T 1490/07 25-06-2009

1. Admissibility of late filed document

Document D4 was filed for the first time by the appellant with the grounds of appeal.

Document D4 relates to a staple for reinforcing connections between composite elements, as stated at page 2, lines 11 to 16. This is the same object as that of the patent in suit, which refers in paragraph [0013] to "a reinforcing member which can be used for securing two or more reinforced components together". This function is illustrated in Figure 11 of document D4 and Figure 6 of the patent in suit.

The question of whether or not the staple has the function of a reinforcing element depends upon the relative stiffness and strength of the staple as compared with the workpieces. Since the claim is directed to a reinforcing member per se and the nature of the at least one workpiece is not specified, the staple must be regarded as being capable of reinforcing at least some workpieces.

There is no evidence to indicate that the person skilled in the art would be unable to produce a staple which would have the function of reinforcing at least one workpiece following the teaching of document D4. In particular, whilst document D4 teaches that the strip of staples 46 should be machined so as to attain its final form (see page 6, lines 24 to 34), there is nothing to indicate that this cannot be carried out, or that a staple cannot be separated from the strip of staples, without resulting in fibres protruding from the pins of the staple. It is further not established that, even if such protruding fibres were present, this would inevitably lead to the staple weakening, as opposed to reinforcing, any workpiece with which it was used.

The staple disclosed in document D4 can thus be regarded as constituting a reinforcing member comprising a connecting member and a plurality of pins (22) formed integrally therewith, manufactured in the manner described in document D4 with reference to Figures 4A to 10. The connecting member and each of the pins is formed of a hardened fiber reinforcing thread (40) which is sufficiently stiff to allow the free ends of the pins to be driven into the work piece, in the manner illustrated in Figure 3.

The decision of the opposition division in connection with the issue of inventive step was based on documents D1 to D3. These documents are significantly less relevant than document D4, since they relate either to the use of individual pins (document D1) or to the use of stitching (documents D2 and D3).

The disclosure of document D4 is thus regarded as being prima facie relevant.

In the decision under appeal, the opposition division gives as part of the grounds for finding that the subject-matter of claim 1 involves an inventive step, their reasoning as to why forming a staple from fibre reinforced plastic as opposed to metal involves an inventive step. Document D4 was filed by the appellant with the grounds of appeal in response to this argument (see below).

The Board therefore considers it appropriate to exercise their discretion in accordance with Article 114(1) EPC to admit document D4 into the proceedings.

2. Remittal to the department of first instance

The introduction of document D4 into the proceedings gives rise to a fundamental change in the factual framework of the case, giving rise to a new line of argument in connection with the issue of inventive step, document D4 playing a decisive role in this argument.

Whilst it is accepted that remittal to the department of first instance conflicts with the desirability for procedural economy, the Board is of the opinion that this consideration is outweighed by the need for fairness vis-à-vis the respondent. Similarly, the fact that document D4 is not a complex document does not change the fact that the introduction of this document results in a fundamental change in the factual framework of the case.

It is accordingly considered appropriate for the Board to exercise its discretion in accordance with Article 111(1) EPC and remit the case to the Opposition Division, so that the respondent is not deprived of the possibility of having the new line of argument considered at two instances.

3. Apportionment of costs

In the decision under appeal, the opposition division gives as part of the grounds for finding that the subject-matter of claim 1 involves an inventive step, their reasoning as to why forming a staple from fibre reinforced plastic as opposed to metal involves an inventive step. However, the communication of 14 December 2006, attached to the invitation to oral proceedings gives no indication that this line of argument would be relevant to the decision. Accordingly, it can be accepted that it was necessary for the appellant to carry out a further search in order, if possible, to counter this argument.

Whilst arguments based on the general knowledge of the person skilled in the art, as opposed to the disclosure of documents D1 to D3, were only raised by the appellant at the oral proceedings before the opposition division, this cannot be regarded as being an abuse of procedure. It is to be expected that new aspects of an argument may arise during the course of a debate. In particular, the discussion of the prior art in paragraph [0007] of the patent in suit cannot be seen as providing a suggestion that it would be necessary to supply a document disclosing a thermoplastic staple. The sentence at column 2, lines 11 to 18 is concerned with individual pins.

It is noted that, contrary to the situation in T 416/87 (OJ 1990, 415), the appellant does not rely exclusively on documents only introduced in the appeal proceedings. The actions of the appellant are not regarded as constituting an abuse of procedure.

There are thus no reasons of equity which would make it appropriate to order a different apportionment of costs, and each party should bear the costs it has occurred in accordance with Article 104(1) EPC.