T 0710/15 16-06-2016

Reasons for the Decision

1. Alleged partiality of chairman of opposition division

1.1 The objection of partiality fails, for the reasons explained below. The board does however consider that the opposition division committed errors of judgement in not admitting some of the opponent's submissions.

1.2 The generally accepted principle that nobody should decide a case in respect of which a party may have good reasons to assume partiality applies also to the members of EPO first-instance departments taking part in decision-making activities affecting the rights of any party (see "Case Law of the Boards of Appeal of the European Patent Office", 7th edition 2013, page 636). This reflects a basic principle of procedural law in the EPC contracting states (cf. Article 125 EPC), namely that all the members of a tribunal must be above any suspicion of bias. As held by the Enlarged Board of Appeal in G 5/91 (OJ EPO 1992, 617, Reasons, point 6), the question whether or not an objection of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case.

1.3 The fact that the patentee had asked for the replacement of the chairman, and that this request was not granted by the latter's director, does not constitute, in the board's view, a sufficient reason for assuming that the opposition division, and in particular its chairman, were unable to act without bias. Furthermore, the fact that no questions were asked by the members of the opposition division at the oral proceedings cannot be taken as an indication of misconduct, as this is normal practice when the facts and arguments have been presented by the parties in a sufficiently clear and exhaustive manner.

1.4 The appellant also alleged that the partiality of the opposition division became evident by the decisions taken in the course of the oral proceedings, in particular:

1.4.1 A new argument with respect to Article 123(2) EPC in relation to granted claim 1 (basically an objection under Article 100(c) EPC) was put forward and discussed, with regard to a feature in granted claim 1 which had not been submitted before in writing (see contested decision, point 1.3). The opposition division considered this objection to be a new and late-filed fact, and did not admit it under Article 114(2) EPC.

Article 114(2) EPC confers on the opposition division the discretionary power not to admit new facts or evidence when "not submitted in due time by the parties concerned". It is not a basis to disregard arguments not submitted in due time (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, III.B.2.3.1, III.C.4.4, IV.C.1.4.4; see also G 4/92). Raising during oral proceedings a new objection under a ground for opposition previously validly invoked might be belated. However, the issue at stake is whether the opponent has raised a new argument or a new fact, i.e. whether in the present case the opposition division was right to invoke Article 114(2) EPC when not admitting the allegedly late-filed objection.

New arguments are generally understood as new reasons based on the facts and evidence which have already been put forward. The board endorses the view taken in case T 604/01 (see point 6.1 of the Reasons) or T 395/00 (see point 11 of the Reasons) with regard to amendments under Article 123 EPC, namely that the fact and evidence necessary in order to examine whether or not the patent and claims comply with the requirements of Article 123(2) EPC are the amendment as such in view of the application as filed and the patent as granted, i.e. the evidence available when filing the opposition.

In the present case, the ground for opposition under Article 100(c) EPC raised in the notice of opposition was discussed during oral proceedings with regard to two features of granted claim 1 (contested decision, points 1.1 and 1.2), one of which related to the "first part" being a "flat base part". However, the amendment in claim 1 as granted which further specifies the "first part" reads "...in such a way that said first part (9) is a flat base part and is arranged to be connected to different types of said second part (9') for different types of interconnection between the wiper blade (2) and the oscillating arm (8)", i.e. it combines two features ("and"), the second of which was objected to under Article 123(2) EPC for the first time during oral proceedings. The board considers that in this case the same "amendment" is concerned, namely which features have to be included when further specifying the first part on the basis of features taken from the description (e.g. on the basis of page 2 of the application as filed), which raises the question of whether an intermediate generalisation is considered to be admissible. This issue was already mentioned in the notice of opposition (see page 3, point 1.2.1). It is noted that the case at hand differs from T 187/01, where an objection under Article 100(c) EPC raised for the first time in appeal against a granted feature which had not been contested before was considered to be a new fact and therefore disregarded.

Therefore, the board finds that the new objection does not introduce new facts or evidence, but merely a new argument under a ground of opposition already validly raised. Thus, the opposition division was wrong in invoking Article 114(2) EPC when dismissing this new objection. Such an error of judgement does not however prove the partiality of the chairman or the opposition division.

