T 1179/08 29-10-2010

1. The appeals are admissible.

Main Request

2. The subject-matter of claim 1 according to the main request is not new with regard to document OPP 4 (Article 54(1) EPC 1973).

2.1 It is not disputed that document OPP 4 as such, comprising pages of the January 1999 magazine "Bike Workshop", belongs to the state of the art. It is also not disputed that the "Magura HS Gustav M" brake disc illustrated in the bottom right picture on page 174 possess features M1 to M6 according to claim 1. What is in dispute is whether features M7 to M9 are also disclosed in that illustration.

In support of its arguments with respect to features M7 to M9 the opponent has filed document OPP 5, which is an enlargement of the picture in question and in which construction lines showing in particular the mounting circle (MC), the inner arm connecting circle (IAC), the effective circle (EC) and a straight phantom line (p) have been introduced. Again it is not in dispute as such that the geometry defined by these construction lines complies with the relevant requirements of claim 1 in this respect, in particular that the radius of the effective circle is greater than the radius of the mounting circle.

2.2 The patentee argues however that an enlargement as provided by the opponent with OPP 5 does not belong to the state of the art and therefore, it is not allowed to prove the existence of the features M7 to M9 with the help of this document. A skilled person would not use such an approach since it is in contradiction with the normal consideration of a magazine. Thus, the features M7 to M9 have to be regarded as not being disclosed in OPP 4.

2.3 The Board cannot agree. In its view the enlargement of an image is a common technique for better evaluating geometrical relationships which can be used legitimately if the same geometrical relationships exist in the enlargement as in the state of the art document.

2.4 Moreover, in the Board's view, it is not significant whether or not the photographic enlargement of an illustration coming from a magazine and adding construction lines to illustrate the existence of features in dispute is in accordance to the normal use of such a magazine by a typical reader.

With respect to novelty, it is also insignificant whether this typical reader is a non-expert consumer or a person skilled in the art.

The sole question is whether the features in discussion can be derived from a state in the art without undue burden or not. The Board can see no reason why the enlargement of the image in question in the present case so as to analyse its geometry with the help of construction lines should fall into the category of an undue burden.

2.5 The patentee further argued that feature M7 defines that for each connecting arm a straight phantom line intersects the connecting arm along the entire length. However in the relevant picture of OPP 4 only approximately two-third of the brake disc is shown. Since non-symmetric brake discs are known in the state of the art, it is not beyond doubt that in the non-shown part the connecting arms do not have another form than in the shown part. Since feature M7 relates to all connecting arms it cannot directly and unambiguously derived from document OPP 4.

2.6 Again the Board cannot agree. The part of the brake disc as shown in the bottom right photograph of page 174 gives no reasonable doubt about the design of the whole brake disc. A photograph in a catalogue is intended to inform a potential costumer about the relevant features of a product. Clearly the overall design of a brake disc is a relevant feature and it would certainly have been mentioned if the non-shown side of the disc were to exhibit features differing form those of the shown side.

Additionally, an asymmetric design of a brake disc in which a segment making up approximately one third of the disc is different form the other two thirds is not shown in the state of the art on file and has not been presented by the patentee to support this line of argumentation. Hence, the Board holds the opinion that the rotationally symmetric design of the brake disc in which each connecting arm has the same form is not only probable but beyond any reasonable doubt.

3. The first and second auxiliary requests as filed with the letter of 29 September 2010 are not admitted into the proceedings, Article 13(1) Rules of Procedure of the Boards of Appeal (RPBA, OJ EPO 2007, 536-547).

3.1 The patentee stated that these requests have only been filed one month before the oral proceedings since the argumentation with respect to the main request would have been weakened by presenting auxiliary requests at an earlier stage. These could have been interpreted by the Board and the opponent as putative fallback positions. It became clear however from the communication of the Board annexed to the summons that further auxiliary requests would be appropriate and they should therefore be seen as an allowable reaction to this communication.

