T 1062/01 21-05-2003

1. Procedural matter

In accordance with new Article 11(3) of the Rules of Procedure of the Boards of Appeal, which entered into force on 1 May 2003, the "Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written case". New Article 11(3) of the Rules of Procedure of the Boards of Appeal was published in the Official Journal (OJ) of the EPO in February 2003 (see OJ EPO 2003, 65). Furthermore, the parties were informed of its content prior to the oral proceedings (cf. point III above). The oral proceedings before the Board duly took place in the absence of the appellant and, at the conclusion of the oral proceedings, the decision of the Board was announced.

2. Main request

2.1. Novelty

Claim 1 of the patent in suit specifies the presence of "internal manifold means within said frame for directing a washing fluid to said nozzles".

Contrary to the submission of the respondent, the Board is of the opinion that the term "frame" as used in the claim must be construed in the light of the description to refer to the fountain body or frame 2 alone and not to the assembly comprising the frame together with the reinforcing brace 4. There is no passage in the description of the patent in suit in which the term "frame" is used to refer to the combination of the frame and the brace.

In addition, the term "internal manifold means" is to be construed as referring to the cleaning inlet supply port, the passages leading to the spray nozzles and the longitudinally extending passage which connects the cleaning inlet supply port to the passages leading to the spray nozzles.

In the illustrated embodiment of the patent in suit, the internal manifold 44 comprises bores formed in the frame 2 which connect a cleaning solution supply port 48. to an elongate passage extending the length of the frame, which in turn is connected by further bores to spray nozzles 42 disposed in the channel 6. The elongate passage is defined between the frame 2 and the planar face of a rigid reinforcing brace 4. This construction is shown in Figure 5 of the patent in suit. Insofar as the brace merely defines a planar wall of the elongate passage extending the length of the frame, the internal manifold can be regarded as being within the frame.

It may be noted that the internal manifold 19 shown in Figure 10 of the patent in suit, and referred to by the appellant in the grounds of appeal, is for supplying a lubricant and has no connection with the cleaning solution supply system.

According to paragraph 2 of the "Reasons" of the decision of the Opposition Division, a fountain assembly described by the witness, Mr Sarazen, as set out in the minutes of the oral proceedings before the Opposition Division, and illustrated in a drawing (cf. Annex 2 of the minutes, hereinafter referred to as Annex 2), was made available to the public before the priority date of the patent in suit. This was not contested by the appellant in the appeal proceedings, and the Board sees no reason to depart from this finding.

In the prior used arrangement, the internal manifold for the washing fluid also comprises an elongate passage extending the length of the frame, and bores connecting the channel to spray nozzles. However, the elongate passage is defined between a channel formed in a reinforcing rib and a planar face of the frame as can be seen in Annex 2. In addition, the supply port 14 is formed in the reinforcing rib as shown in the lower of the two sketches forming Annex 2. The manifold of the prior used arrangement is thus not within the frame.

Owing to the absence of this feature, the subject- matter of claim 1 is novel having regard to the prior used fountain assembly.

2.2. Inventive step

The prior used arrangement comprises all the features of claim 1, apart from the feature of the manifold being within the frame, as discussed above. In this respect, reference is made to paragraph 3.1 of the "Reasons" of the decision of the Opposition Division, setting out the correspondence between the features of claim 1 and the features of the prior used fountain assembly. However, contrary to the Board, the Opposition Division was of the opinion that the prior used arrangement comprised the feature of the manifold being within the frame as well.

It was argued on behalf of the appellant that the arrangement of the manifold within the frame avoided the use of seals between the brace and the frame. This argument is, however, not accepted, since both arrangements require seals between a metal reinforcing member and a plastics body along the length of the elongate passage.

It is also not the case that the prior used arrangement is more liable to leakage owing to the necessity of providing tubing to nozzle connections which may leak. In both the prior used arrangement and the arrangement of the patent in suit, the only connection to tubing occurs at the point at which cleaning or washing solution is supplied through tubing to the supply port.

The subject-matter of claim 1 thus does not involve an inventive step.

3. First auxiliary request

3.1. Amendments

As shown in Figure 4 of the application as filed, cleaning solution is supplied to the manifold through a single supply port 48. The passage in the description at column 10, lines 50 to 52, refers however to "supply ports 48". The application as filed thus discloses the feature "at least one supply port within said frame for supplying washing solution". The reference in claim 1 to "washing solution within said internal manifold means within said frame" is substantially a repetition of the feature already present in claim 1 specifying "internal manifold means within said frame for directing a washing fluid to said nozzles" and is disclosed in particular in claim 10 of the application as filed.

