T 0573/02 18-05-2004

1. Admissibility of the amendments (Articles 123(2) and (3) EPC); Clarity (Article 84 EPC); "Reformatio in pejus"

1.1. Compared to claim 1 as granted, claim 1 is now limited to a specific embodiment of the clamp structure (figure 7 of the patent) which is particularly adapted for fastening a hose of hard material. Accordingly, the further separate tolerance compensating means are now defined as including an undulation having a single circular opening located in the top portion of the undulation. These limitations have a clear basis in the application as originally filed (page 5, lines 19 to 22; claim 8) and were not objected to by the appellant as representing an extension of the subject-matter.

1.2. The appellant questioned the clarity of the relative term "hard". Owing to the fact that the patent distinguishes hoses made of softer material, like rubber, from those made of harder material, like plastic materials, the Board considers that the term "hard" is not unclear within this context.

1.3. The appellant objected to the deletion of the limitation "of such a shape as to take into consideration the hardness of the hose material" which was introduced by the respondent during the opposition proceedings and emphasized the adaptive character of the shape of the opening. The Board notes in this respect that the deleted expression did not impart any teaching as to how the shape of the opening and the hardness of the material are linked. The expression in question was vague and deprived of any clear technical teaching. The deleted expression has been replaced by the more specific teaching of providing the undulation with a circular opening when the clamp is intended to be used in conjunction with harder hose materials. A teaching which was disclosed right from the beginning.

1.4. The amendments made in the independent claim 1 in replacement of the wording held allowable by the Opposition Division introduce originally disclosed features which further limit the scope of the patent as maintained by the Opposition Division. Hence, the amended claims do not put the appellant (opponent) in a worse situation than if it had not appealed and the principle of avoiding "Reformation in pejus" mentioned in the decision G 1/99 of the Enlarged Board of Appeal (OJ EPO 2001, 381) has been duly observed.

2. Novelty

The Board agrees with the appellant that the passage of column 8, lines 7 to 13 of D6 proposes the "grooving, indenting, depressing, notching or recessing" in the centre portion of the elastic fold 2 in the same manner as it was already proposed with the centre portion 19 of the deformable lug or fold 22 depicted in figure 18 of D6. Thus, such an elastic fold corresponds to the further separate tolerance compensating means of claim 1.

The contention of the appellant that especially the term "notch" included a circular opening, is, however, not correct. As mentioned in column 7, line 44 to column 8, line 6 of D6, the part depicted with the reference numeral 19 in the central part of the fold is systematically described as being a "reinforcement" and its purpose is clearly to prevent that a sharp bending, i.e. buckling or collapse, takes place in the centre of the fold of the band during the clamping operation (see figure 16 of D6). Such a reinforcement can take various forms and the terms "notch" and "recess" are indeed cited. In D21, which is assigned to the same applicant and has the same filing date and makes use of the same terminology as D6, the same "reinforcement" is disclosed in the same context and for the same purpose. The terms "notch" and "recess" are also mentioned as forms taken by the reinforcement (column 6, lines 39 to 40). Except for the reference numeral of the reinforcement (40 instead of 19), the figures 12 to 14 of D21 are identical with the figures 16 to 18 of D6. Figures 18 to 21 of D21 illustrate different forms of realisation of the reinforcements at an enlarged scale. As mentioned in column 6, lines 34 to 42 of D21, all of them are realised by a radial deformation of the central part of the fold along a direction which extends in a circumferential direction of the clamp. This deformation stiffens the fold against bending. Within this context, the word "notch", which was expressly selected by the appellant in support of his argumentation, also entails the notion of extending along that particular direction. There is no disclosure or suggestion of the reinforcement taking the form of a circular opening. Although it is conceivable that some cutting may be used to form the described reinforcement, there is no suggestion of cutting an aperture of circular form in the top of the fold. This operation would undoubtedly weaken the resistance of the fold against bending. Nor is there any disclosure of a tiny through-hole made in the top of the fold and having a reinforcing effect by strain hardening, as contended by the appellant. The mention of such a tiny hole is pure speculation and biased by the ex-post facto knowledge of the invention.