3.2 According to the principles developed by the Enlarged Board of Appeal in relation to the inter partes appeal proceedings provided for in the EPC, the appeal primarily serves the parties' right to a review of the first instance decision. The purpose of the inter partes appeal procedure is mainly to give the losing party an opportunity to challenge the decision against it. Hence a patentee who has lost before the opposition division has the right to have the rejected requests reconsidered by the Board of Appeal or to file new requests with the statement of grounds of appeal or the reply. However, if the patentee wants further requests to be considered, the admission of these requests is a matter for the Board's discretion, cf. Case Law, 6th edition 2010, VII.E.16.2.1.

3.3 In the Board's view, tactical considerations of the patentee, namely not to weaken the argumentation with respect to a main request by presenting auxiliary requests at an early stage of the proceedings, do not fall under the provisions as established in the Case Law and as summarized under 3.2. On the contrary, such a course of action prejudices the efficient working of the Board and proper conduct of the appeal proceedings in general. Since it is impossible to consider these requests with the annex to the summons to oral proceedings, the parties' will not have been informed about the Board's opinion with regard to these requests. The sole request which has been filed with the submission of the statement of grounds of appeal was the main request which has been rejected by the opposition division. As a consequence the patentee should have been aware about possible fallback positions already at this stage of the proceedings.

3.4 The first and second auxiliary request in the present case contain - additionally to the features M1 to M9 as for the main request - inter alia feature M10 and features M10 and M11 respectively.

By withdrawing a first and second auxiliary request during the oral proceedings before the opposition division the patentee avoided a finding in the decision about the impact of theses features M10 and M11 - which had been present in the withdrawn requests at that time as well - with respect to novelty and inventive step, which could then have served as a basis for the following appeal procedure.

3.5 In particular, the opinion of the patentee that the further requests should be allowed as a reaction to the communication of the Board cannot be followed. Clearly, the issue of a communication by the Board cannot be seen as a blank ticket for a patentee to file new requests. Each case has to be considered on its merits, in particular to determine the extent to which there is a direct casual link between the filing of these requests and what is said in the communication. In the present case the patentee seems to be relying on point 1.3 of the communication, in which the Board identifies which features appear to distinguish the subject-matter of the claim upheld by the opposition division from the prior art, as being an open invitation for it to try its luck with a broader claim in which only one or two of these features appear. In particular, the patentee did not make clear in which manner the features M10 resp. M10 and M11 would have an impact for the evaluation of inventive step with respect to document D14 (cf. letter of 29 September 2010, 2.3.2 and 3.2.2) on which point 1.3 of the communication is based. It is in any case self-evident that no such invitation as imagined by the patentee can be read into what the Board says there, especially as this would run directly counter to the requirement that the Board act impartially.

4. Document D14 is admitted into the proceedings. This document is not late filed since its introduction is a direct reaction to the amendment of claim 1 during the oral proceedings in opposition proceedings. In particular, feature M2.2 - which does not come from a dependent claim as granted - has been introduced with the requests which have been submitted during oral proceedings, cf. minutes of the oral proceedings in opposition proceedings, page 1, last paragraph. As feature M2.2 defines the radius of the mounting circle MC, it has a direct impact on feature M9 and the specific geometry of the disc.

4.1 The patentee objected that document D14 is late filed for the reason that claim 1 of the main request - which has been amended during oral proceedings before the opposition division - has not been restricted by the added feature M2.2 but only clarified. The passage in the description indicating that a mounting circle "is determined by any circle that intersects the plurality of mounting holes" is obviously erroneous and identifiable as such for a skilled person (cf. the patent specification, paragraph [0009]). A skilled person would always presume that a mounting circle has to intersect the center of each mounting hole as indicated in the disclosed embodiment. Documents A to D, presented during the oral proceedings prove this general knowledge of a skilled person.