The amendments to claim 1 thus satisfy the requirement of Article 123(2) EPC.

The amendments do not extend the protection conferred and are made in order to overcome a ground of opposition. The amendments made to claim 1 thus also comply with the requirements of Article 123(3) as well as Rule 57a EPC. This was not disputed by the respondent.

3.2. Inventive step

The additional feature of claim 1, according to which "the at least one supply port being within said frame" is not seen as involving an inventive step. The positioning of the supply port on either the brace or the frame is seen as being a matter of design which does not contribute to the solution of a technical problem. The person skilled in the art would choose one or other possibility according to which would be most convenient in any particular case.

The subject-matter of claim 1 thus lacks an inventive step.

4. Second auxiliary request

4.1. Amendments

The addition of the term "entirely" is seen as an attempt to specify an arrangement in which the internal manifold is entirely within the frame as illustrated in the drawing entitled "Autoflex Doctor Blade Chamber", attached to the submission of the appellant received on 17. April 2003.

Such an arrangement is not disclosed in the application as filed. As shown in Figure 5, the elongate passage connecting the supply port to the spray nozzles is defined between the frame 2 and the planar face of the rigid reinforcing brace 4.

The amendment to claim 1 thus introduces subject-matter which extends beyond the content of the application as filed and accordingly does not satisfy the requirement of Article 123(2) EPC.

5. Third auxiliary request

5.1. Amendments

The feature "and wherein said nozzles meet said internal manifold means at points within said frame", introduced at the end of claim 1 of the main request, is disclosed in the application as filed in Figure 5. This was not contested by the respondent.

The amendments to claim 1 thus satisfy the requirement of Article 123(2) EPC.

The amendments do not extend the protection conferred and are made in order to overcome a ground of opposition. The amendments made to claim 1 thus also comply with the requirements of Article 123(3) as well as Rule 57a EPC. This was also not disputed by the respondent.

5.2. Inventive step

The feature introduced at the end of claim 1 of the main request is present in the prior used arrangement as shown in Annex 2, where it can be seen that the passages connecting the nozzles 3 meet the passage 6 at points within the frame.

The subject-matter of claim 1 of the third auxiliary request thus lacks an inventive step for the reasons given above in respect of claim 1 of the main request.

6. Fourth auxiliary request

6.1. Amendments

The feature of claim 1 concerning the at least one supply port is disclosed in the application as filed for the reasons given above in respect of the first auxiliary request. The feature introduced at the end of claim 1 of the first auxiliary request concerning the reinforcing brace is disclosed in the application as filed in Figures 4 and 5, where it can be seen that the rigid reinforcing brace 4 is fixed along substantially the entire length of said frame on an outer side thereof opposite the channel 6.

The amendments to claim 1 thus satisfy the requirement of Article 123(2) EPC.

The amendments do not extend the protection conferred and are made in order to overcome a ground of opposition. The amendments made to claim 1 thus also comply with the requirements of Article 123(3) EPC as well as Rule 57a EPC. This was not disputed by the respondent.

6.2. Inventive step

The feature concerning the reinforcing brace is present in the prior used arrangement as shown in Annex 2, where it can be seen that the brace 4 is fixed along substantially the entire length of the frame on an outer side thereof opposite the channel 9.

The subject-matter of claim 1 thus lacks an inventive step for the reasons given above in respect of claim 1 of the main request.

7. Apportionment of costs

Four auxiliary requests were filed by the appellant on 17. April 2003, each consisting of an amended claim 1. The amendments are regarded as being in response to the provisional opinion of the Board, which was issued on 4. February 2003 as an annex to the summons to attend oral proceedings. This annex indicated that "any further submissions should be filed at least one month before the date set for oral proceedings". The submission of the auxiliary requests meets this requirement and is thus justified.

The respondent referred to the decision in case T 323/89. This decision is, however, concerned with an award of costs incurred in connection with the late citation of prior art which, with normal care, could have been cited during the opposition proceedings. This is not the present case.

The respondent further pointed out that he had not requested oral proceedings and that the appellant had indicated only shortly before the appointed date that he would not attend the oral proceedings. These circumstances did not, however, give rise to any additional costs for the respondent, who was aware at the time of travelling to the oral proceedings that the appellant would not be present.

It is therefore not appropriate to order a different apportionment of costs in accordance with Article 104(1) EPC.