaft to form the height adjustable leg.

The opposition division identified gear 3 of the device of document D6 as the driven member, and nut 23 as the threaded socket engaged with threaded shaft 18.

Appellant I's counter-arguments are based on an inter­pretation of feature 8 that the board does not endorse. In particular, feature 8 does not require the socket to be driven (see point 1.2.1 above). The foot of docu­ment D6 comprises a driven member (gear 3) and a threaded socket (nut 23) that engages threaded shaft 18 and the combination of these means forms a height adjust­able leg of apparatus 1. The fact that the threaded shaft extends into device 1 is not relevant in this context. Thus, the board concludes that feature 8 is disclosed in document D6.

1.3.4 Feature 10

According to feature 10, the tool comprises a guide for setting the driving member at a height relative to the floor surface so that the driving member is positioned axially relative to the coupling for engagement with the driven member, the height of the driven member and height of the driving member both being referenced from the floor surface.

The opposition division identified both groove portion 20 as shown in Fig. 3 of document D6 and the lower side of arm 5 (see Fig. 1) as guides according to feature 10.

Appellant I's counter-arguments rely on a unduly narrow interpretation of feature 10. Considering the inter­pretation adopted by the board (see point 1.2.2 above), the board concludes that feature 10 is disclosed in document D6 as well.

1.3.5 Conclusion regarding novelty

Document D6 discloses all of the features of claim 1 of the main request.

1.4 Fate of the main request

Since the subject-matter of claim 1 lacks novelty within the meaning of Article 52(1), Article 54 EPC, the main request is not allowable. Thus, this request must be rejected.

2. Auxiliary request 1

2.1 Admittance

The set of claims of auxiliary request 1 was filed for the first time with appellant I's reply to appellant II and III's statements of grounds of appeal in view of an objection of lack of clarity against a previous version of auxiliary request 2. Consequently, its admittance is governed by Article 12(4) RPBA, according to which it may be admitted at the discretion of the board.

The objection in question had been raised during the opposition proceedings but the oppo­sition division found it not well-founded. It was raised again in the statements of grounds of appeal of appellants II and III, which triggered the filing of auxiliary request 1 with appellant I's reply. This filing did not negative­ly affect procedural economy because appellant I responded to the objection during the first phase of the appeal proceedings. Moreover, the amendment con­sists in a change from an indefinite to a definite article which could not have surprised the other parties.

In view of the above considerations, auxiliary request 1 was admitted into the appeal proceedings.

2.2 Compliance with Rule 80 EPC

Rule 80 EPC provides that claims may be amended

provided that the amendments are occasioned by a ground for opposition under Article 100 EPC.

Contrary to the view of appellant III, the board con­siders that the amendments referred to in Rule 80 EPC are amendments over the claims as granted. Therefore, when examining the compliance of a request with Rule 80 EPC, it is not appropriate to consider the amendments over other requests from which the request at issue may have been derived.

Claim 1 of auxiliary request 1 differs from claim 1 as granted in that

- the reference to an appliance or structure in feature 1 is absent,

- the height adjustable leg is part of the apparatus (feature 2'), and

- the threaded socket is "in engagement with" the threaded shaft rather than "for engaging" the shaft (feature 8').

The board is satisfied that each of these amendments limits the claimed subject-matter and is potentially suitable for overcoming a ground for opposition under Article 100 EPC. Consequently, the set of claims of auxiliary request 1 is found to comply with Rule 80 EPC.

Even if auxiliary request 1 were to be compared with former auxiliary request 2, which was amended for clarification, Rule 80 EPC would not constitute an obstacle to its admission. This is because the amendment sought to overcome a clarity objection raised by appellant III against a previous amendment of a granted claim. Article 101(3)(a) EPC requires the opposition division to examine whether the amendments made by the patent proprietor meet the requirements of the EPC, i.e. including those of Article 84 EPC (to the extent permitted by the Enlarged Board of Appeal's decision G 3/14). Rule 80 EPC cannot be used against amendments seeking to overcome an objection raised under such circumstances.

2.3 Novelty of the subject-matter of claim 1 over document D6

Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that the apparatus is required to comprise the height adjustable leg. Moreover, the wording "for engaging" in feature 8 has been replaced by "in engagement with".

