Tuesday, March 20, 2018 T 660/14 - an undisclosed disclaimer after G 1/16

In this appeal, the proprietor gave as a basis for the subject-matter of claim 1 of auxiliary request 4 meeting the requirement of Article 123(2) EPC that the subject-matter of claim 1 includes an undisclosed disclaimer. The undisclosed disclaimer was not of the most common type of disclaiming a Art.54(3) EPC prior right disclosure. The proprietor considered the alleged undisclosed features as either one or two undisclosed disclaimers. The proprietor submitted that the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled. The Board of Appeal disagreed: according to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1). 

Summary of Facts and Submissions

I. Appeals were filed by both the appellant (opponent) and the appellant (proprietor) against the interlocutory decision of the opposition division in which it found that European patent No. 2 065 298 in an amended form met the requirements of the EPC.

II. The appellant (opponent), hereafter simply 'opponent', requested that the decision be set aside and the patent be revoked.

The appellant (proprietor), hereafter simply 'proprietor', requested that the decision be set aside and the patent be maintained according to a main request or, in the alternative, that the patent be maintained according to one of auxiliary requests 1 to 4.


III.-IV. [...]

V. Subsequent to its summons to oral proceedings, the Board issued a communication containing its provisional opinion, in which it indicated inter alia that the subject-matter of claim 1 of the main request appeared to lack novelty as did that of auxiliary requests 1 to 3. Also in its opinion, the subject-matter of claim 1 of auxiliary request 4 was considered not to meet the requirement of Article 123(2) EPC.

VI. With letter of 7 December 2017 the proprietor filed auxiliary requests 4 to 7 replacing auxiliary requests 4 and 5 previously on file.

VII. Oral proceedings were held before the Board on 9 January 2018, during which the proprietor filed a replacement auxiliary request 4 and withdrew auxiliary requests 5 and 6.

At the end of the oral proceedings, the final requests of the parties were as follows:

The opponent requested that the decision under appeal be set aside and the European patent be revoked.

The proprietor requested that:

- the decision under appeal be set aside and the patent be maintained according to the main request filed with the grounds of appeal,

- auxiliarily that the patent be maintained based on the auxiliary requests 1 or 2 in the given order, filed with the grounds of appeal,

- as a third auxiliary request, to dismiss the appeal of the opponent,

- auxiliarily to maintain the patent based on auxiliary request 4 as filed during the oral proceedings,

- auxiliarily to maintain the patent based on auxiliary request 7 filed with letter dated 7 December 2017 or to remit the case to the opposition division to continue examination of the opposition based on auxiliary request 7.

VIII. Claim 1 of the main request reads as follows:

"A bicycle control device (12) comprising:

a base member (36);

a shift control unit (SU) movable in a first direction and a second direction;

an operating member (41) operatively coupled to the shift control unit, the operating member (41) being movably coupled relative to the base member (36) to move along a shift operating path (SP) from a rest position (RP) to a first shift position for causing a movement of the shift control unit in the first direction,

the operating member (41) being further movably coupled relative to the base member to move along a brake operating path (BP) for performing a braking operation, the operating member being configured to perform a wire pulling operation, a wire release operation and a braking operation, the brake operating path being non-coincident with the shift operating path, and the operating member (41) having a finger contact portion (41b) configured and arranged for operating the operating member along said brake operating path,

characterized in that

the operating member (41) is movably coupled relative to the base member (36) to move along the shift operating path from the rest position to a second shift position for causing a movement of the shift control unit in the second direction, wherein the first shift position is located between the rest position and the second shift position."

Claim 1 of auxiliary request 1 reads as claim 1 of the main request with the following features appended:

"further comprising a control member (40) including a first portion (71) operatively coupled to the shift control unit (SU) and a second portion (72) engaged with the operating member (41), the second portion (72) of the control member being biased toward the operating member."

[...]

Claim 1 of auxiliary request 4 further reads as claim 1 of auxiliary request 1 with the following features appended:

"wherein the operating member (41) and the control member (40) are arranged to be pivotable about non-common offset axes along said brake operating path, wherein the operating member and the control member are not pivotable commonly about either of said offset axes."