4.2 The Board holds the opinion that the patent specification is unambiguous about what is meant by the term mounting circle. Paragraph [0009] clearly states that a mounting circle is defined by any circle intersecting all mounting holes. There is no reason why a skilled person should assume that this definition might be false. The documents A to D do not mention the expression "mounting circle" or "Montagekreis" at all. Document A shows tire rims, having a bolt circle ("Lochkreis"); document B depicts a sprocket wheel with a bolt circle diameter ("Lochkreisdurchmesser"); document C discloses a "bolt circle mounting flange" for a hub and document D illustrates brake discs with a bolt circle and a bore circle ("Lochkreis", "Bohrkreis"). All these documents cannot confirm that a "mounting circle" is generally defined in the state of the art as a circle intersecting the respective centers of the mounting holes. On the contrary, in the state of the art which has been offered by the patentee no definition of a mounting circle has been found at all. Consequently a definition as made in the description of the patent is able to define a proper and specific interpretation of the term mounting circle for the context of the patent.

4.3 The second sentence of paragraph [0009] which explains that in the particular embodiment the mounting circle intersects the center of each mounting hole is not in contradiction with the first sentence since a concrete realisation is chosen from the manifold possibilities given by the general definition of the first sentence.

Furthermore, the Board cannot identify any further passage in the description which would give reason to assume that the definition of the first sentence of paragraph [0009] is erroneous.

5. The subject-matter of claim 1 according to the interlocutory decision (corresponding to the patentee's third auxiliary request) is inventive according to Article 56 EPC 1973.

5.1 As explained in paragraph [0002] of the description the thermal load of the disc due to the braking operation results in an uneven heating of the disc which comes from the fact that the part of the disc which is in contact with the pads heats more up than the rest. The uneven heating may cause the disc to warp.

According to paragraphs [0003] and [0004] of the description attempts have been made to solve this problem by adopting particular connecting arm geometries and configurations, but these proposals are not optimal from the point of view of stress distribution and rigidity.

Thus the problem the claimed invention sets out to solve is to relieve thermally induced stress in the disc without compromising rotational and lateral rigidity, see paragraph [0005] of the description. It goes without saying that the weight of the disc is also an important factor which has to be born in mind.

5.2 The Board shares the view of the opponent that document D14 constitutes the closest state of the art against which the inventive step of the claimed subject-matter has to be judged. In particular, the Board cannot accept the contention of the patentee that it being labelled an "ornamental design" precludes the shown brake disc from being a starting point to which the skilled person would make modifications so as to improve its technical performance. After all, what is shown in D14 is an object which on the one hand is intended to make a pleasing impression on the eye, but on the other hand has a clearly defined technical purpose.

5.3 A preliminary point which needs to be addressed with respect to the disclosure of D14 is the question of what is actually represented by the inner ring of five substantially equally spaced "triangular"-shaped elements and the outer ring of ten substantially equally spaced "boomerang"-shaped elements. The patentee has argued at length that these elements do not necessarily constitute openings but could be surface recesses or some form of surface ornamentation. The Board has however no doubt that the person skilled in the art seeking to produce a disc as shown in D14 would, on the basis of his knowledge of similar discs, immediately understand that he is supposed to make openings of the relevant shape in the disc at the relevant positions. Thus even if at the strictest level to the absolute disclosure, the argument of the patentee were correct, it could have no effect on the evaluation of inventive step. Thus in what follows it is assumed that a brake disc having these two rings of openings effectively belongs to the state of the art.

5.4 There is no dispute between the parties that the following features of claim 1 are not disclosed in D14:

(M11) that the effective circle intersects the plurality of first openings; and

(M13) that each of the plurality of connecting arms has a straight middle portion.

