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T 1791/12: referall to Enlarged Board of Appeal as a last resort



Now and then, when I read a decision of a Board of Appeal, I get a sad feeling because the patent owner tries everything to maintain his patent or to maintain it in amended form and it seems that none of his argument are convincing and none of his auxiliary requests solve the problems. "Dear Board, my claims are inventive, there are no violations of Art. 123(2) and I have a number of auxiliary requests which should be admitted to the procedure and solve all the problems." And then the answers of the Board are: "No, No, No." Under EPC 1973 a last resort for the patent owner was to request the Board to refer the case to the Enlarged Board of Appeal "in order to assume the uniform application of law". Maybe you can guess the answer to this question.
This appeal extends from a decision of the Opposition Division. The Opponent and the Proprietor filed the appeal. Besides a discussion about novelty, inventive step, an important part of the decision relates to violations of Art. 123(2) and intermediate generalization. In this context, the proprietor defined a question that should be referred to the Enlarged Board of Appeal and its subject relates to intermediate generalizations. 


Summary of Facts and Submissions

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IV. With letter dated 28 June 2013, the proprietor requested the following question to be referred to the Enlarged Board of Appeal according to Article 112(1)(a) EPC:"What principles apply for judging an intermediate generalization in sense of Art. 123(2) EPC especially in view of the differing interpretations as given in T1906/11 and T0248/12?"



V. The Board issued a summons to oral proceedings including 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 an inventive step whilst the subject-matter of claim 1 of each of the auxiliary requests 1 to 3 seemingly failed to meet the requirement of Article 123(2) EPC. Regarding the requested referral to the Enlarged Board of Appeal, the Board indicated that, in view of the conclusion made in G2/10, such a referral did not appear necessary.

VII. Claim 1 of the main request (patent as granted) reads as follows (with paragraph annotation as used by the opposition division included for ease of reference):

1.1 "A bicycle sprocket assembly comprising:
1.2 a rotational drive unit (51), and
1.3 a bicycle sprocket (71) configured to be mountable to the rotational drive unit (51), the bicycle sprocket (71) comprising:
1.4 a sprocket ring part (72, 90, 90') including
1.4.1 an inner periphery and
1.4.2 an outer periphery with a plurality of sprocket teeth (72a, 90a) arranged on the outer periphery,
1.4.3 the sprocket ring part (72, 90, 90') extending around a central rotation axis (X); and
1.4.4 a synthetic resin fastening part (72c, 91)
1.4.5 non-movably coupled to the sprocket ring part (72, 90, 90') at a location radially inwardly of the sprocket teeth (72a, 90a) relative to the rotation axis (X),
1.4.6 the synthetic resin fastening part (72c, 91) including at least one mounting through hole (91e); and
1.5 a fastening member (80) having an enlarged head (80a) to apply a fastening force,
characterized in that
1.6 the sprocket (71) further includes a metallic tubular member (92)
1.6.1 mounted in the mounting through hole (91e) of the fastening part (91),
1.6.2 the metallic tubular member (92) has a first fastener contact surface (92c), and
1.7 the enlarged head (80a) of the fastening member (80) is sized and configured to contact the first fastener contact surface (92c) of the metallic tubular member (92)
1.8 to apply the fastening force to the first fastener contact surface (92c) to fixedly couple the metallic tubular member (92) to the rotational drive unit (51)."

