T 1171/13 01-10-2015

1. Request for re-establishment of rights

1.1 The decision under appeal was dispatched to the parties on 18 March 2013. It was received by the appellant's representative on 20 March 2013. However, by virtue of Rule 126(2) EPC, it is deemed to have been received by the appellant on 28 March 2013. The two-month time limit for filing the notice of appeal therefore expired on 28 May 2013 (Article 108, first sentence, EPC) and the four-month time limit for filing a statement setting out the grounds of appeal expired on 28 July 2013 (Article 108, third sentence, EPC). Since 28 July 2013 was a Sunday the time limit was extended by one day (Rule 134(1) EPC). The appellant filed the notice of appeal on 16 May 2013 (i.e. within the relevant time limit) but failed to file a statement setting out the grounds of appeal by 29 July 2013. The appeal must therefore be rejected as inadmissible under Rule 101(1) EPC, unless the appellant's application for re-establishment of rights under Article 122 EPC is granted.

1.2 Article 122(1) EPC provides as follows:

"An applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application or of a request, or the deeming of the application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress."

1.3 The wording of Article 122(1) EPC implies that re-establishment of rights is available only to patent applicants and patent proprietors. However, the case law has established that an opponent who files a notice of appeal within the two-month time limit laid down in the first sentence of Article 108 EPC but who fails to file a statement setting out the grounds of appeal within the four-month time limit laid down in the third sentence of Article 108 EPC may apply for re- establishment of rights in respect of that failure: see G1/86 (OJ 1987, 447).

1.4 Under Rule 136(1) EPC a request for re-establishment of rights must be filed "within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit". The final sentence of Rule 136(1) states that the request for re-establishment of rights is not deemed to have been filed until the prescribed fee has been paid. According to Rule 136(2) EPC, the request must state the grounds on which it is based and set out the facts relied on; moreover, the omitted act must be completed within the relevant period for filing the request.

1.5 The conditions referred to in paragraph 1.4 above have all been met. The "the removal of the cause of non-compliance with the period" occurred on 6 August 2013 when Mr Weber returned from vacation and discovered that the statement setting out the grounds of appeal had not been transmitted to the EPO. The letter requesting re-establishment of rights was received at the EPO on 31 August 2013, well within the time limits specified in Rule 136(1) EPC. The prescribed fee was paid on 29 August 2013. The letter of 31 August 2013 stated the grounds on which the request for re-establishment of rights was based and set out the facts relied on. The "omitted act" was completed at the same time since a statement setting out the grounds of appeal was appended to the letter.

1.6 An applicant for re-establishment of rights must,

according to the wording of Article 122(1) EPC,

demonstrate that "all due care required by the

circumstances" was taken. The duty to exercise all due

care applies first and foremost to the applicant for

re-establishment and then, by virtue of the delegation

implicit in his appointment, to the professional

representative authorized to represent the applicant

before the EPO (J3/93, at paragraph 2.1).

1.7 Where a loss of rights results from some error in a

party's failure to implement its intention to comply with a time limit, it is sufficient to show that the failure is due to exceptional circumstances or that it results from an isolated mistake within a normally satisfactory monitoring system: see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, 2013, section III. E.4.

1.8 The appellant's representative has proved that he operates a normally satisfactory system for monitoring compliance with time limits. Incoming post is checked every day and time limits are systematically recorded in an electronic calendar. Time limits are deleted from the electronic calendar only when a chit indicating that the relevant procedural step has been performed is initialed by the patent attorney. The system is operated by qualified, well trained, experienced staff and generally functions in a satisfactory manner.

1.9 The failure to file the statement setting out the grounds of appeal within the relevant time limit was due not to a defect inherent in the system but to an isolated human error by an experienced and competent assistant who normally performs her duties satisfactorily. It is well established in the case law of the Boards of Appeal that a professional representative may delegate the performance of routine tasks such as posting a letter to an assistant (see, for example, J 5/80 (OJ 1981 343), at paragraph 5; J 31/90, at paragraph 7; T 949/94, at paragraph 3.1). An error made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has shown that he or she exercised the necessary due care in dealing with the assistant. In this respect it is incumbent upon the representative to choose a suitable person, to properly instruct him or her in the task to be performed, and to exercise reasonable supervision (T 949/94, at paragraph 3.1).

