T 0632/01 02-12-2003

I. The appellant is the proprietor of European patent 0. 515 004 (European patent application 92 202 380.9).

Claim 1 as granted reads as follows:

"A cutting tool adapted to be positioned downhole in a well bore for cutting away members within the well bore, said cutting tool comprising:

a generally cylindrical tool body (18) adapted to be received within a said well bore and to be supported at its upper end for rotation about a longitudinal axis;

a plurality of blades (32) on the body (18) and extending outwardly therefrom, each of said blades having a base with a leading surface (34) relative to the direction of rotation;

and a plurality of closely spaced cutting elements (42) of hard cutting material secured in side by side relation to said leading surface (34) of the base;

each of said cutting elements (42) being of identical size and shape; said cutting elements (42) being arranged in a plurality of transversely extending uniform rows in a symmetrical uniform pattern: and the cutting elements (42) in adjacent rows being offset with respect to each other, said cutting elements (42) in corresponding rows on adjacent blades being offset with respect to each other;

characterised in that:

each of said cutting elements (42) has a front face (42A) with a chip-breaking groove (42K) in said front face (42A), with said chip-breaking groove (42K) having an arcuate radius positioned to receive an end of a turning and direct it forwardly with respect to the direction of rotation."

II. Notice of opposition was filed by Smith International (North Sea) Limited requesting revocation of the entire patent on the grounds of Article 100(a), (b) and (c) EPC. During the procedure before the Opposition Division altogether more then twenty documents were filed by the parties, out of which the following remained relevant in the appeal proceedings:

D1: EP-A-0 231 989

D3: EP-A-0 234 697

D4: US-A-4 717 290

D10:US-A-4 259 033.

III. The Opposition Division held that the requirements of Articles 100(b), and (c) EPC were met but revoked the patent on the ground of lack of novelty (Article 100(a) EPC) of the subject-matter of claim 1 in view of D3.

IV. The appellant (the proprietor of the patent) filed an appeal against the decision on 29 May 2001 with the payment of the fee and submitted a statement of grounds on 30 July 2001.

V. In the written submissions and during the oral proceedings on 2 December 2003 the appellant argued that the subject- matter of claim 1 as granted was sufficiently disclosed in the specification of the patent in suit in order to be carried out by a skilled person. In particular, the patent contained several examples which demonstrated how the desired cutting tool could be obtained.

As to the characterizing feature "arcuate radius" in claim 1 of the patent in suit reference was made to column 5, lines 25 and 26, column 14, lines 27 to 50, claim 4 of the application as filed (publication A1) and column 2, lines 57 and 58, column 4, lines 9 and 10, columns 15, lines 10 to 31 of the patent specification (publication B1) as well as Figures 7 to 11, 16 and 17 of the patent in suit. It was argued that these passages disclosed several embodiments of the invention which clearly demonstrated both the radius of the groove and the groove contour in the cutting discs, so that the subject-matter of claim 1 of the invention was disclosed sufficiently clearly in order to be carried out by a skilled person. In the context of the characterizing feature of claim 1 specifying "a chip breaking groove having an arcuate radius" the appellant stressed, with a reference to publication B1, column 11, line 34 ff and column 12, lines 25 ff that a chip breaker in the face of the cutting discs was optional. Consequently the embodiment according to Figures 1 to 6 falls in the scope of the invention. Claim 1 of the patent in suit thus defined the shape of the radius which had to be arcuate, i.e. curved in the cross section, as originally disclosed in claim 4 as filed (publication A1).

Claim 1 of the patent in suit did not disclose an "annular" groove contained in the original claim 4 because this feature was not essential for the invention.

The appellant concluded that the patent in suit contained sufficient information to carry out the invention and that the requirements of Article 83 EPC were satisfied. The objection against the patent pursuant Article 100(b) EPC was thus not justified.

At the end of the oral proceedings the Appellant filed an auxiliary request according to which the expression "and downwardly" was inserted between the word "forwardly" and "with" in the characterising portion of claim 1 (column 19, line 12 of B1) in order to more clear disclose the invention.

VI. The counter-arguments submitted in writing and orally by the respondent (opponent) were essentially the following:

Taking into account the appellant's statement according to which the chip-breaking groove in the cutting discs of the tool according to the contested invention is optional, the technical contribution made by the invention to the state of the art shown in Figure 1B and described in the patent specification in suit was questioned. In case that this contribution was seen in the chip-breaking "groove having an arcuate radius" as specified in claim 1 in suit it was submitted that because of the vague expression "arcuate radius" the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art - Article 100(b) EPC.

The expression "arcuate radius" was not used at all in the detailed description - it appeared only twice, namely in claim 1 and in the corresponding statement of the invention in the description of the B1 publication. The only "radius" that was mentioned in the detailed description was the "radius" related to the reference sign "42L" in column 15 of B1. However, no specific properties of the radius were disclosed. As to the phrase "arcuate radius" the term "arcuate" could not be used to refer to the fact that the "radius" was "arcuate" in cross-section ; it would be like saying a "round arch" or a "triangle with three corners". The word "arcuate" must have a specific meaning, probably to describe a radius which is different from, for example, a "straight" radius. A "straight" radius would be provided when two planar surfaces intersect at right angles, such as at the edge of a standard desk or table.

Since the wording "arcuate radius" in the patent in suit left the skilled man in doubt which kind of limitation the attribute "arcuate" involved on the shape of the groove the afore-mentioned requirement on the European patent pursuant to Article 100(b) EPC was not met and the patent thus could not be maintained.

VII. Several declarations were filed by both parties which however concerned the question of novelty and inventive step according to Articles 54 and 56 EPC, issues which are not dealt with in this decision.

VIII. The appellant requested that the decision under appeal be set aside and that the patent be maintained as granted, (main request), or on the basis of the auxiliary request filed during the oral proceedings.

The respondent requested that the appeal be dismissed.