T 0567/03 24-10-2006

Admittance of the auxiliary requests dated 24 January 2005

1. Although these requests have all been either withdrawn or superseded, the matter of their admittance into the proceedings remains important since subsequent requests derive from them. According to Article 10b(3) RPBA "amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings." The amendments according to the respondent's letter filed on 24 January 2005 were sought to be made after oral proceedings had been arranged and the appellant argues that they are inadmissible within the meaning of Article 10b(3) RPBA.

1.1 In the present case when the respondent filed auxiliary requests on 24 January 2005 it had complied with the one month deadline which the board set for filing amended requests. The board's intention when setting the one month deadline was to ensure that adequate time would be available for reacting to amended requests in advance of the oral proceedings. Clearly, when one party amends its case close to the deadline the other party is not expected to respond before the same deadline. The appellant's claim that it had only four days in which to prepare a response is not the case; the board's deadline was in respect of requests and written submissions and the subsequent one month was available to the appellant for preparation of a response to be presented during the oral proceedings.

1.2 When the board summoned the parties to oral proceedings it also sent a communication pursuant to Article 11(1) RPBA in which it indicated its provisional opinion regarding the relevance of D13. Although the board drew no provisional conclusion regarding inventive step, this nevertheless was the first time in the appeal procedure that the respondent had been faced with arguments contained in that opinion. Moreover, although the appellant had first introduced D16 at the time of filing its grounds of appeal, the board had issued no communication prior to summoning the parties to oral proceedings. It follows that the respondent could not know prior to the appointment of oral proceedings whether the board would find D16 to be of sufficient potential relevance to admit it into the procedure. Also, when the board pointed out in its communication that there was a fundamental inconsistency between the wording of claim 9 and the description this was the first time that this aspect of the claim's interpretation had been drawn to the parties' attention. All of these matters are ones which the respondent would need to consider when formulating its requests. Furthermore, although the respondent filed its amended requests only shortly before the deadline set by the board, the two months which had elapsed after the date on which the summons was posted included the Christmas and New Year periods.

1.3 The amendments made by the respondent largely involved the introduction of additional features into the preambles of the claims and the formulation of the claims in the two-part form based on D13. Nevertheless, some features were added from the description and drawings whose introduction could justify an additional search by the appellant. However, in the board's view when taking into account the restricted scope of the claims the one month period between filing of the amendments and the date of the oral proceedings was adequate for this purpose.

1.4 For the reasons set out above it would have been unfair to refuse the respondent the opportunity to amend its requests. Additionally, the amendments which it did make and the timing of their filing did not "raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings" as specified in Article 10b(3) RPBA.

Main request

2. The patent relates to a gear shift arrangement for a bicycle. It is of the type commonly known as a 'grip-shift' in which the control member is rotatable around the handlebar. Rotation of the control member causes corresponding rotation of the take-up element which acts to wind the inner wire of a Bowden cable onto itself. The other end of the Bowden cable is attached to the gear mechanism. Rotation of the control member also causes corresponding rotation of an indicator for showing a rider which gear has been selected. The claims according to this request relate to two of the embodiments which were originally disclosed in the application, those of original figures 6 to 8 and figure 9. The embodiment of original figures 1 to 5 no longer falls within the scope of the claims and the figures have been deleted accordingly. Similarly, the description has been adapted to remove reference to the deleted embodiment.

3. The first paragraph of the "detailed description of the preferred embodiments", which originally referred to the deleted embodiment, has been retained in an amended form in respect of the embodiment of present figures 1 to 3 which correspond in essence to original figures 6 to 8. This paragraph now attributes the feature of a 'wire receiving case' to the embodiment of present figures 1 to 3. In order to determine whether this is in conformity with the original disclosure of the application it is appropriate to consider the original detailed disclosure of the embodiments of original figures 1 to 5 and 6 to 8.

