T 1076/93 16-02-1995

1. The appeal is admissible.

2. Allowability of the amendments

Present Claim 1 is based on the combination of, in particular, the features of the granted Claim 1, of a feature, that the second slide (27) and third slide (28) are always arranged symmetrically with respect to the longitudinal axis of the apparatus and the geometric axis of the part, which is derivable from granted dependent Claim 2, of the feature of granted dependent Claim 3 that the feelers (34, 35; 80, 81) of the measuring heads are adapted to be arranged, in measurement conditions, substantially on a plane passing through said longitudinal axis of the apparatus, and of further clarifying features, for instance concerning the arrangement of the part (38) to be checked on the support (37) in relation to the longitudinal geometric axis of the apparatus, which are derivable in particular from the drawings. Present Claim 1 is also based on the combination of, in particular, the features of Claim 1, and dependent Claims 2 and 3, all as originally filed, with further features, such as those mentioned here above, especially derivable from the original drawings, which were not amended before grant. It is to be noted that the expression "the feelers (34, 35; 80, 81) of the measuring heads being adapted to be arranged, in measurement conditions, substantially on a plane passing through said longitudinal axis of the apparatus," does not introduce additional subject-matter as compared to the feature of original dependent Claim 3 that the feelers (34, 35; 80, 81) of the measuring heads are arranged, in measurement conditions, substantially on a plane passing through said longitudinal axis of the apparatus, because the present expression contains an indication of implicitly necessary apparatus means and results in the same constructional features of the apparatus as those of the original application in measurement conditions. Respondent I has submitted objections concerning the allowability of the particular feature of present Claim 1 that the second and third slide (27, 28) are carried by the first slide (3), which is carried by the support structure (1); however, this feature is directly and unambiguously derivable from Figures 1 and 2, original and as granted. Therefore, the claims of the European patent concern an apparatus more restricted than the apparatus of granted Claim 1 and thus, the requirement of Article 123(3) EPC that the claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred is satisfied. Moreover, the requirement of Article 123(2) EPC that the European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed is also satisfied.

3. Clarity

Present Claim 1 defines the apparatus for measuring diametral and axial dimensions of parts having rotational symmetry and defining a part geometric axis, without ambiguity and with the apparatus constructional features necessary for obtaining the results mentioned in the present patent. In particular, present Claim 1 specifies that there is a longitudinal geometric axis of the apparatus, as well as a plane passing therethrough, and that it is in relation thereto that the part to be measured, having a rotational symmetry and a part geometric axis, is arranged on the support (37), and that the respective movements of the slides, measurement heads and feelers are effected. Therefore, present Claim 1 is clear in the sense of Article 84 EPC.

4. State of the art

4.1. The crucial question concerning the prior use involving MBB and the own firm of Respondent I, i.e. FAG, is whether the information provided by FAG has been available to the public, or not. In particular, Respondent I has argued that the submission of FAG to MBB, before the present priority date, of an offer, with drawings and explanations, for an apparatus, without mentioned obligation of secrecy, resulted in the sale of said apparatus to the public, whereby MBB in the present case was considered as part of the public. On the contrary, the Appellant has argued that since MBB is generally known as being a manufacturer of war equipment and in this branch of industry secrecy is generally considered as important, since moreover at least one document of MBB, i.e. OI.015, shows indications concerning secrecy and it is derivable from T (see page 11, second paragraph) that the offers were not shown to third parties, it is to be concluded that there was an unwritten agreement of confidentiality. The Appellant's arguments are credible for the following reasons:

MBB is indeed a known manufacturer of war equipment. It is generally known that at such manufacturers' factories or offices, discretion is the rule. Indeed, it could be accepted that for apparatuses which are seen by the personnel of MBB and its visitors, for instance a coffee machine in the cafeteria, such rule is less severe; however, for apparatuses used during fabrication, wherein any feature of the apparatus can reveal important corresponding features of the product being fabricated, for instance its material or its shape, such a lenient attitude is less credible. In this respect, it is to be noted that, in addition to the discretion due to the specific nature of this branch of industry, OI.015 and, according to T (see page 9, last paragraph to page 10, first paragraph), almost all the papers used by the personnel of MBB comprise an advice about discretion. It is also to be noted that according to the contract of MBB (see page 16) secrecy is stressed; according to said same contract (see page 23, paragraph 17), communication of the manufacturer of the apparatus with MBB is strictly restricted to one specifically named person and, in his absence, to his deputy. The arguments of Respondent I, that the former requirement concerns only the access to the factory ground, and that the latter requirement is for secure delivery of the mail, are not credible in that they are not understandable without some purpose of restricting the access to information. Indeed, such requirements, which for a factory of, for instance, furniture or cheese would be surprising, are a further indication as derivable from the general statements in the testimonies T (see page 20, first paragraph to page 24, first paragraph) of employees of the Appellant informed of procedures accompanying orders of MBB, that restricted access to information was common rule for a firm like MBB.