Claim 1 of auxiliary request 1 reads as follows (with paragraph annotation from the main request maintained):
1.1 "A bicycle sprocket assembly comprising:
1.2 a rotational drive unit (51) including a support arm portion (76) having a mounting section (76a),
1.3 a first bicycle sprocket (71) configured to be mountable to the rotational drive unit (51), the first bicycle sprocket (71) comprising:
1.4 a sprocket ring part (90, 90') including
1.4.1 an inner periphery and
1.4.2 an outer periphery with a plurality of sprocket teeth (90a) arranged on the outer periphery,
1.4.3 the sprocket ring part (90, 90') extending around a central rotation axis (X); and
1.4.4 a synthetic resin fastening part (91)
1.4.5 non-movably coupled to the sprocket ring part (90, 90') at a location radially inwardly of the sprocket teeth (90a) relative to the rotation axis (X),
1.4.6 the synthetic resin fastening part (91) including at least one mounting through hole (91e); and
a second bicycle sprocket (72); and
1.5 a fastening member (80) having an enlarged head (80a) to apply a fastening force,
wherein the mounting section (76a) of the support arm portion (76) being configured to attach the first sprocket (71) and the second sprocket (72) thereto, and
1.6 the first sprocket (71) further includes a tubular member (92)
1.6.1 mounted in the mounting through hole (91e) of the synthetic resin fastening part (91),
1.6.2 the tubular member (92) has a first fastener contact surface (92c) and a second contact surface (92d), and
1.7 the enlarged head (80a) of the fastening member (80) is sized and configured to contact the first fastener contact surface (92c) of the tubular member (92)
1.8 to apply the fastening force to the first fastener contact surface (92c) to fixedly couple the tubular member (92) to the rotational drive unit (51),
characterised in that
the tubular member (92) is metallic, and
the second contact surface (92d) is sized and configured to contact the mounting section (76a) of the support arm portion (76) so that axial tightening force is applied to the metallic tubular member (92) instead of the synthetic resin fastening part (91) when the first sprocket (71) is fixed by the fastening member (80)."


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Reasons for the Decision

1. Main request

1.1 Article 100(a) EPC 1973 - Novelty

The subject-matter of claim 1 is novel with respect to the cited prior art.

1.2 Article 100(a) EPC 1973 - Inventive step
The subject-matter of claim 1 does not involve an inventive step.

1.2.1 As found under point 1.1.1 above, the subject-matter of claim 1 differs from D1 only in that the tubular member is metallic. Based on this difference, the most appropriate objective technical problem is to provide a suitable material for the tubular member.
 D1 shows (see Fig. 2) the tubular member (bush 23) as a separate material from both the annular member 1 (plastic; col. 2, lines 33 to 34) and the plate member 11 (metal; col. 2, lines 61 to 62). Being inserted into the plastic annular member preferably by being molded into the annular member (see col.3, lines 29 to 30), the provision of a metallic tubular member would be an obvious option for the skilled person. A metal tubular member is not least an obvious option since it would protect the plastic annular member 1 from damage by taking the forces resulting from tightening the screw 22. To use metal bushes in moulded plastic parts to prevent damage or help in the mounting thereof is something well known to the skilled person in the field of mechanical engineering.

1.2.2 The proprietor's argument that D1 is directed to saving weight which would dissuade the skilled person from selecting a metal bush is not persuasive. The bush 23 in D1 is a physically small item which would not have a significant mass, whether manufactured from hard plastic, ceramic or metal. Thus, even if metal were selected as the bush material, the weight penalty, if any, would be very slight and not of such a proportion to dissuade the skilled person from its adoption.
1.2.3 Thus, starting from D1 and wishing to solve the objective problem of finding a suitable material for the bush, the skilled person would, through his general knowledge of suitable bush materials in such applications, provide a metallic bush and reach the subject-matter of claim 1 without exercising an inventive step (Article 56 EPC 1973). The main request is thus not allowable.

2. Auxiliary request 1

2.1 Article 123(2) EPC
The subject-matter of claim 1 fails to meet the requirement of Article 123(2) EPC.

2.1.1 The amendment to claim 1 to include 'a support arm portion having a mounting section' is not directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed. First it should be noted that whilst claim 1 does not explicitly define a 'single' support arm, its subject-matter covers this possibility due to the wording 'a support arm'. Figs. 1 to 5 in combination with col. 6, line 36 to col. 12, line 10 of the A-publication (corresponding to the application as originally filed) however clearly indicate five support arm portions for the depicted and described embodiment, rather than just a single one as now covered due to the amendment made to claim 1. There is also no indication in the originally filed documents that a single support arm portion was ever intended as part of the disclosure.

2.1.2 The Board finds the proprietor's argument, regarding the skilled person considering the technical relevance to the invention of the five support arm portions and coming to the conclusion that a single support arm portion was all that was required to fully define the invention, not persuasive. Indeed the basic premise of the proprietor's argument that the technical relevance to the invention was of importance when considering which features were disclosed to the skilled person, is invalid. As clearly indicated in G2/10, this is not the test to be applied when analysing an amended claim; the technical relevance is not considered. Of importance is solely that which the skilled person would directly and unambiguously see as being disclosed in the application as filed. In the present case, the sole embodiment directed to the claimed bicycle sprocket assembly includes five support arm portions (see col. 6, line 36 to col. 12, line 10) and nowhere is an indication to be found suggesting that a single support arm portion suffices for the bicycle sprocket assembly.

