T 1317/04 16-09-2008

Main request

1. Admissibility of the amendments, Articles 84 and 123(2) EPC

1.1 Claim 1 of the main request differs from claim 1 as granted inter alia in that the following underlined features have been added:

"mounting means (48, 50) for detachably mounting said control unit on a region of the outer surface of said pump body, said region is closed"

The terms "region" and "closed" do not appear in the application documents as filed. The term "region" in the expression "said region is closed" refers to the "mounting region" of the control unit, as is clear from the amended feature read as a whole. The description of the application as filed is silent about the meaning, or possible interpretation, of the notion of "mounting region". For example, it is not clear whether the mounting region of the control unit consists of the top and side surfaces of the mounting base 48 shown in Figure 2, or extends to the whole area of contact between the control unit and the pump body as shown in Figure 1 (or possibly merely pertains to the area around the bolt reception hole, where the control unit and the pump body are bolted together). Furthermore, if for example a cup shaped control unit is mounted upside down on a flat base, it is not clear whether the ring shaped area of contact between the control unit and the base constitutes the mounting region, or whether the mounting region extends to the area inside said ring shaped area. In the former case, claim 1 would merely require that the ring shaped region is "closed", in the latter case claim 1 would in addition require that the region within the ring is also "closed".

The respondent has argued that the expression "closed region" ("geschlossene Oberfläche") meant that there were no through openings between the outside and the inside of the pump body in said region.

However, it is not clear whether the adjective "closed" pertains to the pump body wall as suggested by the respondent, or rather to the outer surface of the pump body, an interpretation which follows straightforwardly by substituting "said region" by "[a] region of the outer surface of said pump body" in the amended feature. The latter possibility would not only require the absence of through openings in the pump body wall, but also require the absence of dents, holes or similar in the outer surface of the pump body.

Assuming that the expression "said region is closed" is intended to exclude the presence of through passages in the pump body wall, it still remains unclear, whether a region with drill holes closed by bolts, or with through passages for electrical connections closed by moulded-in coil- or grounding tabs or the like, can still be considered a closed region or not.

In the judgement of the Board the expression "said region is closed" is therefore not clear in the meaning of Article 84 EPC.

1.2 The rectangular mounting base 48 is shown in Figures 1 and 2. Figures in patent applications are normally schematic. For example, the grounding tab 60 shown in Figure 1 is not shown to extend into the mounting base 48, although the person skilled in the art would expect this to be the case in order that the grounding tab fulfils its function.

In the judgement of the Board Figure 2 does not disclose directly and unambiguously to the person skilled in the art that the surface of the rectangular mounting base 48 is, apart from the bolt reception hole 56, a closed surface, since no conclusion can be drawn from the absence of details in a schematic drawing.

Consequently, claim 1 of the main request extends beyond the content of the application as filed, Article 123(2) EPC.

Auxiliary request

2. Auxiliary request filed during oral proceedings to be admitted into the appeal proceedings?

Claim 1 of the auxiliary request was filed during oral proceedings in response to objections of the Board raised then for the first time, namely that the features "terminal means (12) having coil tabs (58, 60) projecting from said outer surface of said pump body insertable into receptables of said control unit" present in claim 1 of the main request, and in claim 1 of the first and second auxiliary requests filed on 18 August 2008 and "with a frame on the top of the pump body" present in claim 1 of said first and second auxiliary requests represented intermediate generalizations for which no basis can be found in the application as filed, thus contravening the requirements of Article 123(2) EPC. Said features were amended (amendments underlined) to read "terminal means (12) having a pair of coil tabs (58) provided on the opposite sides of the bolt hole 56 and a grounding tab (60), said tabs projecting from said outer surface of said pump body insertable into receptables provided in said control unit" and "with a synthetic resin frame (32) of the pump body on the top of the pump body", respectively. The auxiliary request replaced the first and second auxiliary requests filed on 18 August 2008. Since, moreover, the amended features were taken almost verbatim from the description of the application as filed, the Board - in exercising its discretion to accept amended claims at any stage of the appeal proceedings - admitted the auxiliary request.