Moreover, there is no evidence that MBB has acted in such a way that the machine fabricated and mounted by Respondent I has been made available to third persons before the present priority date. The further arguments of Respondent I that already the offer of FAG with relevant drawings and explanations without a statement of confidentiality, even without any delivery of the apparatus to the client MBB, was already a public disclosure, cannot be accepted for the following reasons: Indeed, as derivable from the written offer of FAG to MBB documented by OI.02, OI.03, OI.04, OI.05, from the declarations OI.06, OI.07 and OI.011 as well as from the testimonies T (see in particular page 3, last paragraph; page 9, last paragraph to page 10, first paragraph; page 17, last paragraph and page 18, first paragraph), there was no written agreement of confidentiality with respect to the ordered apparatus. However, it is derivable from T (see in particular page 11, second paragraph) that at MBB the communication of offers to third persons was in principle not allowed. In this respect, it is to be noted that Respondent I has pointed out a further statement in the same testimony T (see page 11, third paragraph) that it was the Purchasing Department which had issued the rule of restricted communications to third parties, and argued that this was an indication that this rule was not related to the fabrication of weapons, but was for commercial needs. However, this argument of Respondent I is not convincing in that for ordering said apparatus, i.e. for its purchase, this department was indeed "prima facie" the determining one. It is also to be noted that the letter of Daimler-Benz Aerospace AG dated 10 February 1995 filed by Respondent I at the oral proceedings and specifying that visits to the factories of the firm MBB (now Daimler-Benz Aerospace AG) had always been possible without special conditions and that also other forms were exercised for making available to the public activities of MBB, cannot however be considered as convincing. First, this letter is not directed to the prior art argued in relation to the present case and does not specify whether according to circumstances all areas of the firm were open to visitors or not. Moreover, since for the above-mentioned reasons there is no indication that the apparatus was held available for public inspection and thus the question of the actual delivery at MBB of the ordered apparatus before the present priority date can be left open, the alleged public prior use can be considered as being concerned with the sending of an offer to be studied by the employees of MBB and not with an apparatus exposed in a factory area, and there is no indication in this letter that such offers were available to visitors. Therefore, the Appellant's argument that MBB cannot be considered as part of the public but is implicitly supposed by its contractors to behave as if an agreement of secrecy had been specified, is credible. Therefore, the apparatus mentioned by Respondent I is not prior art in the sense of Article 54(2) EPC.

4.2. It is to be noted that many arguments were submitted for and against the availability to the public of the prior use submitted by Opponent II, then Respondent II. However, this question is no longer relevant for the following reasons: Respondent II has withdrawn his opposition before the oral proceedings of 16 February 1995 wherein the present claims have been filed. Respondent I has declared that he could not comment on said other prior use because it was not his own. During said oral proceedings, the Appellant has pointed out features of said other prior use, such as a greater number of measuring means, which resulted in an apparatus distinguished from the presently claimed apparatus as well in structure as in use. Therefore, since the Appellant's arguments were not contested and the documents and evidence on file contained no teaching directly usable with respect to the features of said other prior use, it is not necessary in these circumstances to determine whether the prior use argued initially by Opponent II, then Respondent II, was public or not.

5. Novelty

The novelty of the subject-matter of present Claim 1 has not been contested (Art. 54(1) and (2) EPC).