2.1.3 The proprietor's argument regarding the invention clearly having no link to the five support arm portions is not convincing. In this respect it is noted that the concept of what the 'invention' comprises may change over the course of examination and opposition dependent upon the way in which the claims are amended and which prior art is considered. As such, the argument that particular features of an embodiment are not to be considered as part of the disclosure due to the 'invention' not being related to these features, is not a valid method for establishing what was unambiguously disclosed by the original application documents to the skilled person. With the 'invention' not necessarily being constant, allowing such a basis for an amendment would result in different amendments being acceptable dependent upon the particular invention defined by the claims at any particular time. This is clearly not the standard to be applied, rather of importance is what the skilled person would directly and unambiguously see as being disclosed in the application as filed. In the present case, this is five support arm portions, not the single support arm portion introduced to claim 1.

2.1.4 The proprietor's argument that the word 'five' being placed in parentheses in col.9, line 16 onwards and line 39 onwards clearly indicated that this was an optional feature was also not convincing. As also argued by the opponent, even if the word five in parentheses were ignored, the remaining physical features in the sentences are still described in the plural, i.e. bolts, nuts, tubular members such that also here no basis exists to suggest just a single support arm portion ever having been intended in the application as originally filed.

2.1.5 The proprietor's reference to col. 11, lines 4 to 8 was also unconvincing in supporting its view regarding compliance with Article 123(2) EPC. This reference merely states that, due to preferably identical tubular members and identical attachment to the fastening parts, only one of the 'tubular members' will be explained and/or illustrated in detail. Thus, whilst only one tubular member is described in detail, it is clear that the embodiment as a whole includes more than one tubular member and thus more than just one support arm portion.

2.1.6 The further reference to claim 1 as originally filed which claimed 'at least one through hole' is also not persuasive regarding compliance with the requirement of Article 123(2) EPC. This feature does not explicitly present a basis for the limitation in claim 1 'including a support arm portion', it simply claiming at least one through hole. It also does not implicitly disclose the possibility of a single support arm portion, nor does it suggest to the skilled person that a single support arm portion is intended since it is clear that an embodiment in which a single support arm portion were present would not present a mechanically sound arrangement of the bicycle sprocket assembly unless special, and undisclosed, measures were taken.

2.1.7 It thus follows that the subject-matter of claim 1 does not meet the requirement of Article 123(2) EPC at least due to the addition of the feature 'including a support arm portion'. The auxiliary request 1 is thus not allowable.

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4. Request for referral of a question to the Enlarged Board of Appeal

4.1 Article 112(1)(a) EPC 1973 requires the Board of Appeal during proceedings on a case, and in order to ensure uniform application of the law or if an important point of law arises, to refer any question to the Enlarged Board of Appeal, either of its own motion or following a request from a party to the appeal, if it considers that a decision is required for the above purposes.

4.2 In the present case, the proprietor has requested the referral of a question relating to the principles which apply for judging an intermediate generalisation under Article 123(2) EPC.

4.3 However, as pointed out above, under Article 112(1) EPC 1973 a question can be referred to the Enlarged Board only if the Board of Appeal considers this to be necessary. As follows from the findings under points 2.1 to 2.1.7 above, this is not the case here, since the Board of Appeal has been able to answer the question with reference to existing case law of the Enlarged Board of Appeal. The principles which apply for judging an intermediate generalisation are already clear from G2/10 (see item 4.3) which cites the principles which are to be used 'for assessing any amendment for its compliance with Article 123(2) EPC' as the gold standard and having been established in G3/89 and G11/91. The words 'any amendment' evidently also applies to amendments of the type which the proprietor refers to as 'intermediate generalisations'. Also, in the cases cited by the proprietor (T1906/11, T0248/12, T0834/13 and T0801/13), no divergent interpretations of the principles contained in G2/10 for judging amendments are anyway apparent, those principles being that an amendment must be 'directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed'.