1.10 The appellant's representative has shown that he chose a suitable assistant, gave her proper instructions and supervised her work adequately. He was entitled to assume that she would send the statement setting out the grounds of appeal to the EPO within the relevant time limit. The respondent's argument that the appellant's system for monitoring compliance with time limits did not incorporate an independent cross-check is not decisive in the present case. When a time limit is missed solely as a result of a failure to dispatch a document that has been prepared in good time, the requirement of at least one effective cross check is dispensed with, irrespective of whether or not a large firm is concerned. The reason is that, as compared with the monitoring of time limits, the risk of an error in the processing of outbound mail is low because such processing generally involves the execution of straightforward steps (T836/09, point 5.2). It follows that the appellant and its representative took all due care required by the circumstances.

1.11 Since all the conditions laid down by Article 122 EPC and Rule 136 EPC are satisfied, the appellant's request for re-establishment of rights must be granted.

2. Since the request for re-establishment of rights is allowed, the appeal is admissible.

3. Introduction of late-filed documents into the proceedings

3.1 The convolute of documents D15 has been submitted for the first time in appeal proceedings, although it could have been already submitted in opposition. Therefore, under Article 12(4) RPBA its admission into the proceedings is subject to the Board's discretion. The same applies to D14, which was filed late in opposition proceedings and not admitted into the proceedings by the opposition division (decision under appeal, point 4. on page 12).

3.2 The pages which constitute the convolute D15 fall under two different categories: pages 8 to 33 relate solely to an alleged public prior use of inserts of the type GC 4025. Pages 1 to 7 also relate to this alleged public prior use but, in addition, serve also to substantiate the submission according to which the products obtained by the method described in D5 inherently exhibit all the features of claim 1 as granted.

3.2.1 The alleged public prior use of inserts of the type GC 4025 relates to a product of the appellant itself. Accordingly, all the relevant information was in the possession of the appellant at the time of filing of the opposition. Nonetheless, the appellant delayed the submission of this line of attack until the appeal proceedings. No good reason can be seen for this delaying tactic. Therefore, the Board decided not to admit pages 8 to 33 of the convolute D15 into the proceedings.

3.2.2 Pages 1 to 7 relate additionally to a line of attack already put forward during the opposition proceedings, namely the alleged lack of novelty in view of D5 (appealed decision, point 2.2 of the Reasons). Therefore, as far as they relate to this line of attack, pages 1 to 7 of the convolute D15 do not serve to substantiate a fresh case but rather to back up an argument which was already made in opposition proceedings. Under these circumstances, the Board decided to admit pages 1 to 7 of D15 into the proceedings.

3.3 D14 was not admitted into the proceedings by the opposition division on the grounds that it was not more relevant for inventive step than the already cited prior art, inter alia D8 (decision under appeal, point 4. of the Reasons).

Hence, the opposition division took its discretionary decision, on the basis of the relevance of D14, i.e. taking into account the correct criteria. The appellant did not dispute that but argued that the assessment of the opposition division was not correct. However, the Board also considers that D14, which relates to a drawing die, i.e. a field removed both from the patent in suit and the relevant prior art already present in the proceedings, is not more relevant than D8. Therefore, the Board saw no reason to overturn the discretionary decision of the opposition division and did not admit D14 into the proceedings.

4. Main request - Novelty

D5 undisputedly discloses a cemented carbide consisting of: a binder phase comprising an iron family metal being present in the inner region of the cemented carbide in an amount comprised in the range of at 2 to 20% by weight (claim 1 and paragraphs [0013] and [0016]), a first hard phase being present in the inner region of the cemented carbide in an amount comprised in the range of at 75 to 95% by weight, wherein the first hard phase consists of WC having a hexagonal crystal structure, and a second hard phase being present in the inner region of the cemented carbide in an amount comprised in the range of at 2 to 15% by weight, wherein the second hard phase consists of one or more types of a compound of a metal or metals of group 4, 5 or 6 of the periodic table having an NaCl-type cubic crystal structure (claim 1 and paragraphs [0013] and [0016]).

The cemented carbide is formed by a surface region with a thickness in an amount comprised in the range of 2 to 50 µm consisting of the binder phase and the first hard phase, and an inner region present underneath the surface region consisting of the binder phase, the first hard phase and the second hard phase, wherein a ratio of an area of the binder phase in the surface region to an area of the binder phase in the inner region is greater than 1 (claim 1 and paragraphs [0013] and [0016]).

It is common ground that D5 does not explicitly disclose the ratio of an average grain size of the first hard phase in the surface region to an average grain size of the first hard phase in the inner region. The appellant argued that the microstructure of the product of the examples of D5 was the same as the microstructure of the GC 4025 insert shown on pages 5 to 7 of D15, which exhibits a grain size ratio in accordance with claim 1. However, D5 does not describe all the details of the production process of the carbides: for instance the milling conditions, the pre-sintering and heating parameters as well as the duration of sintering are not disclosed. Accordingly, it is doubtful whether all the possible production methods falling within the disclosure of D5 would lead to a microstructure in agreement with claim 1. Indeed, the respondent has submitted with D17 evidence to the contrary. Accordingly, it has not been shown that a grain ratio according to claim 1 is inherent in the products described in D5.