It may be noted that claim 1 of the second auxiliary request filed on 18 August 2008 is based on claim 1 filed as "Hilfsantrag 3" on 3 March 2004 before the Opposition Division, which request was reintroduced into the appeal proceedings as (then) second auxiliary request with a letter filed on 13 April 2006. In point 7 of the communication annexed to the summons to attend oral proceedings the Board duly gave its provisional opinion on claim 1 of the (then) first and second auxiliary requests which no longer contained the limitation "said region is closed". It may further be noted that claim 1 of the second auxiliary request filed on 18 August 2008, which claim no longer contained the contentious feature "said region is closed" but instead contained the additional feature "said mounting means comprising ... formed in the mounting base (48)" (cf. point V above), was filed in response to said communication, wherein the Board expressed its provisional opinion that claim 1 of the main request seemed to extend beyond the content of the application as filed (Article 123(2) EPC). The additional feature mentioned above was also taken almost verbatim from the description of the application as filed. In exercising its discretion the Board thus allowed the respondent to take claim 1 of the second auxiliary request filed on 18 August 2008 as a basis for formulating a new auxiliary request.

3. Exception to the principle of reformatio in peius

3.1 Claim 1 of the auxiliary request differs from claim 1 of the request on the basis of which the Opposition Division intended to maintain the patent (main request) inter alia in that the limitation "said region is closed" has been deleted, which deletion extends the scope of protection afforded by the claim (but not beyond the boundaries of Article 123(3) EPC). The fact that the Board found that the expression "said region is closed" is not clear (see point 1 above) does not imply that this expression is devoid of technical meaning. It may be noted that deleting the expression "a region of" from the phrase "mounting ... on a region of the outer surface of said pump body" does not change the scope of protection with respect to claim 1 of the main request.

The auxiliary request of the respondent, if held allowable, thus puts the appellant in a worse situation in this respect than if he had not appealed (prohibition of reformatio in peius), see the decision of the Enlarged Board of Appeal G 9/92 (Non-appealing party / BMW, OJ EPO 1994, 875), point 2 of the Order. It is irrelevant in this respect that additional features have been added to claim 1 of the auxiliary request with respect to claim 1 of the main request (see point V above), which limit the scope of protection.

In decision G 1/99 (Reformatio in peius / 3M, OJ EPO 2001, 381) the Enlarged Board of Appeal however allowed an exception to this principle (see Order): In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision.

The Enlarged Board of Appeal laid down a strict order of possible amendments that a patent proprietor was allowed to file in order to overcome the deficiency.

The Board is satisfied that in the present case it is not possible, while maintaining the expression "said region is closed", to introduce one or more originally disclosed features which would limit, or extend - within the limits of Article 123(3) EPC - the scope of the patent as maintained such that the resulting claim meets the requirements of Articles 84 and 123(2) EPC.

It follows that the final remedy suggested by the Enlarged Board of Appeal, namely to delete the inadmissible amendment, but within the limits of Article 123(3) EPC, is allowable.

It may be noted that whilst the additional feature "said mounting means comprising ... formed in the mounting base (48)" in claim 1 of the auxiliary request can be formally said to "replace" the feature ", said region is closed" of claim 1 of the main request (cf. point V above), the situation is that the feature "said region is closed" has been deleted and that, independently thereof, other features have been added. Said additional feature can therefore not be regarded as a kind of compensation for deleting the limitation "said region is closed".

3.2 The appellant argued that decision G 1/99 (loc. cit) was not applicable in the present case, while the non-appealing patent proprietor in the case that led to the referral was not adversely affected by the decision of the opposition division and did not have the possibility to file an appeal, whereas in the present case the respondent did have that possibility, and could have appealed.