The board agrees with appellant II that document D6 discloses a height adjustable leg formed by adjuster 2, adjuster gear 3, threaded shaft 18 and threaded socket 23. Appellant I's counter-arguments have not convinced the board. The skilled person would have understood that the support disclosed in document D6 is height adjust­able even though the length of threaded shaft 18 is constant. The argument that threaded socket 23 is not part of the foot is based on an interpretation of feature 8 that the board does not endorse (see point 1.2.1 above).

The replacement of the expression "for engaging" with "in engagement with" cannot restore novelty over document D6 either because in this document threaded socket 23 is disclosed to be in engagement with threaded shaft 18.

Thus, the subject-matter of claim 1 lacks novelty within the meaning of Article 52(1), Article 54 EPC over document D6.

2.4 Conclusion regarding auxiliary request 1

Since the subject-matter of claim 1 is not new over document D6 (see point 2.3 above), auxiliary request 1 is not allowable. Consequently, this request must be rejected.

3. Auxiliary requests 2 and 3: admittance

Claim 1 of auxiliary requests 2 and 3 is identical to

claim 1 of auxiliary requests 3 and 7 received by the EPO on 10 August 2023, except that feature 2' refers to "the height adjustable leg", whereas claim 1 of former auxiliary request 3 had "a height adjustable leg".

Auxiliary requests 3 and 7 received on 10 August 2023 were never examined by the opposition division. This is because when the opposition division informed the parties that the subject-matter of claim 1 of auxiliary request 2 was not new over document D6, appellant I "decide[d] to continue with auxiliary request 10" (see points 13.5 and 14 of the minutes).

Appellant I did not withdraw auxiliary requests 3 to 9. Its way of proceeding could be interpreted as renumbering its auxiliary requests or, in other words, a change of the order in which the auxiliary requests should be dealt with by the opposition division. Be that as it may, Appellant I's decision had the effect that the opposition division did not have to decide on auxiliary requests 3 to 9.

Given that the primary purpose of the appeal procee­dings is a judicial review of the contested decision (see Article 12(2) RPBA), it is not appropriate to admit requests which appellant I deliberately chose not to have examined in the opposition proceedings (see also decision T 206/22, point 8 of the Reasons).

Appellant I's argument that it can be seen how the opposition division would have decided on auxiliary requests 2 and 3 on the basis of the reasons for the decision under appeal in respect of auxiliary request 4 cannot lead to a different conclusion. When appellant I decided to immediately proceed with auxiliary request 10, it could not have predicted that the opposition division would find a feature common to auxiliary requests 3, 7 and 10 to be the only dis­tin­guishing feature over the disclosure of document D6. This outcome cannot retroactively rescind appellant I's decision to withhold auxiliary requests 3 and 7 for them to be decided upon by the opposition division.

Consequently, the board decided not to admit auxiliary requests 2 and 3 under Article 12(4) RPBA.

4. Auxiliary request 4

4.1 Admittance of document D20

Document D20 is a German patent application allegedly discovered by appellant II after the decision under appeal and filed with appellant III's statement of grounds of appeal less than one month after the opposition division had issued the reasons for its decision.

As can be seen from point 5.4 of the Reasons for the contested decision, feature 11, according to which the foot is formed from a plastics material, was decisive for the finding that the patent as amended in the form of what was then auxiliary request 10 complied with the requirements of the EPC. This finding triggered a new search, in which document D20 was found.

For the question of admittance of document D20, Article 12(4),(6) RPBA was relevant. In the board's view, document D20 could and should have been filed during the opposition proceedings. Moreover, it is not prima facie highly relevant for the question of whether the use of plastics material for the foot is inventive. Appellants II and III also overestimate the prima facie relevance of the document for the remaining requests on file; for instance, document D20 does not prima facie disclose a guide according to feature 10. Moreover, the combination of features 6, 8 and 11 was present in auxiliary requests filed well before the oral procee­dings before the opposition division, and therefore there was good reason to carry out the complementary search during the oppo­sition proceedings. The argument that the admission of the document might make national nullity proceedings unnecessary is not decisive because this argument could always be used to justify the admission of late-filed documents.

Having considered all these aspects, the board decided not to admit document D20.