Claim 1 of auxiliary request 7 reads as follows: [...]

IX. The proprietor's arguments may be summarised as follows:

[...]

The subject-matter of claim 1 of auxiliary request 4 found basis in a combination of claims 1, 2 and 7 with paragraphs [0012], [0013] and [0041] of the description. An alternative basis could be found by considering the alleged undisclosed features as either one or two undisclosed disclaimers. The disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled.

[...]

X. The opponent's arguments may be summarised as follows:

[...]

Auxiliary request 4 should not be admitted. Claim 1 prima facie lacked basis (Article 123(2) EPC), since the application as filed failed to disclose non-common offset axes. An undisclosed disclaimer could also not be used since the disclaimed feature provided a technical contribution in the application as filed. G1/16 stated that under such circumstances, use of a non-disclosed disclaimer was not allowed.

[...]

Reasons for the Decision

[...]

5. Auxiliary request 4

5.1 Admittance (Article 13(1) Rules of Procedure of the Boards of Appeal, RPBA)

5.1.1 This request was filed during the oral proceedings before the Board and thus represents an amendment to the proprietor's complete case (Article 12(2) RPBA). Under Article 13(1) EPC such amendment to a party's case may be admitted and considered at the Board's discretion (Article 13(1) RPBA), such discretion being exercised inter alia in view of the need for procedural economy. As is established case law of the Boards of Appeal, such procedural economy implies that amended requests should at least be prima facie allowable in order to be admitted.

5.1.2 As a first basis for claim 1, the proprietor suggested a combination of claims 1, 2 and 7 together with paragraphs [0012], [0013] and [0041] of the description as originally filed. This is however not accepted, as not one of these sections of the filed application discloses either:

- the operating member and the control member being arranged to be pivotable about non-common offset axes along said brake operating path; or

- the operating member and the control member not being pivotable commonly about either of said offset axes.

Whilst claim 7 discloses the option of pivoting about offset axes, paragraph [0041], which is alleged to provide the basis for these 'non-common offset axes', discloses solely the distinct wording that these two axes are 'different but parallel'. At least on a prima facie basis therefore, the added features are not directly and unambiguously disclosed to the skilled reader.

5.1.3 As regards the proprietor's alternative basis for the subject-matter of claim 1 meeting the requirement of Article 123(2) EPC, that the subject-matter of claim 1 includes an undisclosed disclaimer, this is also not accepted. According to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1).

5.1.4 In the present case, two undisclosed disclaimers have been introduced:

The first concerns the operating and control members being pivotable about non-common axes, while the second concerns the operating member and the control member not being pivotable commonly about either of the offset axes. The question to be answered is thus whether the introduction of these disclaimers can be considered as providing a technical contribution to the content of the application as filed.

5.1.5 In this regard, it is noted that claims 7 and 8 as filed (mirrored in paragraphs [0013] and [0014] of the granted patent) address the operating member and the control member being arranged to be pivotable about parallel and/or offset axes. This may be seen as providing ergonomic advantages for the user of the bicycle control device as also indicated in col. 3, lines 5 to 6 of the application as filed. It follows that the pivotability of the operating member and the control member about the offset axes is of a technical nature.

5.1.6 As originally filed, the operating member and control member were disclosed to be pivotable about parallel and/or offset axes along the brake operating path (for example, see claim 8 as filed). By way of the introduced disclaimers relating to the operating and control members being pivotable about non-common axes and not being pivotable commonly about either of the offset axes, a technical difference has been introduced to the amended claim when compared to the content of the originally filed application. Contrary to the proprietor's contention that the excluded features had no real meaning apart from excluding an incorrect interpretation of claim 1, as already identified in 5.1.5 above, the pivotable arrangement of the operating and control members about the axes is of a technical nature, not least through the disclosure of the ergonomic benefits for the user of the bicycle control device with the originally filed axes arrangement. With the above pivotable arrangement of the axes providing a technical contribution, so too must the disclaiming of this arrangement as well.