5. Main request - Inventive step

5.1 Starting from D5, which undisputedly represents the most relevant prior art, the object underlying the present invention is the provision of a cemented carbide for a coated cemented carbide cutting tool capable of imparting superior wear resistance and chipping resistance (paragraphs [0001] and [0007]).

This object is achieved by the claimed carbide, wherein a ratio of an average grain size of the first hard phase in the surface region to an average grain size of the first hard phase in the inner region is 1 or less. If the ratio is 1.0 or less, irregularities in the uppermost surface of the cemented carbide can be suppressed. For a cutting tool, localized stress concentration is thus avoided, resulting in enhancement of chipping resistance. Furthermore, since decreases in dispersability of the binder phase in the surface region can be prevented while also preventing decreases in hardness caused by increased size of the dispersed grains, wear resistance can be maintained at a high level (paragraph [0016] of the patent in suit).

5.2 D8 relates to hard composites for metal cutting applications, in particular cutting tool inserts (Figures 1 to 4) with increased toughness, i.e. chipping resistance, and wear resistance (column 1, lines 11 to 17).

It is true that D8 describes a method of obtaining these composites that involves placing a grain refiner, preferably VC, CrC, TaC or NbC, on an exposed surface of the green compact, to obtain after sintering a peripheral zone with a finer size of WC grains (column 2, lines 50 to 61 and column 4, lines 14 to 19). However, it is clear for the person skilled in the art that the grain refining action is not performed by the carbides but rather by their metallic component (V, Cr, Ta or Nb) once it is dissolved in the binder phase. This is the same mechanism exploited by the patent in suit. Hence, the person skilled in the art understands that there is no need in D8 to have these carbides in the surface layer of the sintered body. Therefore, the teaching of D8 is not in contrast with the teaching of D5, that aims at a body with a binder-rich surface layer without cubic carbides.

Accordingly, when faced with the given object starting from D5 the person skilled in the art would consider the teaching of D8, which deals with the same object.

D8 teaches to achieve this object by providing a peripheral zone enriched in binder with finer WC grain size and an interior zone with a coarser WC grain size (column 2, lines 38 to 49). Therefore, D8 renders it obvious to provide the cemented carbide of D5 with a ratio of an average grain size of the first hard phase (WC) in the surface region to an average grain size of the first hard phase in the inner region of 1 or less.

The respondent argued that by following the teaching of D8 a structure with cubic carbides in the surface layer, contrary to what is stipulated by claim 1, would be obtained. The Board does not share this view. As already explained above the role of the grain refiners of D8 is not to act as carbides. The sintering conditions described in D8 (15 torr argon atmosphere at 2700°F) result in a denitrifying atmosphere, which, as is also the case in the patent in suit (paragraphs [0025] and [0026]), dissolves said carbides in the binder.

Therefore, the subject-matter of claim 1 of the main request does not involve an inventive step.

6. Auxiliary request 1

The feature according to which the area of the binder phase in the surface region increases gradually from a boundary between the inner region and the surface region towards an uppermost surface of the surface region does not require that the increase continues till the uppermost surface, but merely stipulates the direction of the increase, namely from the boundary towards the uppermost surface. This type of distribution is already present in the carbide of D5 (Figure 1). Hence, the subject-matter of claim 1 of the auxiliary request does not involve an inventive step for the reasons already given above.

7. Auxiliary request 2

7.1 The admission of auxiliary request 2 into the proceedings is subject to the discretionary power of the Board (Article 13 RPBA).

It is true that this request was submitted at a very advanced stage of the procedure, namely at the oral proceedings before the Board. However, the request consists merely in the deletion of the product claims, while the second independent claim (the method claim) is unamended. This type of amendment cannot be surprising for the appellant, considering also that the same set of claims was already submitted as auxiliary request 2 in opposition proceedings. Furthermore, the respondent pointed out in the letter of 26 February 2015 (page 2) that no objections had been raised against the independent method claim, despite the fact that it had been considered and found to involve an inventive step in the decision under appeal (point 3.2 of the reasons). Under these circumstances the Board decided to admit auxiliary request 2 into the proceedings.

7.2 Save for questioning its admission into the proceedings the appellant did not raise any objection against auxiliary request 2. The Board does not see any reason to doubt of its allowability either.