1.4.2 The opposition division considered document E23 and the objection of lack of inventive step over E1 combined with E23 to be a late-filed fact and therefore also document E23 to be late-filed, although submitted on the final date for written submissions set under Rule 116(1) EPC (contested decision, point 2.3.1.2).

However, the legal and factual framework of opposition proceedings is defined in principle by the notice of opposition, as set out in Rule 76(c) EPC (former Rule 55(c) EPC 1973). As concluded in decision T 1002/92, late-filed facts, evidence and related arguments which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC 1973 in support of the grounds of opposition should only exceptionally be admitted into the proceedings if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the patent. Rule 116(1) EPC (former Rule 71a EPC 1973) should therefore not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant.

Thus, the board sees nothing wrong, and in particular no indication of partiality, in the way the opposition division exercised its discretion under Article 114(2) EPC by not admitting late-filed document E23 and related arguments, taking into consideration the criterion of prima facie relevance.

The appellant also alleges in this context that the basis of the reasoning was not correct as it refers to amendments made to claim 1. The contested decision states (page 10, last paragraph) that "this new fact has nevertheless not been raised in response to amendments to claim 1". This passage does not refer to "amendments" as the basis of the reasoning given, but implies that filing new documents and further objections might be justified if filed in response to amendments to claim 1.

The board also finds that the opponent had ample opportunity to argue on the prima facie relevance of document E23, since the minutes of oral proceedings explicitly state (see points 23 to 25) that document E23 had been "sufficiently substantiated" in writing, and that the parties were also given the opportunity to exchange their views with regard to document E23 during the oral proceedings. The opponent explained e.g. the basic teaching of E23 (point 25: "that different types of arms can be connected with the blade in E23") in response to the patent proprietor disputing the relevance of E23. Moreover, as can be derived from the contested decision (see point 2.3.1.2), in its letter dated 17 November 2014 the opponent had substantiated an objection of lack of inventive step over E1 in combination with E23, which included arguments relating to the prima facie relevance of E23. Therefore, also the opponent's right to be heard had been respected.

1.4.3 As to the alleged lack of inventive step in view of document E1 alone, submitted in writing within the time limit set under Rule 116(1) EPC, the board notes that lack of novelty over document E1 was already substantiated in the notice of opposition (lack of inventive step was argued with regard to different prior art). Under these circumstances, a specific substantiation of the ground of lack of inventive step starting from E1 in the notice of opposition was not necessary - or indeed generally possible after arguing lack of novelty over E1 (in this respect, see e.g. T 597/07, or T 131/01). It is true that in its reply to the notice of opposition the patentee had identified the features distinguishing the subject-matter of granted claim 1 from E1. However, considering that oral proceedings had been requested by the opponent and thus further action by the opposition division was in any case to be expected, there was no objective reason for the opponent to reply immediately with an objection of lack of inventive step starting from E1.

Accordingly, the board finds that the opposition division was wrong in judging that an objection of lack of inventive step in view of E1 should have been raised at an earlier stage of the proceedings and in therefore not considering this line of argument (see contested decision, point 2.3.2.2.4.1). The same applies to its refusal to admit a substantiation of this inventive- step objection during oral proceedings as late-filed under Article 114(2) EPC (see contested decision, points 2.3.2.2.4.2 and 2.3.2.2.4.3). Again, however, such errors of judgement do not indicate that the chairman or the opposition division was partial.

1.5 It follows from the above that the decision of the opposition division not to admit the new argument based on Article 123(2) EPC and the objections of lack of inventive step over E1 alone and E1 combined with E23 must be set aside. The above argument and objections are thus introduced into the proceedings.

