Tuesday, 21 February 2017

T 2075/13: Is the subject-matter a convergent development?




In this opposition appeal the appellant (opponent) argued that the new main request filed during the oral proceedings should not be admitted because its subject-matter should not be considered as a convergent development from the subject-matter of the earlier filed requests. However, the Board agreed with the respondent (patent proprietor) that the subject matter of the new main request is "a clearly convergent development from the subject matter" of an earlier request, the amendments attempting to clarify some expressions and being a direct reaction to the discussion at the oral proceedings.



Summary of Facts and Submissions

I. The appellant (opponent) filed an appeal against the decision to reject the opposition against European patent No. 2 212 026, requesting that the appealed decision be set aside and that the patent be revoked.
The opposition was based on the ground of Article 100(b) EPC (lack of disclosure) and on those of Article 100(a) EPC (lack of novelty and lack of inventive step).

II. The present decision is based on the following prior-art documents cited in the decision under appeal:
D1: WO-A-2007/109753;
D2: WO-A-2007/122364; and
D3: JP-A-07-299377.

III. In the annex to the summons to oral proceedings the board presented its preliminary opinion that, inter alia:
- the ground of Article 100(b) EPC did not hold against the main request;
- the subject-matter of claims 1 and 8 of the main request lacked novelty both over the content of the disclosure of D1 and over the content of the disclosure of D2; and
- claims 1 and 8 of the first auxiliary request contravened the requirements of Article 123(2) EPC.

IV. With letter of 7 November 2016 the respondent (patent proprietor) maintained its main request, replaced the previously submitted auxiliary request with a new first auxiliary request, and submitted a second and a third auxiliary request. With letter of 28 November 2016 the respondent further submitted a fourth auxiliary request.

V. Oral proceedings, during which the respondent submitted a new fourth auxiliary request, were held on 2 December 2016.

For the further course of the oral proceedings, in particular the issues discussed with the parties, reference is made to the minutes.

The appellant confirmed its opening requests that the decision under appeal be set aside and that the European patent be revoked.

The respondent requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of the claims of the fourth auxiliary request and an adapted description both filed at the oral proceedings, renamed as (sole) main request.

All the respondent's other requests were withdrawn.

VI. The text of independent claim 1 of the main request reads as follows (additional features with respect to the combination of claims 1, 2 and 3 of the application as originally filed, also corresponding to the combination of claims 1, 2 and 3 of the patent as granted, are in bold; emphasis added by the board):

"A method for operating a shredder (10) comprising a housing (14) having a throat (36) for receiving at least one article to be shredded, a thickness detector (100) for detecting a thickness of the at least one article to be shredded inserted in the throat, and a shredder mechanism (16) received in the housing and including an electrically powered motor (18) and cutter elements (19), the shredder mechanism enabling the at least one article to be shredded to be fed into the cutter elements and the motor being operable to drive the cutter elements in a shredding direction so that the cutter elements shred the articles fed therein; the method comprising:
detecting with the thickness detector, when the motor is off, a thickness of the at least one article to be shredded inserted into the throat;
if the detected thickness is less than a predetermined maximum thickness threshold, operating the motor to drive the cutter elements in the shredding direction to shred the at least one article;
if the detected thickness is at least the predetermined maximum thickness threshold, not operating the motor such that the motor stays off;
thereafter, during the operation of the motor, detecting with the thickness detector the thickness of the at least one article inserted into the throat;
characterised by performing a predetermined operation if the detected thickness exceeds a flutter threshold, the flutter threshold being higher than the predetermined maximum thickness threshold
and is set using a predetermined value;
wherein the predetermined operation includes:
a) preventing the motor from driving the cutter elements in the shredding direction; and
b) indicating a signal to the user of the shredder."