4.2 Compliance with Article 83 EPC

This objection concerns feature 6, according to which

the driving member and the driven member are gears that releasably mesh together when the tool is engaged with the coupling from any lateral angular direction rela­tive to the longitudinal axis of the leg.

The objection is based on situations where (i) the teeth of the driving gear meet the teeth of the driven gear such that they do not mesh together, or where (ii) the gears are brought together at an angle.

In the board's view, the objection is unfounded. The skilled person is aware that there are configurations that could hinder the gears from meshing, but this would not prevent the skilled person from carrying out the invention. In the unlikely case that the teeth of the gears meet exactly, it would be sufficient to slightly rotate the gear of the driving part for the meshing to be achieved. Moreover, there is no reason to believe that bringing together the gears at an angle makes meshing impossible. Furthermore, even if such cases did exist, a corresponding configuration would not be covered by claim 1, which requires meshing when the tool is engaged with the coupling.

4.3 Compliance with Article 84 EPC

4.3.1 Intrinsic contradiction

Appellants II and III pointed out an intrinsic contra­diction in claim 1 because the claimed apparatus for adjusting the leg itself comprises parts of the leg, such that the apparatus acts on itself.

In the board's view, this objection is unfounded. When the claim is considered as a whole, its admittedly unusual formulation does not raise doubts in the skilled person's mind as to what exactly is claimed, namely an apparatus whose technical purpose is achieved in that some of its parts act on others.

4.3.2 Handle (feature 12)

Feature 12 requires the tool to comprise an arm and a handle. According to appellants II and III, it is not clear whether the handle of feature 12 is a torque input or whether some other kind of handle is meant.

In the board's view, the term "handle" has to be given its broadest technically meaningful interpretation. It is not necessarily limited to a handle allowing for torque input. The term as such is broad, but does not make claim 1 unclear.

4.3.3 Conclusion

The objections under Article 84 EPC are unfounded.

4.4 Compliance with Article 123(2) EPC

4.4.1 Feature 6

According to feature 6, the driving member and the driven member are gears that releasably mesh together when the tool is engaged with the coupling from any lateral angular direction relative to the longitudinal axis of the leg.

The board is unable to see any technically meaningful difference between the expression "coupling ... from any lateral angular direction" as used in feature 6 and the expression "coupling laterally from any angular direction" as found on page 3, lines 34 to 36, of the application as filed. In the board's view, the term "lateral" does not exclude that the tool is introduced at an angle with respect to a plane perpendicular to the axial direction. The term "lateral" is not synony­mous to "radial". Thus, the objection is unfounded.

4.4.2 Feature 7

Feature 7 requires the tool to be able to remain in a stationary angular position relative to the leg when the driving member drives the driven member for leg height adjustment.

The board understands the term "able" in feature 7 to be equivalent to "suitable". There is no discernible difference between a tool that is suitable to remain in a stationary angular position and a tool that is adap­ted to remain in this position. In the present context, the two expressions are synonymous. Consequent­­ly, the amendment does not violate Article 123(2) EPC.

4.4.3 Feature 12

According to feature 12, the tool comprises an arm and a handle.

Appellant II and III objected to the use of the word "handle", the precise meaning of which was ambiguous, and to the absence of any reference to a rod.

The board considers both objections unfounded.

The argument based on the use of "handle" is in reality a clarity objection (see point 4.3.2 above). The fact that the term is used in different ways in the appli­cation as filed does not mean that the introduction of a reference to a handle has the consequence that the claimed subject-matter extends beyond the content of the application as filed.

The argument that there are embodiments in which there is a rod but no arm is not persuasive because the skilled person would have understood that in such a case the rod is also an arm. All of the embodiments shown in the application as filed comprise an arm, regardless of whether or not it is referred to as such.

4.5 Compliance with Article 123(3) EPC

Appellants II and III argued that claim 1 was amended in such a way as to extend the protection conferred by the patent because claim 1 as amended covers an apparatus comprising a height adjustable leg, whereas claim 1 as granted covered an apparatus comprising a coupling. According to appellants II and III, this led to a "replacement by aliud", aliud being the Latin term for "another entity" or "something else". Several decisions where the boards considered the amended claim to define such an aliud are summarised in "Case Law of the Boards of Appeal", 10th edition, July 2022, section II.E.2.4.12. Appellants II and III referred in particular to decisions T 1321/05 and T 352/04.

