T 0556/07 13-05-2009

1. Procedural matters

1.1 The appellant withdrew its request for oral proceedings with fax dated 25 March 2009, i.e. five days before the date on which the oral proceedings were to be held (31 March 2009).

1.2 In response thereto the board informed the parties with fax dated 26 March 2009, that the oral proceedings were cancelled.

1.3 With return fax dated 26 March 2009 the appellant requested a further time limit of one month for filing observations to respond to the preliminary opinion given in the annex to the summons to oral proceedings dated 23 December 2008.

The board gave, with fax dated 30 March 2009, its opinion that the request could not be allowed since the time limit set in the annex to the summons had expired and indicated that a decision in this case would be issued shortly.

1.4 With a further fax dated 31 March 2009 the appellant filed, what it called, "final observations" stating therein as a new fact that documents D7 and D8 are silent about the material of the knurled surface of the drive roller.

Based on this new fact it is argued that it would be speculative to consider the knurled surface of the drive roller according to D7, D8 to be of hard material, as it is required for this surface to have the effect of removal of corrosion layers. The knurled surface according to documents D7, D8 could even be plastic or rubber, since by using knurled surfaces of such materials slippage can already be avoided.

Consequently, according to these observations, the corrosion layer removing effect of the knurled surface is not disclosed in these documents.

Furthermore the appellant argued that all other documents introduced in support of the teaching of documents D7 and D8 did not add any information concerning the material of the knurled surface. It requested, in case the board was of the opinion that these documents added to the disclosure of documents D7 and D8, remittal of the case to the first instance.

1.5 The new fact has been late filed, such that the board has to exercise its discretionary power according to Article 114(2) EPC and Article 13(1) RPBA concerning its admittance.

Since, as shown in the following, this new fact cannot be admitted since it lacks prima facie relevance with respect to the examination of inventive step, it need not be decided whether this submission amounts, under the circumstances of the present case, to an abuse of procedure, which would normally have the effect that such submissions are disregarded for that reason alone. Indeed the appellant has neither responded to the submissions of the respondent nor to the preliminary opinion given by the board in its annex to the summons. The appellant only indicated, just before the date set for oral proceedings, that it would not attend and filed these "final" observations only after the oral proceedings had been cancelled.

1.6 The new fact concerns the last feature of claim 1 according to the main request, which is also contained in the claims 1 according to the first and the second auxiliary requests.

According to this feature said drive roller has

(a) a knurled surface engaging the wire and

(b) adapted to avoid slippage thereof and

(c) to remove contaminations like corrosion layers therefrom.

The material of the knurled surface is neither defined in claim 1 nor in the remainder of the patent in suit.

This is in line with what is disclosed in the patent in suit, in which it is stated "Knurled drive wheels insure that an improper arc will not develop from e.g. wire slippage or a corrosion layer on the wire." (page 3, lines 34, 35), "The knurled drive wheels remove contaminations like corrosion layers as well, ..." (page 2, lines 46, 47) and "The indent of the drive rollers 27 are knurled for e.g. improved grip." (page 4, lines 30, 31), attributing the two effects b) and c) of the drive roller solely to its knurled surface.

Thus according to the definition of claim 1 and the description of the patent in suit the effects b) and c) obtained with the drive roller have to be considered as being the mere result of the knurled surface of the drive roller engaging the wire, irrespective of e.g. the type of knurling or the material of the knurled surface.

In connection with the appellant's argument that the invention involved a non-obvious "special" knurled surface (see grounds of appeal, page 2, last paragraph) the board had already indicated in the annex to the summons: "With respect to the argument of the appellant that the knurled surface of the drive roller according to claim 1 is a special - and thus a not obvious - one, at present it appears that claim 1 does not comprise a feature defining a particular type of knurling; cf. also the arguments of the respondent (letter dated 26 September 2007, paragraph 3.1).".

Since, as can be derived from the above, the same reasoning applies with respect to the newly submitted fact, this fact cannot be considered as being prima facie more relevant than the facts referred to in the grounds of appeal. Consequently it is not admitted.

For completeness sake the board wishes to add that even if admitted, it would not have affected the outcome of the present proceedings as the same reasons given above concerning its lack of prima facie relevance also apply to its cogency.

1.7 The request for remittal, as far as it is based on the consideration of the late filed observations of the appellant, cannot be allowed for the same reasons either.

As far as the request for remittal made in the grounds of appeal is concerned (see point VIII e)) which the board interprets as being based on a violation of the right to be heard (Article 113(1) EPC), the board had already stated in the annex to the summons that the proceedings before the opposition division did in no way appear to be tainted by a violation of this right (points 7.3 - 7.7). In particular the withdrawal by the appellant of its request for oral proceedings, with its further request for continuation of the opposition proceedings in writing could have no effect in a case where the oral proceedings were apparently considered expedient, i.e. held at the instance of the opposition division. By voluntarily staying absent of these oral proceedings the appellant deprived itself also of the opportunity to comment on any arguments presented at those proceedings. As the appellant has not submitted anything further in support of its request, the above opinion of the board still applies, with the result that this request for remittal is also refused.