The text of independent claim 6 of the main request reads as follows (additional features with respect to the combination of claims 19, 20 and 21 of the application as originally filed, also corresponding to the combination of claims 8, 9 and 10 of the patent as granted, are in bold; emphasis added by the board):

"A shredder (10) comprising:
a housing (14) having a throat (36) for receiving at least one article to be shredded;
a shredder mechanism (16) received in the housing and including an electrically powered motor (18) and cutter elements (19), the shredder mechanism enabling the at least one article to be shredded to be fed into the cutter elements and the motor being operable to drive the cutter elements in a shredding direction so that the cutter elements shred the articles fed therein;
a thickness detector (100) configured to detect, when the motor is off, a thickness of the at least one article to be shredded being received by the throat; and
a controller (200) coupled to the motor and the thickness detector, the controller being configured
a) to operate the motor to drive the cutter elements to shred the at least one article, if the detected thickness is less than a predetermined maximum thickness threshold;
b) not to operate the motor such that the motor stays off if the detected thickness is at least the predetermined maximum thickness threshold;
c) to detect with the thickness detector the thickness of the at least one article being inserted into a throat of the shredder during the operation of the motor and characterised in that the controller is configured
d) to perform a predetermined operation if the thickness detected during operation of the motor exceeds a flutter threshold, the flutter threshold being higher than the predetermined maximum thickness threshold;
wherein the controller is configured to set the flutter threshold higher than the predetermined thickness threshold using a predetermined value;
wherein the controller is configured to perform the predetermined operation by
(a) preventing the motor from driving the cutter elements in the shredding direction, and (b) indicating a signal to the user of the shredder."

VII. Insofar as relevant to the present decision, the appellant argued substantially as follows:

The main request was late-filed and should not be admitted into the proceedings as it re-introduced unforeseen issues in the discussion at the oral proceedings, because its subject-matter could not be regarded as a convergent development from the subject-matter of the auxiliary requests submitted with the letter of 7 November 2016.

It was not apparent which ground for opposition might have occasioned the amendments contained in the main request, such that the requirements of Rule 80 EPC were not satisfied.

[...]

Reasons for the Decision

1. Admissibility of the main request

1.1 According to the appellant, the main request should not be admitted because its subject-matter cannot be considered as a convergent development from the subject-matter of the first to third auxiliary requests submitted in preparation for oral proceedings (with letter of 7 November 2016).

1.2 The board disagrees.

The subject-matter of the independent claims of the main request constitutes an amendment to the proprietor's case in the sense of Article 13 RPBA. As such, its admission is subject to the board's discretion as defined therein.

The features taken from the description and introduced in independent claims 1 and 6 with respect to combinations of claims of the patent as granted are indicated in bold under point VI above.

These features ("motor is off"; "motor stays off") relate to the issue whether the motor can already be running during thickness measurement or rather is started as a reaction to a thickness which is below the predetermined maximum thickness threshold. This was already central in the appealed decision (see points 2.3, 3.1.2 and 4.2.3), as well as in the statement setting out the grounds of appeal and in the reply thereto.

Further, as argued by the respondent at the oral proceedings, the subject-matter of the main request is also a clearly convergent development from the subject-matter of the withdrawn fourth auxiliary request submitted with letter of 28 November 2016. In fact, the amendments relate to an attempt to clarify the expressions "not operating the motor" and "to not operate the motor" which were included in claims 1 and 6, respectively, of said withdrawn fourth auxiliary request, and are a direct reaction to the discussion conducted at the oral proceedings.

As a result, the main request is clearly convergent with former withdrawn requests and does not raise any new issues which would extend beyond the framework of what has already been discussed in writing or orally. The oral proceedings do not need to be adjourned to deal with the main request.

In view of these considerations the board decides to admit the main request.

2. Rule 80 EPC

The appellant argues that the requirements of Rule 80 EPC are not met, because it is not apparent which ground for opposition has occasioned the amendments contained in the main request.

The board disagrees.

Claims 1 and 6 have been restricted in order to exclude embodiments in which the motor is running before thickness measurement starts.

These amendments are clearly an attempt to overcome the patentability objections (Article 100(a) EPC) raised by the appellant on the basis of documents D1-D3.
Therefore, the board concurs with the respondent that the re
quirements of Rule 80 EPC are satisfied.

[...]

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent in amended form with the following documents:
- claims 1 to 11 of the main request filed at the oral proceedings;
- description: pages 2 to 9 filed at the oral proceedings;
- figures 1 to 9 as granted.

This decision T 2075/13 (pdf) has European Case Law Identifier ECLI:EP:BA:2016:T207513.20161202. The European Patent Register file can be found here. Photo "Engyoji" by Romano Beitsma, all rights reserved.


No comments :

Post a Comment

Statcounter