T 0184/07 07-10-2008

Reasons for the Decision

State of the art

1. The appellant has filed two sets of evidence of state of the art, W1a and O1.

1.1 W1a is an extract from a magazine containing an advertisement for an actuating lever for a motorcycle clutch. W1a is accompanied by evidence concerning the date on which the magazine was made available to the public and the board is satisfied that W1a was published before the priority date of the contested patent and therefore belongs to the state of the art within the meaning of Article 54(2) EPC 1973. The respondent does not challenge the status of W1a as state of the art so the matter need not be considered in further detail.

1.2 O1 relates to an alleged public prior use of an actuating lever on a motorcycle.

1.2.1 The appellant possessed an actuating lever which it believed to have been fitted to a Suzuki GSX-R 600V motorcycle for at least the 1997 model year. It supplied photographs of the actuating lever to Suzuki GmbH and requested confirmation that motorcycles equipped with it were supplied to dealers before the priority date of the present patent. In reply Suzuki GmbH stated that the actuating lever was fitted as from the 1996 model year to the Suzuki GSX-R 750 motorcycle which had been certified in Germany ("Allgemeine Betriebserlaubnis") with effect from 27 September 1995.

1.2.2 The respondent argues that the appellant has not discharged its burden of proof, arguing that the availability of the actuating lever before the priority date has not been proved "up to the hilt". That level of proof has been required by the boards in cases where only one party has access to information about the alleged prior use, cf. T 472/92 (OJ EPO 1998, 161). The level of proof appropriate in the case of mass-produced consumer products, as here, however, is the balance of probabilities, cf. T 241/99 (not published in OJ EPO).

1.2.3 It is normal that vehicles designated as being of a particular model year are supplied to customers before the beginning of the calendar year. In the present case that would mean that motorcycles equipped with the actuating lever held by the appellant were made available about one year before the priority date. This is consistent with the certification date. It would be contrary to general experience that no such motorcycle was delivered to a customer within such a period and the respondent has not suggested that to be the case. The fact that the appellant apparently was mistaken as regards which motor-cycle was equipped with the actuating lever in no way undermines the information supplied by Suzuki GmbH.

1.2.4 On the basis of the foregoing the board finds the public prior use O1 as proven.

Main request

2. Claim 1 specifies "a first part (91) of said spring (42) being engaged with one of said members (30, 40), and a second part (92) of said spring … being normally biased to engage a first longitudinally extending channel (80) formed in one of said members (30, 40) to restrict rotational movement between said members (30, 40) and wherein said first part (91) of said indexing spring (42) includes a longitudinal portion (93) extending longitudinally within a bore (52, 70) of one of said members" (emphasis added). The three occurrences of the term "one" result in some combinations of features for which the appellant argues there to be inadequate disclosure in the patent specification. In the board's view the objection is unfounded because, as convincingly argued by the respondent, the skilled person would readily recognise some combinations of features to be unworkable. It is those combinations for which the appellant argues the disclosure to be inadequate. Since those combinations do not fall within the claim when sensibly interpreted they cannot give rise to an objection of insufficiency of disclosure. The board does not now consider this matter in more detail because, as set out below, the request fails for the reason that the subject-matter of the claim involves no inventive step.

3. Consideration of inventive step will be based on the claim as it would be interpreted by the skilled person. He would read the above referenced wording as: "a first part (91) of said spring (42) being engaged with one of said members (30, 40), and a second part (92) of said spring … being normally biased to engage a first longitudinally extending channel (80) formed in the other of said members (30, 40) to restrict rotational movement between said members (30, 40) and wherein said first part (91) of said indexing spring (42) includes a longitudinal portion (93) extending longitudinally within a bore (52, 70) of said one of said members".

4. In the actuating device according to W1a indexing is by means of a beam spring, a first part being engaged with the base member and the second part engaging a longitudinally extending channel formed in the adjusting member. The parties and the board are in agreement that the subject-matter of claim 1 differs from the actuating device according to W1a only by the feature of the longitudinal portion of the spring extending longitudinally within a bore of the other member, which in W1a would be the base member.

