T 0782/08 28-07-2010

1. Main Request - Inventive Step

1.1 The respondent objected to the introduction of D3 on the basis that it was not prima facie relevant and should therefore not have been admitted into opposition proceedings by the opposition division due to its late filing, particularly since the subject of the opposition proceedings had not changed.

1.1.1 The Board however notes that in the decision under appeal, the opposition division gives a reasoned statement as to why it exercised its discretion as it did, not least referring to particular pages of D3 which it found to be relevant. The respondent's argument that it does not consider D3 to be prima facie relevant is thus beside the point, since no error in the use of its discretion can be seen to have been made by the opposition division, and since the respondent made no arguments as to why the limits of the discretion afforded to the opposition division had not been observed, the Board finds that its discretion was used correctly (see also G 7/93 item 2.6).

Further, as is evident from the following, D3 is indeed highly relevant to the question of inventive step.

1.2 Both parties agreed that, when starting from D2 as the closest prior art, the features of the characterizing portion of claim 1 were the only novel features. The Board finds no reason to disagree with this, the preamble features being disclosed in e.g. Figs. 2, 17 and 19 and the description col. 3, lines 26 to 45, col. 4, lines 1 to 11, col. 5, line 64 to col. 6, line 46 to col. 7, line 28, and col. 10, line 23 to col. 11, line 15.

1.3 D2 also discloses (see in particular Figures 17 and 19 and the description in column 7, lines 17 to 28 and col. 10, lines 45) that layers of longitudinally running fibres (i.e. fibres running at 0º to the length of the sheet) termed stationary threads 15 are added to the other plies, both between plies and on top of the set of plies, and whereby the stationary threads are also in a parallel relationship and held between other plies in said parallel relationship. Starting from D2, the problem to be solved by the subject matter of claim 1 is to further ensure the stability of such 0º fibres, e.g. in situations where forces tending to disturb the parallel relationship occur, such as when the plies approach the knitting station.

1.4 Faced with this problem, a skilled person would find D3, because not only is this concerned with fibre composites in which fibre-constituted plies are used, but section 2.4.2 concerns quasi-unidirectional weaves which are plies in which the threads (fibres) essentially run in one direction, whereby weaker, thinner weft threads are added to ensure only the holding together of the assembly in particular with regard to keeping the warp fibres parallel ("destiné à assurer uniquement la tenue de l'ensemble - parallélisme des fils en particulier - ...").

1.5 Since D3 teaches the use of such weaves, generally in fibre composites, and specifically notes the maintenance of the parallel orientation of the fibres in a ply, the skilled person attempting to solve the objective problem would combine this teaching with that of D2 and replace the stationary thread (15) plies in D2 with the pre-prepared quasi-unidirectional weaves of D3, without using inventive skill.

1.6 Nevertheless, when combining the teaching of D3 with D2, the skilled person is however presented with a solution in which the top ply in D2 would also be replaced by a pre-stabilised ply from D3, whereas according to the last feature of claim 1 (referred to by the parties as "feature h2") each 0º ply is "located in the sheet other than on the upper surface thereof".

1.7 The Board however finds, in accordance with the arguments put forward by the appellant, that this feature h2 is devoid of any technical significance in the process of claim 1 and is thus a feature of claim 1 which must be ignored when considering inventive step.

1.7.1 The description in the patent gives no information as to how the exclusion of a 0º ply on the top in the process of claim 1 should have any technical effect. On the contrary, paragraph [0031] merely states that claim 1 does not specifically limit the 0º ply to a position on the upper surface.

It is also to be noted that no portions of the patent were cited by the respondent in regard to the existence of a technical effect of feature h2.

1.7.2 The respondent instead argued that in the resulting multi-ply product, the positioning of a 0º ply on the upper surface of the sheet may have various effects on the product performance when in use. However, this does not imply any technical effect for the process of claim 1, even if the product is affected as alleged.

Anyway, the presence of a 0º ply on the lower surface of the sheet during manufacture is within the scope of claim 1, whereby the product produced by a process using a 0º upper ply would be the same as a product which was produced instead with a 0º lower ply, merely by turning the product upside down.

