T 0383/05 01-08-2007

I. This is an appeal of the proprietor against the decision of the opposition division to revoke European patent No. 1 080 479.

II. The following documents of the state of the art have been considered, among others, during the appeal proceedings:

D1: WO-A-96/36982, and

D2: DE-A-32 24 165.

III. All the parties to the appeal had filed auxiliary requests for oral proceedings and, on 4 May 2007, the Board issued summons to attend oral proceedings on 1 August 2007, with an annexed communication.

With a fax received on 24 July 2007, the appellant (proprietor of the patent in suit) withdrew his request for oral proceedings. As a reaction to that fax, the Board issued a communication stating that the Board felt it could reach a decision on all issues of the case without further discussion with the parties and asking whether the parties would be present at the oral proceedings. The opponents replied that they would be present. With a fax of 27 July 2007, the appellant proprietor confirmed that he would not be present at the oral proceedings.

IV. The oral proceedings before the Board took place on 1 August 2007. As announced before hand, the appellant did not attend.

The appellant had requested in writing that the decision under appeal be set aside and that the patent be maintained unamended (main request), or that the patent be maintained in amended form in accordance with the first or the second auxiliary request filed with the statement setting out the grounds of appeal dated 23 May 2005.

The opponent 01 (Siemens AG) requested that the appeal be dismissed.

The opponent 02 (Alstom) requested that the appeal be rejected as inadmissible or, auxiliarily, that the appeal be dismissed. Furthermore, he requested apportionment of costs under Article 104 EPC to the effect that the proprietor reimburses the costs for the whole appeal proceedings or, auxiliarily, only for the oral proceedings before the Board.

V. Claim 1 of the patent in suit as granted (main request of the appellant) reads as follows:

" An actuation and control device for opening and/or closing electric switching means having at least one fixed contact and at least one movable contact (103), comprising actuating means which are operatively connected to the movable contact (103) and supply the energy to perform opening/closing, characterized in that said actuating means comprise a position control motor (101) which is operatively connected to the movable contact (103), and a power and control electronic unit (100) which drives said motor (101) so that the movable contact (103) achieves a defined rule of motion."

Claims 2 to 12 are dependent on claim 1.

VI. Claim 1 of the first auxiliary request of the appellant differs from claim 1 of the main request in that the following is added at the end of the claim:

", said position control motor (101) having a position sensor thereon".

VII. Claim 1 of the second auxiliary request of the appellant differs from claim 1 of the main request in that the following is added at the end of the claim:

", said position control motor (101) being a rotary servomotor".

VIII. The written arguments of the appellant can be summarized as follows:

The opposition division had considered that the subject matter of claim 1 as granted was not new in view of the prior art disclosed in document D1. In particular, the opposition division regarded the voice coil of D1 as a motor, i.e. a device transforming an arbitrary form of energy into mechanical energy. However, claim 1 as granted recited an actuation and control device with a position control motor, i.e. a motor with intrinsic control of the position. D1 disclosed a device for a switchgear actuator based on a voice coil. Even assuming that a voice coil was a motor, the actuator of D1 was not a position control motor because the voice coil was controlled indirectly through a control loop based on information (from a feedback device 14) about the position of the operating rod 6 connecting one of the contacts of the current interrupter 4 to the voice coil actuator 8. Thus, in D1, there was no position control on the voice coil in itself, which therefore was not a position control motor. Consequently, the subject-matter of granted claim 1 was new in the sense of Article 54 EPC. In D1, the input from the feedback device 14 regarding the position of the operating rod 6 was sent to the control mechanism 12, which controlled the voice coil actuator 8. Thus, the voice coil actuator 8, i.e. the "motor", of D1 did not have a position sensor thereon so that the subject-matter of claim 1 of the first auxiliary request was new. A voice coil was a linear actuator with a fixed magnetic structure and a lightweight movable coil which, when energized, experienced a force perpendicular to the field generated by the magnetic structure and coil wire. Therefore, a voice coil actuator was not, and could not be, a rotary servomotor as specified in claim 1 of the second auxiliary request. In addition, a voice coil actuator was not a position control motor. Thus, the subject-matter of claim 1 of the second auxiliary request was new.

The appellant had received on 10 July 2007 the reasons of the decision of Board 3.5.02 in companion appeal case T 916/05, which in particular discussed the documents D1 and D2. Having considered the reasons given in case T 916/05, the appellant had reached the conclusion that it would not be expedient to re-discuss the same issues before the same Board and had withdrawn its request for oral proceedings. Therefore, this withdrawal was not an abuse of procedure.