5.1.7 This finding is furthermore confirmed by considering whether merely a quantitative change to the original technical teaching has occurred or indeed whether a qualitative change has resulted from the introduction of the undisclosed disclaimers (see also G1/16, Reasons point 46.4). By disclaiming both common offset axes and common pivoting about either of the offset axes, the ergonomic considerations identified in the application as filed have been modified resulting in a qualitative change to the originally disclosed technical teaching in the sense that the proprietor's position with regard to inventive step would be changed.

5.1.8 As a consequence therefore, with the requirement for an undisclosed disclaimer not to provide a technical contribution to the subject-matter disclosed in the application as filed not being met, the undisclosed disclaimers in claim 1 do not, at least prima facie, meet the requirement of Article 123(2) EPC.

5.1.9 The subject-matter of claim 1 thus prima facie fails to meet the requirement of Article 123(2) EPC. Therefore, the subject-matter of claim 1 is not prima facie allowable, which would be necessary for fulfilling the need for procedural economy and consequently admitting the request into the proceedings. Accordingly, the Board exercised its discretion under Article 13(1) RPBA not to admit this request.

6. Auxiliary request 7

6.1 Admittance (Article 13(1) RPBA)

6.1.1 Having been filed with letter of 7 December 2017, the admittance of this request is also at the Board's discretion. Again, the requirement of procedural economy needs to be considered and as such implies (in accordance with established case law) that the amended request should at least be prima facie allowable in order to be admitted.

6.1.2 Regarding the subject-matter of claim 1 having a basis in the application as filed (Article 123(2) EPC), the proprietor's reference to paragraph [0037] for the features added to claim 1 relative to claim 1 of auxiliary request 4 is not accepted. In col. 7, lines 37 to 40, a projection 72a is disclosed as being included on the second portion 72 of the control member 40. As also argued by the opponent, this projection is not disclosed as an optional feature: the description states that the second portion of the control member 'includes a projection 72a'. The projection is furthermore disclosed in a structural (see e.g. Figs. 3 to 6) and a functional relationship (reduction of a frictional force during sliding movement) with the further features of paragraph [0037] adopted into claim 1. It thus follows that the omission of the projection 72a from claim 1 presents the skilled person with subject-matter not originally disclosed in the application as filed. The proprietor's contention that the projection 72a presented a solution to its own technical problem is also not accepted. Frictional forces exist whenever two elements move in contact relative to one another. It thus follows that the second portion of the control member would also experience friction with the operating member in the absence of projection 72a, such that the technical problem of dealing with the friction between the two elements is not isolated from the presence of the projection 72a.

6.1.3 Regarding the clarity of the claims of auxiliary request 7, from particularly Figures 3 and 6 it is evident that the 'concave portion' of the operating member in claims 3 and 4 of the request is in fact structurally the same part as the 'rear surface of the operating lever' included in claim 1. However, there is no logical structural interrelationship defined for these identical but differently defined parts (i.e. the parts in claim 1 compared to the parts in claims 3 and 4), such that the structure of the operating member itself as defined in claims 3 and 4 lacks clarity (Article 84 EPC 1973).

6.1.4 It thus follows that the claims are prima facie not allowable in view of Articles 84 and 123(2) EPC at least for the reasons given above. Accordingly, the Board exercised its discretion under Article 13(1) RPBA not to admit this request into the proceedings.

6.2 As regards the proprietor's request to alternatively remit the case to the opposition division to continue examination of the opposition based on auxiliary request 7, this is refused.

6.3 The proprietor chose the order of its requests on file. In the chosen order, auxiliary request 7 preceded the request for remittal of the case to the opposition division. Thereby the Board had necessarily to decide upon the admittance of auxiliary request 7 into the proceedings under Article 13(1) RPBA before considering the request for remittal. As the Board decided not to admit auxiliary request 7 into the proceedings, this request can consequently not be the basis for a remittal.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.


2. The patent is revoked.

This decision T 660/14 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2018:T066014.20180109. The file wrapper can be found here. Figure taken from the patent specification (Fig 6.)