FORMULA/TABLE/GRAPHIC

3.1 The embodiment of original figures 1 to 5 relates to a grip-shift apparatus in which the wire take-up element 3 is concentric with the grip. Original figure 1 illustrated this in the following way:

The relevant part of the corresponding description read:

"The frame 2 contains a wire takeup element 3. The frame 2 includes a wire receiving case 4 formed integral therewith and having an outer holder 5 for supporting a control cable 6 extending from a change gear device (not shown) of the bicycle. The control cable 6 has an inner wire 6a guided from the outer holder 5 into the frame 2 by way of a plurality of guide rollers 7 arranged inside the wire receiving case 4."

3.2 In the original second embodiment the wire take-up element 3 is arranged with its rotational axis perpendicular to that of the first embodiment and the corresponding figure illustrated this as:

FORMULA/TABLE/GRAPHIC

The relevant part of the corresponding description read:

"An outer tube of a control cable 6 extending from a change gear device of the bicycle is supported by an outer holder 5 provided on the frame 2. An inner wire 6a of the control cable 6 extends into the frame to be connected to the takeup element 3."

3.3 To the knowledge of the board and contrary to the assertions of the respondent who provided no evidence otherwise, the term 'wire receiving case' has no accepted meaning in the art. Even if there were an accepted meaning in the art, in accordance with jurisprudence of the boards of appeal an application forms its own dictionary and the skilled person would form an understanding of the term from the first and only embodiment for which it is used. As derivable from the disclosure set out in 3.1 above the wire receiving case is provided with an outer holder, serves to guide the inner wire correctly onto the take-up element and is located between the outer holder and the remainder of the frame. As may be seen from 3.2 above in respect of the second embodiment, on the other hand, where neither the term 'wire receiving case' nor the associated reference numeral '4' was used, because of the different orientation of the take-up element the inner wire passes directly onto it without any guidance. Whereas in the first embodiment the outer holder 5 was provided on the wire receiving case, the description in respect of this second embodiment explicitly stated that the outer holder was provided on the frame. From all of this information the skilled person would clearly understand that the feature which in the first embodiment was designated as a 'wire receiving case' was not present in the second embodiment.

3.4 Present figure 2 differs from original figure 7 in as far as the reference numeral '4' has been added, as may be seen in this partial reproduction of present figure 2:

FORMULA/TABLE/GRAPHIC

As can be clearly seen the reference numeral '4' for the wire receiving case has simply been attached to that region of the frame within which the take-up element is located. This does not even correspond to the original teaching as set out in 3.1 above according to which the outer holder is provided on the wire receiving case.

3.5 Since the present description attributes a wire receiving case to the arrangement according to the original second embodiment this provides a teaching to the skilled person which was not contained within the original disclosure, in contravention of the provision of Article 123(2) EPC. Similarly, claim 1 combines the feature of a wire receiving case and an indicator, as disclosed in respect of the original second embodiment, which rotates around an axis different from the axis around which the control member rotates.

4. In view of the above deficiencies the main request must be refused.

First and second auxiliary requests

5. Claim 1 according to each of these requests also combines the feature of a wire receiving case and an indicator, as disclosed in respect of the original second embodiment, which rotates around an axis different from the axis around which the control member rotates. These claims therefore also provide a teaching to the skilled person which was not contained within the original disclosure, in contravention of the provision of Article 123(2) EPC. These requests also therefore must be refused.

Third auxiliary request

Amendment of the description

6. The description according to this request contains neither of the amendments treated above in respect of the main and first and second auxiliary requests. The description has been amended generally for consistency with the single claim. The board considers that these amendments are in accordance with the requirements of the EPC and the appellant has not objected otherwise. However, the appellant argues that one other amendment, in the final two sentences on page 6, unrelated to the grounds for opposition, does not satisfy the requirement of Article 123(2) EPC.

6.1 The final two sentences on page 6 have been amended from the corresponding sentences in the original description (page 10, fourth paragraph) by interchanging the terms "forward" and "backward". These two sentences explain with reference to a figure the respective senses of rotation of the control member and take-up element through rotation of the intermediate gears.

6.2 It is clear that the term "forward" in respect of the control member when mounted on the handlebar of a bicycle was originally, and still is, intended to signify movement of the upper surface of the control member in the forward direction when mounted on the right-hand side of the handlebar or, in other words, anti-clockwise rotation when viewed from the left. Rotation of the take-up member is clearly defined in terms of winding or unwinding of the inner wire. When the description as originally filed is carefully studied in combination with the figures it is clear that "forward" movement of the control member would not result in winding wire onto the take-up element as originally stated but in unwinding it. It is therefore immediately evident that the corrected version is what was originally intended. It follows that the amendment does not extend the content of the description beyond that of the application as originally filed (Article 123(2) EPC) and satisfies the requirements of Rule 88 EPC.