6. Inventive step

An apparatus corresponding to the first part of present Claim 1 is acknowledged, with reference to a document cited in the present patent (see column 2, line 17 to column 3, line 40), as prior art with the following drawbacks: the known apparatus, which has only two slides for two-dimensional measurements, is rather slow, and the positioning of the part is a harshly critical problem; the features of the characterizing portion of present Claim 1 are intended for solving these problems. The Appellant's argument that, with a third slide, and in particular with the symmetric movement of the slides and the arrangement of the feelers substantially in a specific plane, the above-mentioned problem of the prior art is solved, can be accepted. It is to be noted that formerly presented lines of argumentation contested main claims which differed in many respects from present Claim 1. The only argument that the apparatus of present Claim 1 should be obvious having regard to the prior art is an indication of Respondent I during the oral proceedings of 16 February 1994 pointing out a previously filed analysis of the features of formerly submitted main claims as compared with features derivable from a plurality of prior art documents, such as those of the European search report, however, without substantiated reasoning on the basis of the problem-solution approach generally adopted by the Boards of Appeal. Therefore, since the Appellant's arguments that the combination of features of present Claim 1 can only be collected from a plurality of documents showing different types of apparatuses such as measuring apparatuses and comparators are credible, the subject-matter of present Claim 1 is not obvious with respect to state of the art in the sense of Article 54(2) EPC. Therefore, said subject-matter involves an inventive step in the sense of Article 56 EPC and, thus, present Claim 1 is allowable (Art. 52(1) EPC). Therefore, since Claims 2 to 8 are also allowable as dependent from Claim 1, the patent can be maintained in amended form (Art. 102(3) EPC).

7. Reimbursement of the appeal fee

The Appellant has requested reimbursement of the appeal fee on the grounds that the Opposition Division committed at least one substantial procedural violation. First, the Appellant has argued that the contested decision (see the paragraph bridging pages 10 and 11) refers to infringement proceedings pending between Respondent I and himself, which he had mentioned himself, concerning the same type of apparatus as the apparatus in dispute, and that this was used against some of his arguments concerning the interpretation of the claims using the description and the drawings. However, this argument is not convincing for the following reasons: First, although it may have been inappropriate to mention the pending infringement proceedings in the reasons of the decision, it is however to be noted that it is in particular the Appellant himself who argued first about this question. Moreover, since the decision under appeal is not concerned with the patent as granted and since thus any objected lack of clarity of the amended claims can, if possible, be met by further amendments of the claims by taking into account the description and drawings, the question of the interpretation of the claims, in which context the pending proceedings are mentioned in the decision, was not relevant for a comparison of the alleged prior art and the claimed apparatus, which was the crucial point of said decision, and thus cannot be considered as having been decisive. In this respect, the conclusions of the decision T 20/90 of 27 June 1991 (see point 2 of the reasons) cited by the Appellant, that there has been a substantial procedural violation because prior to the contested decision no reason had been given for holding a particular measure obvious for the person skilled in the art, cannot be applied directly to the present case wherein, as admitted by the Appellant, as well the alleged public prior uses as the pending infringement proceedings were discussed during the oral proceedings before the contested decision. Therefore, the Appellant's argument, that the Opposition Division omitted to apply Article 113(1) EPC in that it did not check or give the proprietor the opportunity to establish facts relating to both the pending proceedings and the alleged prior use, does not require further consideration as being irrelevant to the impugned decision.

The Appellant has also argued that the contested decision contravened the requirements of Rule 68(2) EPC because it was insufficiently substantiated with regard to the special character of the client of Opponent I, i.e. MBB, and with regard to particular circumstances of the case. However, it is to be noted that further consideration of a case by a Board of appeal may lead to conclusions different from those of an Opposition Division, but Rule 68(2) EPC only requires that the decisions open to appeal shall be reasoned; thus, since in the present case the decision comprises a reasoning specifying the grounds on which the decision is based, it is correct in this respect. Concerning the further arguments of the Appellant that he did not receive important documents from Opponent II and accordingly could not take them into account for his argumentation at the oral proceedings at the first instance, it is to be noted that, although the decision (see page 11, first complete paragraph) contains a statement that Opponent II was also able to illustrate that a device had been previously made available to the public, in view of which the contested Claim 1 was not inventive, the crucial reason on which the decision under appeal was based concerned only the public prior use alleged by Opponent I, so that the late provision of these documents was not directly related to the decision; from the further statement at the same text location of the decision, that the Opposition Division did not consider it necessary to discuss the arguments of Opponent II in detail since it had already been demonstrated that Claim 1 was not inventive, it is additionally derivable that the indications concerning the public prior use alleged by Opponent II were only an expression of the opinion of the Opposition Division and not the basis for the decision. Thus, also for this reason, there can be seen no substantial procedural violation within the meaning of Rule 67 EPC. Therefore, no reimbursement of the appeal fee in accordance with said rule can be ordered.