1.8 Concerning the announcement of the respondent made in its letter dated 24 February 2009 that at the oral proceedings before the board a witness would be available for giving evidence on the prior use U2, the board in its communication dated 2 March 2009 indicated with reference to the annex to the summons to oral proceedings, that, in case it applied, it needed to be decided whether a taking of evidence should take place and if so, before the board - possibly in a further oral proceedings - or after remittal before the opposition division.

Since, as can be derived from the following, the board agrees to the finding of the opposition division concerning the alleged public prior use U2 as being proven on the basis of the evidence D6 - D10 presented in the opposition proceedings, there is no need for further evidence to be taken into account in this respect.

2. Sufficiency of disclosure

According to the decision under appeal the patent in suit discloses the invention sufficiently clear and complete. The board is, contrary to the view of the respondent, of the opinion that the conclusion arrived at by the opposition division is correct. In view of the fact that the claims 1 according to all requests lack inventive step as will be established in the following this issue need not further be dealt with.

3. Inventive step - claim 1 according to the main request

Besides the late filed fact submitted with fax dated 31 March 2009, which, as outlined above, is not admitted, the appellant has not filed any submissions in response to the board's annex to the summons. Thus there is no reason for the board to change its opinion as expressed in that annex in that the impugned decision was correct in its assessment of the prior use U2 as having taken place as argued by the respondent, on the basis of the evidence as filed in the opposition proceedings (cf. point 8) and in its resulting assessment of inventive step on the basis of D1 and the prior use U2 (cf. point 10).

As a consequence, the subject-matter of claim 1 of the main request cannot be considered as involving an inventive step (Article 56 EPC).

4. Inventive step - claim 1 according to the first and second auxiliary request

4.1 Concerning the examination of inventive step with regard to the claims 1 according to the first and second auxiliary request the Board indicated in the annex to the summons (cf. point 11) that it appeared to be necessary to examine at first which features could be considered as further distinguishing features over D1 and which effects these features had in combination with the remaining features of claim 1 in question.

4.2 According to the impugned decision Do (correctly: D1) discloses the additional features of the panel and flanges of claim 1 according to the first auxiliary request, such that the subject-matter of claim 1 does not involve an inventive step. The appellant considers these features not to be derivable as claimed from D1 (see point VII f)), the respondent considers them as normal design practice in view of D1 as well as D17 (cf. point VIII e)).

The board is of the opinion that the provision of an access panel has the effect to allow easy access to the spools (patent in suit, page 3, lines 10, 11) and that the flanges provide further protection against the ingress of contaminations (patent, page 3, lines 14 - 16). These features clearly have no synergistic effect with the knurled surface of the drive roller, as also argued by the respondent, thus they can be discussed independently for inventive step.

Considering also the arguments of the respondent, the board is unable to see the conclusion of the opposition division regarding inventive step as being incorrect.

The housing of the apparatus of D1 has flanges against which the access panel closes, and the panel closing the top side of the housing, opening to the front or rear (side) and being hingedly connected to the front panel. According to necessity the skilled person will, as a normal design measure, place the hinge more in the region of the bottom of the housing. The argument of the appellant thus cannot be followed by the board.

4.3 The argument of the appellant that the front panel and the flanges shown in D1 have not the effect of keeping contamination out of the interior of the housing as this is done with an over-pressure inside, cannot help either, as this functional feature is not present in the claims 1 of the first, nor of the second auxiliary request.

4.4 Claim 1 according to the second auxiliary request comprises the additional feature of the flanges running along the top and side edges of the front and back panel and being directed inwards of the housing unit.

In this respect it is stated in the impugned decision that Do (correctly: D1) shows in figures 1 and 2 that the housing has flanges that run along the top and side edges of the front and back panel and are directed inwards of the housing.

Again, also in view of the respondent's arguments, the Board cannot see this assessment and the conclusion drawn therefrom that the subject-matter of claim 1 of this request is not based on inventive step to be wrong, taking into account the inward flanges shown in figure 2 for the top and sides of the rear panel 70 and the inward side flanges shown on the front panel. Where necessary the skilled person will provide the necessary strengthening of the front panel at the hinge by a flange along its top side, analogous to the flange on the panel shown in D17, figure 6.1, as a routine measure.

4.5 For the above reasons, known to the appellant at the latest with the respondent's submission of 26 February 2009 in reply to the Board's annex to the summons, to which no further submissions have been filed in due time, the subject-matter of the claims 1 of the first and the second auxiliary request do not present inventive step (Article 56 EPC).