Compliance of the claim with the requirement of Article 123(3) EPC

7. The claim derives from claim 9 as granted which specifies a shifting apparatus for controlling a change gear device. According to that claim the apparatus contains the feature of an interlock mechanism for transmitting rotation of a shift control member to a take-up element and the take-up element is "rotatable with said shift control member about said first axis". The normal interpretation of this wording would be that the take-up element rotates about the first axis. However, in the description of the patent specification there is no embodiment having such an interlock mechanism in which the take-up element and control member rotate about a common axis. The wording of the present claim specifies a shifting apparatus "for use on a bicycle" for controlling a change gear device and that the take-up element is "rotatable together with said shift control member … whereas the shift control member is rotating about said first axis", thereby avoiding the interpretation mentioned above. Whilst this amendment is permissible in accordance with Rule 57a EPC the question remains whether it contravenes the provision of Article 123(3) EPC.

7.1 According to Article 123(3) EPC the claims of a European patent may not be amended in opposition proceedings in such a way as to extend the protection conferred. Decisive in this respect is not whether there is an extension in the protection conferred by the individual claim but in that conferred by the claims taken as a whole, cf. G 2/88 reasons 3.2, first paragraph (OJ 1990, 93). If the protection conferred by claim 1 as granted is broader than that conferred by the present claim then the requirement of Article 123(3) EPC is satisfied.

7.2 Claim 1 as granted is fully consistent with the corresponding description and drawings and specifies a shifting apparatus "for use on a bicycle" and "a take-up element rotatable with said shift control member". The wording of the claim specifies no other restriction as regards the relative arrangement of the take-up element and control member. Any shifting apparatus which is suitable for use on a bicycle and having a take-up element rotatable with the shift control member and which in addition comprises all of the remaining features of claim 1 and any additional feature such as an interlock mechanism would fall within the protection conferred by that claim, irrespective of the relative arrangement of the take-up element and control member. Since the present claim, on the other hand, not only specifies all features of claim 1 as granted but also additional restricting features, the protection which it confers is more restricted that that conferred by claim 1 as granted. The requirement of Article 123(3) EPC therefore is satisfied.

Inventive step of the subject-matter of the claim

8. This claim concerns a shifting apparatus according to the embodiment shown in figure 9 of the drawings of the patent specification as granted in which no two of the control member, take-up member and indicator share an axis of rotation. The closest prior art is known from D13. In that arrangement the shift control member rotates about the longitudinal axis of the handlebar whilst the take-up element rotates about an essentially vertical axis and is driven by the control member through a bevel gear arrangement. The indicator takes the form of an arrow marked on the upper surface of the take-up element, registering with numerals marked along an aperture in a casing and through which the arrow is visible.

8.1 The subject-matter of the present claim differs from that of D13 by the following features:

- the indicator is formed separately from the take-up element; and

- the rotational axis of the indicator is different from the rotational axis of the take-up element.

These differentiating features act together to permit the orientations of both the indicator and the take-up element to be chosen according to their respective functions. For example, the indicator may be positioned for optimum visibility whilst the take-up element may be positioned in order to achieve the desired cable run.

D1 does disclose the idea of inclining the indicator display. However, in D1 the indicator is separate from the take-up element and the two rotate around axes which are mutually generally orthogonal. Inclination of the indicator would be relatively simple, involving its rotation either about the point of engagement of the respective gear teeth or about the axis of the take-up element. By comparison, the indicator and take-up element in D13 are coaxial by virtue of being a single component. Providing for inclination of the indicator relative to the take-up element in that apparatus would require not only separation of the two components but also the introduction of an angled drive means. Such a modification is not rendered obvious by the cited prior art.

9. In the light of the foregoing the board concludes that the subject-matter of the single claim according to the third auxiliary request involves an inventive step (Article 56 EPC).