This argument cannot be accepted for the following reasons. The question referred to the Enlarged Board of Appeal in case G 1/99 (loc. cit) was "Must an amended claim which would put the opponent and sole appellant in a worse situation than if he had not appealed - e.g. by deleting a limiting feature of the claim - be rejected?". There is nothing in said question, nor in the Reasons or Order of G 1/99 (loc. cit), from which it can be construed that a distinction must be made between the case where the non-appealing patent proprietor was not adversely affected by the decision of the opposition division, and the case where the non-appealing patent proprietor was. Secondly, it would not be equitable, if an exception to the principle of reformatio in peius in circumstances where the patent as maintained in amended form would otherwise had to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division, was denied to a non-appealing patent proprietor who could have appealed but decided not to do so. If such a distinction were made, a patent proprietor, whose patent was maintained in amended form by the Opposition Division on the basis of a lower ranking request than the main request, would be forced to file a pre-emptive appeal against said decision just in case the opponent might appeal and the Board in the ensuing appeal proceedings were to find an amendment held allowable by the Opposition Division to be inadmissible. Moreover, such a course of action would be problematic if the patent proprietor should not be interested in defending its patent on the basis of a higher ranking request than that held allowable by the Opposition Division: if the request held allowable by the Opposition Division were to be the main request in the appeal proceedings, arguably the patent proprietor would not be adversely affected by the decision of the Opposition Division, and the appeal might be found to be inadmissible (cf. Article 107 and Rule 101 EPC).

The appellant further argued that the Enlarged Board of Appeal had stated (see decision G 1/99, loc. cit, Reasons point 12, last sentence): "However, in particular if the patent cannot be maintained for reasons which were not raised at the first instance, the non-appealing proprietor deserves protection for reasons of equity" (emphasis added). In the present case however, objections to the contentious feature "said region is closed" had already been raised during the opposition proceedings. Since the respondent had refrained from filing an appeal as a security measure, and had filed claims not containing the feature "said region is closed" at a late stage in the appeal proceedings, it was no longer equitable to make an exception to the principle of reformatio in peius and to put the appellant in a worse situation than if it had not appealed.

However, these arguments cannot be accepted for substantially the same reasons as given above. The order of decision G 1/99 (loc. cit) allows the non-appealing patent proprietor to file requests in order to overcome a fatal deficiency in circumstances as specified in that decision, irrespective of whether the amendment held allowable by the Opposition Division was objected to by the opponent(s) at first instance or not. Since the Board has admitted the auxiliary request into the appeal proceedings for the reasons given in point 2 above, and thus implicitly rejected the appellant's argument that the auxiliary request, in particular the deletion of the limitation "said region is closed", was late-filed, there is no scope for the Board to deny the respondent the possibility to file amendments as foreseen in decision G 1/99 (loc. cit), which decision pays due regard to the principle of equity (see point 13 of the Reasons).

4. Admissibility of the amendments, Articles 84 and 123(2) EPC

Claim 1 of the auxiliary request differs from claim 1 as granted - apart from the deletion of reference numerals present in the embodiment shown in Figures 3 and 4 which no longer falls under the scope of the claimed invention - in that the following features have been added:

(i) said stroke adjustment assembly (18) being disposed on said side of said pump body independent of said control unit (14);

(ii) said mounting means comprising an engagement recess (50) in the control unit and a rectangular mounting base (48) formed by molding together with a synthetic resin frame (32) of the pump body on the top of the pump body, said engagement recess (50) of the control unit is fitted on the rectangular mounting base (48) for mounting the control unit (14) on the pump body, whereby the mounting is completed by inserting a mounting bolt (52) as securing means through a bolt insertion hole (54) with the mounting base (48) held engaged and screwing the bolt (52) into a bolt reception hole (56) formed in the mounting base (48)

(iii) [terminal means (12)] having a pair of coil tabs (58) provided on the opposite sides of the bolt hole 56 and a grounding tab (60), said tabs projecting from said outer surface of said pump body insertable into receptables provided in said control unit.