1.7.3 The respondent also argued that this feature allowed the process to be carried out with full freedom as to where the 0º ply or plies were placed. However, the mere "possibility" of being able to place the 0º ply or plies at different locations does not limit the claim in any way compared to the disclosure of D2 and this matter is not anyway, in the Board's view, concerned with feature h2, which merely limits rather than expands the possibilities of where to place a 0º ply. Whilst other prior art cited in the patent disclosed that the 0º ply was necessarily uppermost in the process, this is not the case with D2.

1.7.4 A still further argument of the respondent was that the number of 0º fibres in the product was of prime importance and that only a certain number of 0º plies could be included in the sheet, dependent on the total ply number, whereby the positioning of the plies did have technical importance. In as far as this argument can be understood, this however only implies that the product itself may have a certain advantage, but is devoid of any technical effect when considering the process as defined in claim 1.

1.7.5 Thus, no argument was made by the respondent, and no information can be found by the Board itself, which demonstrates that feature h2 is of any technical significance to the subject matter of claim 1. Thus, feature h2, whilst not taught by the combination of D2 with D3, does not alter the Board's conclusion on inventive step as feature h2 can only be regarded as an arbitrary feature. Thus, a skilled person can choose to include it or not without the exercise of inventive skill when producing a sheet according to D2 with the layers known from D3.

1.8 The respondent also argued that D3 would not be considered by a skilled person involved with a warp knitting process of claim 1 and of D2, because D3 was merely a general text and had no relation to warp knitting. However the Board finds this argument unconvincing, since whilst D3 makes no reference to warp knitting, it is concerned with fibre composites and strengthening layers therefor. Moreover, a skilled person in the art of warp knitting, being aware of the problem to be solved, is aware of general ply structures and is further taught by D3 specifically the purpose of the stabilisation threads in quasi-unidirectional layers in section 2.4.2 as having the specific property desired, i.e. maintaining parallelism.

1.9 The subject matter of claim 1 therefore lacks an inventive step and the requirement of Article 56 EPC 1973 is not fulfilled.

The main request is consequently not allowable.

2. Admittance of auxiliary requests into proceedings

Although all auxiliary requests were filed during the oral proceedings at a very late stage thereof, the Board exercised its discretion under Article 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA) and admitted the requests into proceedings, because the requests were a reaction to inventive step arguments of the appellant relying on a line of attack which had not been apparent in the written submissions. Also, of the three independent claims in the patent as granted, only one was pursued by way of the auxiliary requests; at least for this reason an economy of procedure was also assured.

3. First auxiliary request

3.1 The features "selected locations" and "slight amount" introduced by way of this request are unclear, contrary to Article 84 EPC 1973.

3.1.1 "Selected locations" have not been defined in any sense whatsoever, since there is no criteria for identifying when a location has been selected or when not, nor which locations can be regarded as selected. It may be correct that this terminology would be understood to exclude a total coverage of the plies by resin, but a skilled person is not able to identify when a location can be regarded as being a selected location in the process of claim 1.

The respondent argued that "selected locations" did not involve a "selection" at all, but merely referred to individual locations rather than total coverage, at some points between the adjacent fibres, rather than along their entire length. However, the wording of claim 1 itself does not unambiguously state this, in particular because it defines "contacting each 0º ply at selected locations" (emphasis added) with resin, rather than defining any individual locations between the fibres in a ply, at which resin is to be added. In this regard, the respondent argued that the wording of the claim referred to the connections between fibres, and not a connection between plies, and referred to paragraphs [0062] and [0063] as support for this argument. However, also on this point, the Board finds the respondent's arguments unconvincing. In paragraph [0062] it is stated that the amount of resin which is supplied at selected locations "is only sufficient to merely hold the individual fibers and plies in a parallel array"; it is not stated that only the individual fibres are held in a parallel array either in or within a ply by such resin application. Thus, whilst the applicant may have had the intention of defining the use of resin at random locations between fibres, as also argued by the respondent, this is not what is stated in the description, nor what is defined in the claim.