4.4 The request for referral of the above questions to the Enlarged Board of Appeal must therefore be refused.

5. Auxiliary request 4

5.1 Non-admittance - Article 13(1) RPBA
Auxiliary request 4 is not admitted into the proceedings as it fails at least to prima facie overcome the objections to Article 123(2) EPC of the higher ranking requests.

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5.1.3 In the present request, the feature 'a support arm portion' objected to in auxiliary requests 1 to 3 is replaced by the feature 'a plurality of support arm portions'. In effect this wording includes within its scope anything from two to an infinite number of support arm portions. This range in number of support arm portions is however not unambiguously derivable from the originally filed application documents, in which only five support arm portions are directly and unambiguously disclosed. The subject-matter of claim 1 thus at least prima facie fails to meet the requirement of Article 123(2) EPC.

5.1.4 The proprietor's reference to several passages in the description where 'a plurality (five) ...' is presented in combination with elements associated with the support arm portions does not persuade the Board that the requirement of Article 123(2) EPC is met in the amended claim. All the references to 'a plurality (five)' are included in the single embodiment of the bicycle sprocket assembly found in the description which specifically depicts and describes an embodiment with exactly five support arm portions. It can thus not be unambiguously derived that the expression 'a plurality (five)' found within the description of this embodiment intends a simple plurality of support arm portions rather than specifically five.

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6. Auxiliary requests 5 and 6.

6.1 The subject-matter of claim 1 of each of these auxiliary requests also includes the feature 'a plurality of support arm portions', found above not to meet the requirement of Article 123(2) EPC.

(...)7. Auxiliary request 8

7.1 Non-admittance - Article 13(1) RPBA
Auxiliary request 8 is not admitted into the proceedings as it fails to prima facie overcome the objections to Article 123(2) EPC of the auxiliary requests 4 to 6.

7.2 At least two of the amendments made to claim 1 prima facie fail to meet the requirement of Article 123(2) EPC.

7.3 The first of these amendments concerns the last feature in claim 1 'the second contact surface is arranged and configured to contact the mounting section of the support arm portion so that axial tightening force is applied to the metallic tubular member instead of the synthetic resin fastening part when the first sprocket is fixed by the fastening member'. This details only some of the features associated with the arrangement and configuring of the second contact surface which are disclosed to the skilled person in combination from col. 11, lines 8 to 43. This passage in col. 11 is to be read as a whole, since it details how tightening of the fastening member (80) acts upon the first contact surface (92c) in order to urge the synthetic resin fastening part (91) into contact with the mounting section (76a). The embodiment particularly describes from line 8 to 24 how the flange section (92b) of the tubular member (92) fits in an annular groove of the synthetic resin fastening part (91) in order to transfer force applied by the fastening member (80) to the synthetic resin fastening part (91). The omission of at least this detail of how the second contact surface is 'arranged and configured' to contact the mounting section of the support arm portion, results in this feature being an unallowable intermediate generalisation of those features described in combination in the above referenced passage of the originally filed application.

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7.4 The second amendment prima facie failing to meet the requirement of Article 123(2) EPC is the feature 'wherein the first sprocket (71) and the second sprocket (76) are mounted on both opposite axial sides of the mounting sections (76a)', first introduced in auxiliary request 6 but not forming part of the decision for that request. The alleged basis for this amendment is col. 9, lines 14 to 19 in which, with reference to Fig. 5, a first axially extending fastening hole 76b is disclosed allowing the sprockets 71 and 72 to be fastened simultaneously to the mounting sections 76a. From both Fig. 5 and the statement that both sprockets can be 'simultaneously' fastened, the fastening hole 76b must clearly then be a through-hole which takes the common fastening bolt 80 for both sprockets. This is not reflected in the features introduced into claim 1, where neither a simultaneous fastening, nor features implicitly indicating the structural arrangement necessary for this to occur, have been included in the claim. The scope of claim 1 thus covers, for example, two blind holes for fastening the sprockets from either side, which represents an embodiment extending beyond that originally disclosed in the application documents.

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Order

For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T179112.20150324. The whole decision can be found here. Photo "Just say no" by Marc Falardeau obtained via Flickr under CC BY-SA 2.0 license (no changes made).

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