Feature (i) provides for the control unit 14 and the stroke adjustment assembly 18 to be mounted and dismounted one at a time. A basis for this feature is the passage in column 3, lines 7 to 33, and Figure 1 of the application as filed (published version).

Feature (ii) is disclosed in column 4, lines 53 and 54, in column 6, lines 18 to 28, and in Figure 2 of the application as filed (published version).

Feature (iii) is disclosed in column 3, lines 28 and 29, in column 6, lines 29 to 32, and in Figure 2 of the application as filed (published version).

Claim 1 of the auxiliary request therefore meets the requirements of Article 123(2) EPC. Since no features of claim 1 as granted have been deleted, the requirements of Article 123(3) EPC are also met. In the judgement of the Board, the amendments to the description and to the dependent claims 2 and 3 also meet the requirements of Article 123(2) EPC. Since this was not disputed by the appellant, there is no need for further substantiation.

The wording of the feature "a rectangular mounting base (48) formed by molding together with a synthetic resin frame (32) of the pump body on the top of the pump body" provides for a mounting base to be formed on the top of the pump body by molding, and thus this is, or becomes, part of the pump body. This forming process encompasses, in the opinion of the Board, both the case that the mounting base and the pump body are molded in one piece, and the case that the mounting base is molded in situ onto the pump body. An unclarity or ambiguity in the expression "formed by molding together with" cannot be discerned. Claim 1 of the auxiliary request therefore meets also the requirements of Article 84 EPC.

5. Objection of lack of inventive step, Article 56 EPC

The prior use of the electromagnetically operated fixed displacement pump "ProMinent gamma/5" represents the closest state of the art (see documents D2, D5 and D6). The pump "ProMinent gamma/5" is equipped with a replaceable unit for both adjusting the stroke length and controlling the stroke number (combined in a single unit as shown in document D5, where it is denoted as "Haube"), whereby various of such units are provided for various pump specifications (cf. document D6 - "Ersatzteilliste"). The pump body of "ProMinent gamma/5" and its replaceable control units thus form a modular system.

The subject-matter of claim 1 of the auxiliary request differs from the pump "ProMinent gamma/5" in the features (i) to (iii) reiterated in point 4 above.

In the pump according to claim 1 of the auxiliary request the control unit 14 with the stroke number control means can be replaced independently of the stroke adjustment assembly 18, cf. feature (i), thus providing a greater modularity than the pump "ProMinent gamma/5", where only the combined unit is replaceable.

The appellant has argued that documents D20 and D21, which are cited in column 1, line 12 to column 2, line 25 and in column 4, lines 48 to 51, of the patent in suit, disclosed that the control unit for stroke number control and the stroke adjustment assembly could be combined in one single unit (cover or wall 3, see document D20, column 4, lines 53 to 58, column 6, line 65 to column 7, line 6, column 7, lines 21 to 25, and Figure 1), or in two separate units (see document D21, column 3, lines 1 to 3 and 20 to 24, and Figure 1).

However, neither of documents D20 and D21 discloses a modular pump system. In the judgement of the Board the person skilled in the art, starting from the pump "ProMinent gamma/5" had no incentive on the basis of his or her technical knowledge, or on the basis of documents D20 and D21, to replace the single unit ("Haube") by two separate units.

Features (ii) and (iii) concern a specific, detailed embodiment of a control unit 14 with the stroke number control means and the way it is mounted on the pump body. None of the documents cited by the appellant suggests or hints at this specific solution of mounting a replaceable control unit 14 on a pump body by a single mounting bolt, whereby an engagement recess of the control unit and a rectangular mounting base formed on the pump body together provide a form-fit mounting.

It follows from the above that the person skilled in the art, starting from the electromagnetically operated fixed displacement pump "ProMinent gamma/5", would not have arrived at the subject-matter of claim 1 of the auxiliary request in an obvious manner.

Consequently, the subject-matter of claim 1 of the auxiliary request involves an inventive step.

The subject-matter of claims 2 and 3 which are appendant to claim 1 similarly involve an inventive step.