2. Not remitting the case to the department of first instance

2.1 According to Article 111(1) EPC, the board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It is established case law (see Case Law of the Boards of Appeal, 7th edition 2013, IV.E.7.6.1) that there is no absolute right to have an issue decided upon by two instances and that e.g. the general interest in bringing the proceedings to a close within an appropriate period of time has to be taken into account. 2.2 Considering that the new argument in respect of Article 123(2) EPC does not per se justify a remittal and that the opposition division has already commented, in the contested decision, on the new objections of lack of inventive step (see page 11, stating that- "separation of parts of the connecting device are contrary to the teaching of E1" and- "E23 comprises a totally different construction of ... the connecting device, ... which hampers prima facie a combination with the wiper of E1"),the board in exercising its discretion conferred by Article 111(1) EPC has decided not to remit the case to the department of first instance, but to take a decision on the merits of the case. | |

3. Amendments (Article 100(c) EPC)

3.1 Claim 1 of the patent has not been amended in such a way as to contain subject-matter which extends beyond the content of the application as filed.

3.2 The appellant asserts that the feature "first part is a flat base part" introduced in granted claim 1 is disclosed only in combination with further features in the application as filed. The relevant passage on page 2 (lines 18 ff) recites that the "first part preferably has a flat shape and acts as a base part, wherein the first part is preferably fixedly connected to the longitudinal strips through welding, ...". The features describing the way the first part is connected to the longitudinal strips are explicitly characterised, by using the term "preferably", as optional features relating to preferred embodiments, i.e. not inextricably linked to the first part being a flat base part as claimed. Also further features describing the connection between the first part and the second part in the application as filed (page 3, lines 6 to 9: "second part may be connected to said first part through a welding, ... or clamping operation") are related, due to the word "may be", to optional embodiments comprising fixed connections (e.g. realised by welding) and detachable connections (through a clamping operation). There is no contradiction in mentioning optional embodiments which are not compatible which each other, or in describing further specific embodiments (pages 8 ff in the application as filed) mentioning e.g. "clamping means in the form of resilient legs C".

Therefore, the board finds that the general disclosure on pages 2 and 3 of the application as filed already provides a basis for amending the feature of the first part to be a "flat base part", irrespective of further passages on its page 9 or 12 as cited by the appellant. In particular, the omission of further features optionally mentioned in connection with the first part does not amount to an inadmissible intermediate generalisation.

3.3 As regards the second feature further specifying the first part ("said first part ... is arranged to be connected to different types of said second part (9') for different types of interconnection between the wiper blade (2) and the oscillating arm (8)"), the appellant (conceding that this wording was to be found on page 2 or page 8 of the application as filed) objected that it was not consistent with the teaching provided by the description and the drawings.

However, the board takes the view that it is clearly expressed in the description (see e.g. page 2, lines 21 to 24) that the essence of the invention is that the first part is a universal part for each type of interconnection between the wiper blade and the oscillating arm, which implies that it should match different types of the second part. Moreover, as clearly visible in the embodiments shown in Figures 2B and 4B, relating to different ways of connecting the oscillating arm to the joint part (12), modifications of the joint part (12) also result in different second parts (9') being provided. The board therefore cannot follow the appellant's argument that the amendment was not unambiguously disclosed or not consistently described in the application as filed.

As regards the appellant's argument that pages 2 and 8 only stated the result to be achieved, such an objection might be considered when assessing clarity of the claims. However, clarity is not a ground for opposition and cannot be invoked against granted claims.

4. Novelty (Article 100(a) EPC, Article 54(3) EPC)

4.1 Document E2 is prior art under Article 54(3) EPC, which is not prejudicial to the novelty of the subject-matter of claim 1.

4.2 The sole issue between the parties was whether or not the windscreen wiper device known from E2 exhibited the feature that neighbouring ends of the longitudinal strips are interconnected by a respective connecting piece. The appellant conceded that this feature was not explicitly shown in E2, but argued that the skilled person would understand that well-known connecting pieces were needed and necessarily provided on the extremities of the wiper blade.

4.3 The board cannot share the appellant's view that connecting pieces were implicitly disclosed in E2. According to the established case law, a prior-art document anticipates the novelty of claimed subject-matter if the latter is directly and unambiguously derivable from that document, including any features implicit to a person skilled in the art, i.e. any features he would unequivocally gather from the overall context of the cited prior art.