IX. The arguments of the respondent opponent 01 (Siemens AG) that are relevant to the present decision can be summarized as follows:

Document D1 disclosed an actuation and control device for opening and/or closing electric switching means with a fixed contact 72 and a movable contact 71. An operating rod 6 connected the movable contact 71 to an actuator comprising a voice coil 8 controlled by a mechanism 12 which provided the current to the voice coil winding. The mechanism 12 was coupled to a position sensor 14 as a feedback device that provided input regarding the position of the operating rod 6. D1 suggested to implement mechanism 12 by means of a programmable logic controller and to use PWM for controlling the current applied to the voice coil and thereby the velocity of the movable contact. A particular motion profile was programmed in a memory of the controller of D1, so that the movable contact achieved a defined rule of motion. Since the voice coil actuator of D1 was controlled in accordance with the position of the movable contact 71, which was detected by sensor 14, the actuator of D1 had to be regarded as a "position control motor". Furthermore, the sensor 14 was placed on the voice coil. Thus, the subject-matter of claim 1 lacked novelty with respect to the prior art disclosed in D1, both in the version of the granted patent and in the version of the first auxiliary request. Document D2 disclosed switching means of the type specified in claim 1 of the patent in suit, in which the movable contact 13 was displaced by a rotating motor, in particular a squirrel cage motor shown in Figure 1, controlled by a control unit 27. The movement of contact 13 was detected by sensors 32, 33. Thus, contact 13 moved according to a predetermined motion between two positions and the subject-matter of claim 1 according to any of the requests lacked novelty in view of D2. Furthermore, in addition to rotary actuators, D2 also disclosed linear actuators for moving the movable contact. D1 indicated at page 2, lines 10 to 13 that the object of the invention described therein was to provide a switchgear actuator mechanism capable of a range of motion profiles, thereby eliminating the need for many types of mechanical systems. D2 concerned a similar problem as appeared from page 5, last paragraph, of that document. It was therefore apparent to the skilled person that a rotating servo-motor was an obvious alternative to a linear actuator such as the voice coil actuator described in D1. Thus, the subject-matter of claim 1 of the second auxiliary request did not involve an inventive step.

X. The arguments of the respondent opponent 02 (Alstom) that are relevant to the present decision can be summarized as follows:

The appeal referred to a motor with intrinsic control of the position, which was not a feature of any claim of the patent in suit. This alleged distinction, which was obscure, had no linguistic or technical basis and was inconsistent with paragraph [0020] and Figure 3 of the patent in suit. The appellant submitted this argument only to give an appearance of substance to the appeal. However, the appeal was in fact not substantiated. Therefore, the appeal did not meet the requirements of Article 108 EPC and had to be rejected as inadmissible.

The auxiliary requests submitted by the appellant with the statement of grounds of appeal had been filed late, as appeared in particular from decision G 9/91, which stated that the "purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits". The appeal procedure was not a new opposition procedure. In the present case, in view of the annex accompanying the summons to oral proceedings before the opposition division, the proprietor could expect that the division would decide to revoke the patent. However, the proprietor did not file any auxiliary request within the term set out in the annex to that summons and of its own volition had renounced the possibility of presenting further arguments. It was therefore clear that the present auxiliary requests were late. It was apparent that the present requests of the appellant did not meet the requirements of the EPC. In particular, the opponent had already pointed out in the notice of opposition and in the letter dated 28 October 2004 that the subject-matter of claim 1 of the first and second auxiliary requests (which corresponded to claim 4 and 6 as granted respectively) lacked novelty or did not involve an inventive step. Thus, the auxiliary requests did not constitute a bona fide attempt to remove the objections that had lead to the decision of the opposition division. They had been filed simply to delay the decision in the present case. This delaying tactic should be sanctioned by the Board and the auxiliary requests should not be admitted in the proceedings.

Opponent 02 agreed with opponent 01 as regarded documents D1 and D2. Furthermore, there were other documents in the proceedings that destroyed the novelty or showed lack of inventive step of the subject-matter of claim 1 in accordance with any requests of the appellant.

As regarded the apportionment of costs, opponent 02 submitted that the chronology of the present case clearly showed that the patent proprietor attempted to delay the final decision about the opposition. The arguments "provided" in the statement of grounds of appeal should have been provided for the oral proceedings before the first instance. Both before the first instance and before the Board of appeal, the patent proprietor had decided not to attend the oral proceedings. This delaying tactic generated little costs to the proprietor. However, the preparation of the oral proceedings had caused costs to the opponent and transport expenses had arisen. The late cancellation of the oral proceedings before the first instance (four days before the scheduled date, two of which falling on a week-end), the late indication that the proprietor would not attend the oral proceedings before the Board (seven days before the scheduled date), contesting the decision of the first instance by "arguments" that amounted to two lines of writing, presenting late auxiliary requests, all this constituted an abuse of procedure that justified an apportionment of costs under Article 104 EPC for the appeal procedure, at least for the oral proceedings of 1 August 2007.