4.1 The respondent takes the view that the differentiating feature implies that the indexing spring is a torsion spring. It further argues with reference to the description that this solves the problem of providing a more compact arrangement together with the possibility of easily tailoring the characteristics of the spring to the desired duty. However, the mere extension of a longitudinal portion within a bore does not imply a torsion spring. It would be quite feasible in the device according to W1a to modify the base member in order to provide a bore in which a portion of the leaf spring extends, without any interaction between the spring and the bore. Such an arrangement would correspond to the subject-matter of present claim 1 but far from making the device more compact the modification would increase its size. Moreover, the characteristics and function of the spring would remain unaffected. The subject-matter of present claim 1 therefore does not solve the problem defined by the respondent. Moreover, the board is unable to identify any other problem which is solved and which would be derivable by the skilled person equipped with the teachings of W1a and the original application in the present case, cf. T 547/90, Reasons point 3, 4th paragraph (not published in OJ EPO).

4.2 In the absence of an identifiable technical problem which was originally disclosed the differentiating feature is no more than an arbitrary modification of the device according to W1a. Such a modification may be "non-obvious" for the skilled person in the sense that he would have no motivation to provide the combination but it is devoid of technical relevance and so cannot establish an inventive step, cf. T 157/97, Reasons 4.2.4 (not published in OJ EPO). The same conclusion would result from consideration of claim 1 in the light of O1 as closest state of the art.

Auxiliary request

5. During the oral proceedings the appellant requested that inter alia the former eighth auxiliary request filed by the respondent be disregarded in view of it being filed too close to the oral proceedings for it to be reasonably dealt with. Although that auxiliary request was subsequently withdrawn, the present one derives from it and its admittance therefore is a pre-condition for the admittance of this request.

5.1 In accordance with Article 13(3) RPBA amendments sought to be made to a party's case after oral proceedings have been arranged "shall not be admitted if they raise issues which the Board or the other party … cannot reasonably be expected to deal with without adjournment of the oral proceedings".

5.2 In the present case the claims of the respondent's former eighth auxiliary request essentially differed from those as granted by the introduction into claim 1 of features of claims 5 to 7 as granted and the introduction of a new claim 2 directed towards an alternative embodiment mentioned in the description as granted. The alternative embodiment had been discussed in some detail during both the opposition and appeal procedures and the appellant at the time of filing the opposition had explicitly addressed inventive step of the subject-matter of claims 5 to 7 as granted. Under these conditions the board considers that the appellant could reasonably be expected to deal with the former eighth auxiliary request without postponing the oral proceedings. The board also could see no obstacle to itself dealing with the request. The board therefore found that the former eighth auxiliary request should be admitted. Since the present auxiliary request is a corrected and simplified version of the former eighth auxiliary request the finding applies correspondingly.

6. The closest state of the art for consideration of inventive step of claim 1 is the publicly prior-used device O1. The indexing spring of that device is a beam spring which is formed into a U-shape. The spring is mounted by means of a screw which clamps a part of the first portion against a surface on the base member. Rotation of the spring about the axis of the screw is prevented by a transverse portion in the form of a folded tab which engages a side surface of the base member.

6.1 The subject-matter of present claim 1 therefore differs from the prior art device by the following features:

- the indexing spring is a torsion spring; and

- the first part of the indexing spring includes a longitudinal portion extending longitudinally within a bore of the base member.

6.2 The board is satisfied that the problem defined by the respondent, namely providing a compact device in which the spring characteristics may easily be tailored to the required duty, is solved by the differentiating features. None of the cited state of the art contains any teaching which would render it obvious for the skilled person to modify the device of O1 by introducing a torsion spring and incorporating it as presently claimed. Modifying the device of O1 in such a way also extends beyond the normal activity of the skilled person. Whilst W2 in the embodiment of figure 15 discloses a similar device having an indexing spring incorporated in a bore in the base member, the spring is quite different, being neither a torsion spring nor cantilevered and having no transverse portion external to the bore.

6.3 The appellant takes the view that the indexing spring of O1 is a torsion spring so that the transverse portion is the only differentiating feature, and that since claim 1 does not specify that the transverse portion engages the base member, no recognisable technical effect is achieved and no inventive step can be recognised. The appellant argues that the indexing spring is a torsion spring because it is subject to torsion resulting from transverse forces being applied at one leg of the U-form being reacted at the other leg. However, the spring of O1 is clearly recognisable by the skilled person as a beam spring in which the primary restoring force results from bending; the torsion results only from lateral forces applied to the spring during movement of the adjusting member. Moreover, the feature of the torsion spring necessarily requires rotational restraint at one end and it is implicit that this is provided by the transverse portion.

6.4 On the basis of the foregoing the board concludes that the subject-matter of claim 1 according to this request does involve an inventive step. Since claims 2 to 15 contain all features of claim 1 the same conclusion applies to them.