The wording of claim 1 "interconnected by a respective connecting piece" suggests that an extra piece of hardware is required to interconnect the ends of the longitudinal strips. Since the contested patent also mentions an embodiment in which the connecting pieces are of one piece with the strips, the connecting pieces as claimed might also be assumed to be pieces formed integrally with the longitudinal strips. However, even assuming that broader interpretation of the feature under dispute, such integrally formed connecting piece has to fulfil the claimed function of interconnecting the ends of the longitudinal strips.

The board agrees with the appellant that detachment of the longitudinal strips from the wiper blades must be prevented to ensure effective functioning, i.e. the skilled person would assume that also in E2 measures are foreseen in this regard. However, there are many ways to prevent detachment of the longitudinal strips, e.g. by providing extra elements at the ends, by providing means to fix the strips somewhere within the flexible wiper blade, by using longitudinal strips of a certain geometry, material or with built-in pretension, and so on. Under certain conditions, e.g. if wiper blades are short, or if a considerably rigid linking support is provided for mounting to the oscillating arm, there might be no need to provide any additional connecting means at the extremities of the wiper blade.

Therefore, the board concludes that an element interconnecting the ends of the longitudinal strips is not the one and only solution for providing the required wiping function of the claimed windscreen wiper device, no matter whether such elements are provided as an extra piece or formed integrally with the longitudinal strips. As a consequence, the feature under dispute cannot be assumed to be unequivocally derivable from and therefore implicitly disclosed in E2 when read with the eyes of the skilled person.

5. Inventive step (Article 100(a) EPC, Article 56 EPC)

5.1 The subject-matter of claim 1 as granted also involves an inventive step (Article 56 EPC).

5.2 Assuming that the closest prior-art document E1 already discloses three parts as specified in claim 1 (a first part 92, a second part represented by the pivot axis 44 provided on the first part, and joint part 38), it at least fails to show - as conceded by the appellant - a second part detachably connected to the first part.

The board has difficulties to see how separating the pivot axis 44 and the first part 92 in E1, which are fixedly connected, would lead to a simplified construction or production tooling. This is merely an unsubstantiated assertion by the appellant. In fact, providing a detachable second part located between the first part which is connected to the longitudinal strips and the joint part establishing the connection to the oscillating arm allows for more flexibility in adapting to different vehicles and types of oscillating arms. In particular, when using a universal connection part for the first part, a unit consisting of wiper blade and first part connected to the longitudinal strips can be manufactured for each and every type of interconnection between the wiper blade and the oscillating arm, while only a cheaply and easily manufactured second part has to correspond to the specific type of interconnection, as stated in the contested patent. The problem to be solved may therefore be seen in providing a windscreen wiper device improved with regard to manufacturing and costs.

5.3 Starting from the windscreen wiper device known from document E1, basically comprising two pieces (part 92 with axis 44, joint part 38) for interconnecting the wiper blade and the oscillating arm, there is no reason why the skilled person would be tempted to separate part 92 with its fixed pivot axis 44 into two separate parts. The board is not convinced that any advantages in the production process (e.g. moulding) could be achieved, as argued by the appellant, because part 92 is already a component of rather simple construction. Moreover, increasing the number of parts is hardly the obvious solution when thinking about how to improve a given device.

Document E23, which solves the problem of allowing easy, firm attachment to eliminate needless components (see abstract), would have prompted the skilled person only to reduce the number of parts. In particular, E23 only shows a two-piece design, comprising parts 2a and 2b interposed between the wiper blade and the oscillating arm, irrespective of whether part 2b is considered as representing the joint part or the second part (with axis 44 integrally formed with part 2b then forming the joint part). Therefore, the skilled person might only be prompted to replace the two-piece design known from E1 with the two-piece design known from E23, i.e. joint part 38 with joint part/second part 2b and first part 92 with first part 2a. However, this would not lead to a windscreen wiper device within the meaning of claim 1, which requires three pieces (first part, second part, joint part) to be connected to each other.

6. In view of the above, the board comes to the conclusion that the subject-matter of claim 1 does not extend beyond the content of the application as filed and is patentable under Article 52(1) EPC.