3. Inventive step

3.1. The argument that the skilled person who wanted to reduce the elasticity of an undulation would have contemplated a weakening by punching the top portion of the undulation as an obvious alternative to the proposal of reinforcing that top portion, known per se from D6 or D21, does not find any support in D6. This document only and consistently mentions the reinforcing effect. The Board understands the passage of column 8, lines 20 to 28 cited by the appellant as meaning that the purpose of the notches, grooves, indentations and depressions is still to reinforce, in this instance to increase the elasticity of the fold 2 in case the band is made of a soft steel material which does not exhibit a sufficient spring action, thus obviating the need for annealing the material in the area of the deformable folds or lugs 22 (see D6: column 5, lines 1 to 3). Another object to be achieved by the reinforcements in connection with the elastic folds 2 mentioned in D6 is to allow an increase of the clamping force, thus permitting the use of thinner and more flexible material for the band (column 8, lines 11 to 13). There is nothing in D6 about weakening an elastic undulation and, all the less, about weakening that could be obtained by cutting one or more openings of any shape in the top of an undulation

3.2. Starting from the metal clamp of D1 having the "m"-shaped clamp undulation traversed by a longitudinally extending central slit, the contention of the appellant that the skilled person would seek to strengthen the elastic undulation of D1 because it was considered to be too weak for harder hose materials is not backed by the cited passage of D1 (column 2, lines 35 to 52). There is nothing in this passage which suggests that the "m"-shaped clamp undulation was not adequate for harder hose material. The fact that the undulations were stretched substantially flat when a hose of hard material was to be fastened by the clamp is mentioned as having the advantage of preventing a useless squeezing of the deformable pipe by exerting a uniform pressure at every point, which is an essential condition for preventing detachment. The longitudinal slot 9 which extends along the two adjacent undulations 8 of the clamp structure of D1 cannot be considered as constituting an opening located in the top portion of the undulation and having a circular shape. The argument that it would have been obvious to a skilled person to reduce the size of the slit 9, if the elasticity of the undulation was considered to be too weak for harder hose materials, does not lead to a circular opening in the top portion of the undulation. In the Board's opinion, the skilled person would rather have considered a reduction of the width of the slit 9.

A circular opening only in the top portion of the undulation has the effect of weakening the part of the undulation which is subjected to the highest efforts. There is no example in the prior art of such a localised weakening. This might be explained by the danger of failure linked to the abrupt change of section at that highly stressed location.

3.3. The Board cannot recognise in D17 any contribution to the problem of adapting the elastic characteristics of an elastic fold. Document D17 discloses elastic tolerance compensating means in the form of hourglass shaped openings 24 (figure 1) or circular openings 124 (figure 6) made in the flat part of a clamping band. This type of elastic tolerance compensating means can be used as an alternative to, or in addition to, the undulation mentioned in the claim. There is no other obvious way of combining the teaching of D17 with a clamp structure having undulations of the type shown in D1 or D6.

3.4. Therefore, in the Board's judgment, the concept of cutting a single circular opening in the top portion of an undulation in order to achieve elastic characteristics of that undulation which, when used as a separate tolerance compensation means in a clamping band including tightening means for fastening a hose, are particularly adapted for harder hose materials, is not disclosed or suggested by the prior art cited by the appellant.

4. The Board concludes from the above that the subject-matter of claim 1 is novel (Article 54 EPC) and involves an inventive step (Article 56 EPC).

Dependent claims 2 to 13 relate to further developments of the inventive concept disclosed in claim 1 and contain all of the features of claim 1. The above conclusions regarding novelty and inventive step apply equally to these claims which likewise meet the requirements of the EPC.