T 0294/09 (Passively cooled computer/KONTRON) 16-11-2012

Reasons for the decision

1. Reference is made to the transitional provisions in Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, for the amended and new provisions of the EPC, from which it may be derived which Articles of the EPC 1973 are still applicable to the present application and which Articles of the EPC 2000 shall apply. As far as the Implementing Regulations are concerned, the board refers to Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations of the European Patent Convention 2000.

2. The admissibility of the appeal

In view of the facts set out at points I and II above, the appeal is admissible, since it complies with the EPC formal admissibility requirements.

3. Main request

According to the appellant, independent claim 10 was introduced in the new main request to cover an aspect of the invention that had not been recognised by the appellant until he had received the board's summons to oral proceedings. This aspect, i.e. to have a passive cooling member that extends across a side of both the hot and the cool compartment was argued to be disclosed on page 6, lines 3 to 9 of the original description.

The board points out that appeal proceedings are not a continuation of examination proceedings. Instead, the primary purpose of appeal proceedings is to examine whether the decision from the first instance was correct. In this respect, firstly the grounds of the appeal should contain the appellant's complete case (Article 12(2) RPBA), secondly the board can hold inadmissible requests that could have been presented in the first instance proceedings (Article 12(4) RPBA) and thirdly the board may decide not to admit amendments inter alia in view of their complexity and the need for procedural economy(Article 13(1) RPBA).

In the present case, it can be left undecided whether the patent applicant could already have filed during the first instance proceedings a claim covering the alternative where the passive cooling member extends across a side of both the hot and the cool compartment. The mere fact that this alternative had not been recognised by the previous applicant is not in itself a sufficient reason for filing a new independent claim that covers a significantly different aspect to that which has been claimed throughout the proceedings up until now.

In any case the new claim can also not be said to constitute even a prima facie attempt to arrive at patentable subject-matter in the light of the preliminary opinion expressed in the board's summons. On the contrary, the wording of claim 10 raises a new issue, viz. that of compliance with Article 123(2) EPC.

The paragraph of the original description cited by the appellant to support the new independent claim 10, i.e. page 6, lines 3 to 9, describes alternative housing shapes and sizes. The appellant argues that the last two sentences of that paragraph describe a housing as in claim 10. However, the board holds the view that the disclosure is far from unambiguous. Following the wording of these two sentences, the bottom side of the housing could be the small side, defined by l2 and l3 and the insulator member would then be parallel to that small side. The implication is that the hot and the cold compartments, as well as the insulator member would be turned by 90º in figure 1. According to the appellant, these are the only changes that would be made in the device, the passive cooling member 3a remaining where it is. As a consequence, the passive cooling member would then indeed extend across a side of both the hot and the cold compartments. However, in the board's view, the skilled person would not necessarily read the cited passage in that manner.

It would seem to make more sense, given that the remainder of the description consistently mentions said cooling member as being part of the housing top, also to turn that cooling member by 90º, leaving it on "top" of the hot compartment. In fact, if the skilled person did not do so, some new issues would arise that have obviously not been envisaged in the original application. For example, if no additional measures were taken, a passive cooling member that extended along the side of both the hot and the cold compartment would cause some heat to "leak" from the hot into the cold compartment, at least partially defeating the purpose of the insulation between these compartments, without any apparent significant compensating advantage.

The board therefore considers that the passage cited by the appellant would not directly and unambiguously lead the skilled person to construct a device as in claim 10. In fact, it would seem that the skilled person would be convinced, on the basis of the disclosure of the original application documents and common general knowledge, that the hot and cold compartments should not share a common passive cooling member.

For these reasons, the main request is not admitted under Article 13(3) RPBA.

4. Auxiliary request 1

4.1 Amendments, Article 123(2) EPC

Claim 1 of the auxiliary request 1 corresponds to a combination of originally filed claims 1, 2, 3, 10 and 11, with the additional restriction that the upper compartment is the hot one, a feature clearly central to the invention as disclosed in the application as filed. As such, this claim does not extend beyond the content of the application as originally filed. The dependent claims correspond to originally filed dependent claims and the amendments to the description and drawings do not change their substantive content.

4.2 Clarity, Article 84 EPC 1973

The appellant has dealt with the objection raised under item 1 of the board's summons and the board considers that the claims of the current auxiliary request 1 satisfy the requirements of Article 84 EPC 1973.

4.3 Inventive step, Article 56 EPC 1973

The board considers that D1 represents the closest prior art. The document discloses a housing for a passively cooled electrical, electronic or mechanical device, comprising:

a housing cover ("Verschlussdeckel"; see page 7, lines 9-13) and a housing floor ("Gehäusewand"; see page 7, lines 3-4), wherein the housing cover comprises a passive cooling member (see figure 3),

an insulator member ("thermische Trennwand C"; see page 7, lines 4-9) dividing the volume of the housing in two separate compartments, a hot compartment (B) and a cold compartment (A),

apparatus elements with higher power dissipation being arranged in the hot compartment (B) of the housing, and apparatus elements which need to be operated at lower temperature being arranged in the cold compartment (A) (see page 5, lines 3-12).

The main difference between the subject-matter of claim 1 of the auxiliary request 1 and the disclosure of D1 is that the cold compartment is also cooled, in view of the fact that in claim 1 the housing floor, where the cold compartment is situated, comprises a passive cooling member. Given that, in D1, the cold compartment typically contains components that have a maximal allowable temperature which is only slightly above the outside temperature (see page 9, line 3), the temperature difference between the inside of the cold compartment and the outside would be small and a passive cooling member would be ineffectual. Therefore, in contrast to what the examining division had stated in point 4.2.1 of its summons to oral proceedings, the skilled person would not be motivated to add such a passive cooling member to the cold compartment. Hence, the skilled person would not arrive at the subject-matter of claim 1 starting from the teaching of D1. Such subject-matter nonetheless solves the technical problem of allowing a "cold" compartment that is significantly warmer than the outside environment.

The subject-matter claimed was all part of the original claims, with the predictable restriction that the upper compartment is the hot one. The board must therefore assume that the search was complete and that D1 is the best prior art to be found. The board therefore concludes that the subject-matter of claim 1 of the auxiliary request 1 is inventive.

4.4 Decision in respect of the appeal

The current application documents are not in order for grant. For example, the first sentence on page 1 of the description states that "The invention is directed to a housing...in accordance with the preamble of claim 1, and to a computer...", which contradicts the wording of claim 1. Also, page 3 of the description refers to features relating to "preferred embodiments" of the invention, even though those features are explicitly included in the independent claim. Other discrepancies may exist either in the description or in the drawings. Therefore the board uses its discretion under Article 111 (1) EPC 1973 and remits the case to the examining division for grant on the basis of the submitted claims of the first auxiliary request with a description to be amended accordingly.