This latter aspect also makes the claim unclear for the further reason that the slight amount of resin which is applied by contacting each 0º ply at selected locations therewith is not unambiguously associated with an off-the-belt process as defined in the claim "to fix the fibres of the ply so that the fibres are stabilised", but appears also to concern also a latter process in which the plies themselves are held together. The requirements of Article 123(2) EPC would also not be met in this regard, since it is not unambiguously disclosed that such a process would occur in the off-the-belt location.

3.1.2 The expression "slight amount" is also not clear, contrary to Article 84 EPC 1973. What the skilled person may in one situation regard as a "slight" amount, may in another situation be regarded as a large amount. No limits are defined which can be seen as restricting the boundaries of this terminology.

The respondent argued that a slight amount was clear when seen in the correct context of paragraphs [0062] and [0063] and through the eyes of a skilled person who would understand this sufficiently clearly, not least in light of the fact that the claim should not be unduly limited to any particular amounts due to the fact that the fibre type and size and resin type may all vary. The Board however finds this argument unconvincing, since the claims must be clear themselves and the description of the intended purpose of the slight amount in the description was itself not clear anyway, since it referred to an example which might "usually" be used where 2% to 6% resin by weight of fibre was applicable, without however stating any conditions which made such a selection suitable. Moreover, even in as far as the description might be interpreted to mean that the resin merely formed the connection at isolated locations between adjacent fibres, this was described as being "only sufficient to merely hold the individual fibers ... in a parallel array", whereby the terminology "merely hold" itself is entirely unspecific, since the conditions under which the determination of whether adjacent fibres are considered to be "held" depends entirely on a set of unknown forces acting on the fibres and plies and other operating conditions in the process.

3.2 Since the requirement of clarity in accordance with Article 84 EPC 1973 is not fulfilled by claim 1, the first auxiliary request is not allowable.

4. Second and third auxiliary requests

4.1 Claim 1 of each of these requests is the same. Each includes the additional definition that the slight amount of curable resin should be "only sufficient to merely hold the individual fibers and plies in a parallel array". As stated above in regard to the first auxiliary request however, the definition according to which the fibres are "merely" held together, let alone if additionally the plies should also be merely held together (as defined in claim 1), does not overcome the existing lack of clarity because it is not stated anywhere, nor known generally to a skilled person, what can be regarded as being "merely held". The objections made against the first auxiliary request thus apply equally.

4.2 The additional amendment made in claim 1, according to which the wording "in the sheet other than on the upper surface thereof" is replaced by "intermediate an upper ply and a lower ply of said sheet", does not alter the aforegoing conclusions reached on the clarity of claim 1, as it relates to a different aspect of the claim.

4.3 Claim 1 of each of the second and third auxiliary requests thus fails to meet the requirements of Article 84 EPC 1973 and these requests are therefore not allowable.

5. Fourth auxiliary request

5.1 The additional wording "the amount being between 2% to 6% by weight of fiber," added to claim 1 to further specify the amount of resin used, does not overcome the foregoing objections. The feature "selected locations" at which the resin is applied is still unclear in the claim as this is not overcome by specifying the weight range of resin. Further, whilst a range of weight values for the resin has been defined, the amount to be used within this range must still be selected in a way such that the fibres (and indeed the plies, according to claim 1) are considered to be "merely held" together, whereby the skilled person has no guidance to know when this process feature has been achieved, primarily because no limits are given to the term "merely".

5.2 The argument that a skilled person would, given the applicable weight range as now defined, be able to easily arrive at something which fell within the claim, is rather an argument towards sufficiency of disclosure rather than clarity. In terms of clarity, the skilled person, even when working within the weight range of resin now defined (i.e. 2% to 6%) would still need to understand what is meant by the terminology "selected locations" and when something should be considered to be "merely held", since applying even a miniscule amount of resin would always have some holding effect, but whether this was an amount which could be regarded as being such as to "merely hold" the fibres in a parallel array or to have too strongly held the fibres together, is entirely unknown.

5.3 The requirement of Article 84 EPC 1973 is therefore also not fulfilled by claim 1 of the fourth auxiliary request, whereby the fourth auxiliary request is not allowable.

6. In the absence of any allowable requests, the Board must revoke the patent.