Where there is dispute is the extent to which the feature M10 is disclosed. In this context the opponent has adopted an interpretation of the requirement that the first openings are "disposed radially outwardly" of the plurality of mounting holes which in the Board's view is unrealistic. In particular, the opponent sees this requirement as directed to the relative circumferential dispositions of the mounting holes and the first openings, more specifically that the openings are not located on the same radii as the mounting holes. This is certainly the case in D14, where the openings and mounting holes are intercalated regularly around the circumference. The opponent argues that it is also the case with the majority of the openings (six out of nine) in the disclosed embodiment of the claimed invention. The patent specification however makes no mention of this, nor it does explain why the other three openings are disposed differently. (The varying disposition seems to arise simply from the fact that there are nine openings and six mounting holes). In the view of the Board the feature M10 when seen in the light of the total disclosure has a plain and simple meaning, namely that there is no overlap, measured radially, between the inner edges of the first openings and the outer edges of the mounting holes.

This is clearly not the case in D14, thus feature M10 is not disclosed there in its totality.

5.5 The Board is of the opinion that the specific position of the first openings as defined in M10 and M11 contributes to the solution of the problem explained above. Brake forces are induced via the connecting arms tangentially into the inner portion of the disc along the circumference of the effective circle which has a radius significantly larger than the mounting circle. The difference in radius for these two circles has as a consequence that brake forces induced in the effective circle and reaction forces brought on the mounting circle do not stress the same region of the brake disc. The connecting arms with the straight middle portion according to feature M13 help to induce the forces tangentially into the effective circle. A curved connecting arm would induce the force in a direction which would negate the advantage of the different radii as explained above.

The Board is thus satisfied that the features M10, M11 and M13 have a combined effect and are not, as argued by the opponent, individual design options which should be considered separately from each other when evaluating inventive step.

5.6 With regard to features M10 and M11 the opponent argues that it would only be necessary to move the first openings of the disc of D14 a small distance radially outwardly for these requirements to be met there. But this is only true if the feature M10 is interpreted in the way put forward by the opponent, which for the reasons explained in detail in point 5.4 above, is incorrect. On the proper interpretation given there then the distance involved necessary to meet the requirement of feature M10 would be in fact quite considerable.

The opponent has given no clear technical incentive for the person skilled in the art to make this modification, and given the specific shape and orientation of the first openings in D14 the Board is of the opinion that he might indeed have been reluctant to make it as it could lead to a significant and potentially damaging narrowing of the load bearing areas between the first and second openings.

Similarly the opponent has not advanced any technical reason which would have led the skilled person to combine a modification of the radial position of the first openings of the disc of D14 with a modification of the connecting arms such that they be straight. In this respect it is not sufficient to show that straight connecting arms were known per se. In particular the documents especially relied upon by the opponent in this context, D6 and D7, contain nothing which would indicate to the skilled person that straight connecting arms would be preferable to curved ones when considering the solution of the technical problem addressed in point 5.1, above.

Thus the Board has come to the conclusion that it was not obvious for the person skilled in the art to modify the brake disc of D14 in the manner necessary for the particular combination of geometrical requirements determined by the features M10, M11 and M13 to be met. The subject-matter of claim 1 of the third auxiliary request therefore involves an inventive step.

5.7 The opponent has argued that the patent specification attempts to disguise the similarity between the claimed invention and the state of the art by adoption of a new vocabulary to describe it. That the invention is based on geometrical consideration not addressed in these terms in the prior art cannot be held against it. Certainly, as the opponent has more than adequately demonstrated with OPP 5 for example, there is no difficulty in applying the vocabulary of the claims to a prior art disc to determine whether the claimed features are known or not.

5.8 The Board has studied the decision of the Taiwanese court referred to by the opponent. It appears to contain nothing comparable to the analysis made above with respect to the combined effect of the features M10, M11 and M13 and what would have motivated the skilled person to modify the brake disc of D14 in the manner necessary to arrive at the subject-matter of claim 1 of the third auxiliary request. To that extent there is nothing in the decision which could influence the finding of the Board on this question.

6. In summary, it must be stated that both appeals cannot succeed.