In the case underlying decision T 1321/05, claim 1 as granted was directed at a graphic-marking film. Claim 1 as amended was directed to a graphic-marking film bonded to a vehicle. In point 9 of the Reasons for the decision, the deciding board wrote:

"By the incorporation of the feature into Claim 1 of auxiliary request 3 that the film is bonded to a vehicle, its subject-matter is altered to relate to a film in association with a vehicle. In the Board's judgment, this combination of two physical entities - the film on the one hand and the vehicle on the other - constitutes a new physical entity different from the precursor-entities, ie different from the film constituting the subject-matter claimed by the granted patent. For the above reasons, claim 1 of auxiliary request 3 seeks protection for subject-matter not covered by the scope of the patent in suit, ie an aliud, contrary to Article 123(3) EPC."

In case T 352/04, claim 1 as granted concerned a hair treatment composition. Claim 1 as amended comprised a feature according to which the composition is in the form of a non-aerosol hairspray with a mechanically-operated spray device.

In point 2.9.2 and 2.9.3 of the Reasons for the decision, the deciding board explained that a mechanically operated spray device containing a cosmetic hair treatment composition could not be seen as a method of preparing the hair treatment product or as a (further) use of the product, and that it did not qualify as an admissible change of claim category either. Rather, the amendment of the claim shifted the scope of protection towards subject-matter that was not previously protected, in a way that was detrimental to legal certainty for third parties, i.e. precisely what Article 123(3) EPC sought to prevent.

In the understanding of the present board, a claim directed at a product covers all possible uses of this product, including uses in combination with other entities. Therefore, the board has doubts as to whether the decisions referred to above should be followed. Nonetheless, this question can remain unanswered because in the present case the amendment does not lead to an aliud within the meaning of the above-cited decisions. In claim 1 as granted, the apparatus comprises a tool and a coupling, which consists of several parts of the leg, the height of which is to be adjusted. Claim 1 of auxiliary request 4 is directed at an apparatus comprising a tool, a coupling and the parts of the leg that are not part of the coupling. This is not a change of object comparable to the change from a film to a vehicle or from a hair treatment composition to a spray device.

It may well be that in infringement proceedings before national courts the amendment can affect the damages for infringement allocated to the patent proprietor, but in the board's view this is not what is meant by Article 123(3) EPC when it refers to the "protection" conferred by the patent.

The board is unable to see a shift of the scope of protection of the claim such that there are embodiments that were not covered by claim 1 as granted that are now within the scope of protection. Appellants II and III did not provide specific examples in this respect. Claim 1 as granted does not exclude the threaded shaft from being part of the coupling, which means that the combination of tool + coupling covers the combination of tool + coupling including a leg, such that the latter is within the scope of protection of claim 1.

Consequently, the board concludes that the objection under Article 123(3) EPC is unfounded.

4.6 Inventive step of the subject-matter of claim 1, starting from document D6

4.6.1 Distinguishing features

It is undisputed that document D6 does not disclose feature 11. Appellant I argued that features 13 and 14 are not disclosed either.

(a) Feature 13

According to feature 13, the arm and the handle of the tool extend along its longitudinal axis.

Appellant III identified body 5 and holder (see PDF) 13 of the apparatus of document D6 as the arm and handle of the tool. These elements extend along the longi­tudinal axis of the tool (see Fig. 2). Appellant I argued that handle (see PDF) 12 rather than holder 13 constitutes the handle.| |

It is inevitable that the skilled person operating the tool of document D6 would hold holder 13 when positioning the tool. The existence of a handle does not mean that the user holds the tool exclusively by that handle. That the only element referred to as a handle in document D6 is element 12 is not decisive because holder 13 also qualifies as a handle according to the above definition.

Having considered all of the above, the board concludes that document D6 discloses feature 13.

(b) Feature 14

Feature 14 requires the tool to comprise two lateral extensions forming a jaw for capturing a diameter of the coupling to releasably retain the tool to the coupling in a lateral direction to releasably maintain engagement between the driving member and the driven member when the driving member drives the driven member for height adjustment of the leg.

Appellant III argued that groove portion 20 of tool 22 (see Fig. 3) constituted a jaw within the meaning of feature 14.|FORMULA/TABLE/GRAPHIC|

Appellant I pointed out that this jaw is used only for pre-positioning and that the engagement between the driving member and the driven member was maintained by pins 16 that engage in grooves 4.

A relevant question is whether the jaw of tool 22 captures a diameter of the coupling to releasably retain the tool to the coupling in a lateral direction.

The jaw can be said to accommodate a diameter of the coupling so as to radially position the tool with respect to the foot. The question that arises is whether it can also capture or retain the tool in a lateral direction or whether this effect is achieved by the pins' engagement in grooves 4.

As appellants II and III rightly pointed out, feature 14 is illustrated in paragraph [0105] of the patent. As stated in this paragraph, feature 14 is achieved by means of jaw 63 formed by lateral extensions 56 extending around the foot by 180° or less.

FORMULA/TABLE/GRAPHIC

Guide plate 15 of Fig. 3 of document D6 with its groove 20 has the form of a jaw with lateral extensions. When this jaw is brought into contact with the foot, it extends around the foot by about 180°. This information can be extracted from Fig. 3 without the need to measure an angle. Therefore, in accordance with the teaching of paragraph [0105] of the patent, the tool can be said to comprise two lateral extensions forming a jaw for capturing a diameter of the coupling to releasably retain the tool to the coupling in a lateral direction to releasably maintain engagement between the driving member and the driven member, the lateral direction being the direction perpendicular to the direction of introduction of the tool in the plane of the drawing. There is no indication in document D6 that there is or should be significant clearance between the lateral extensions and threaded shaft 18. The existence of chamfers at the end of groove 20 and the fact that pins 16 have to be reliably guided into the corresponding grooves argues against significant clearance. The fact that document D6 does not explicit­ly mention the retention effect is unproblematic because the skilled person understands that the effect is necessarily achieved. That pins 16 also have a retaining effect does not alter this finding. The pins have the same effect as the user pushing the tool against the foot, which is mentioned at the end of paragraph [0105] of the patent.

In view of the above, the board concludes that docu­ment D6 also discloses feature 14.

(c) Conclusion

Document D6 discloses all of the features of claim 1 except feature 11.

4.6.2 Objective technical problem

Page 39, line 11, of the patent application as filed discloses that "the foot or coupling may be formed from a plastics material". No specific advantage of this choice is mentioned. Thus, the objective technical problem can be formulated as the provision of a suitable or alternative material for the foot of a height adjustable leg.

4.6.3 Obviousness to the skilled person

Document D6 does not disclose the material from which the leg is formed. In the board's view, appellant I's arguments according to which the skilled person would have assumed that gear 3 is metallic are not persu­asive. Neither the tolerances of Fig. 3 nor the fact that there is a power transmission allow that con­clusion to be drawn with certainty. It is well known, and beyond that also undisputed, that plastics materials have been used for legs of cabinets for decades. As a consequence, the skilled person would have considered the use of a plastics material (possibly of fibre-reinforced plastics if need be), also for the gear. Considering the increased weight and cost involved, the use of metallic gears would have been second choice. Therefore, using a plastics material for the foot of document D6 would have been an obvious choice for the skilled person trying to put into practice the teaching of document D6.

4.6.4 Conclusion

The subject-matter of claim 1 does not involve an inventive step within the meaning of Article 56 EPC starting from document D6.

4.7 Conclusion regarding auxiliary request 4

Since the subject-matter of claim 1 is not inventive (see point 4.6 above), auxiliary request 4 is not allow­able. Consequently, auxiliary request 4 must be re­jected and the decision under appeal must be set aside.

5. Remittal to the opposition division

As the decision under appeal was to be set aside, the board had discretion over whether or not to remit the case to the opposition division pursuant to Article 111(1) EPC. Under Article 11 RPBA, the board shall not remit an case unless special reasons present themselves for doing so.

All the parties, including the party that had requested acceleration, requested the remittal of the case to the opposition division for further prosecution.

A remittal is not detrimental to the interests of the public because there are several divisional applica­tions belonging to the same patent family, the final scope of which is not yet known.

The board also took into account the fact that although there are pending infringement proceedings before Landgericht Düsseldorf, the request for acceleration was filed by one party to the proceedings and not by the court.

Having considered all of the above, the board has decided to grant the parties' unanimous request for a remittal.