T 1395/09 03-04-2013

1. Admissibility of the amendments made in claim 1 of the main request (Articles 83 and 84 EPC)

Claim 1 of the main request (i.e. claim 1 of the patent as maintained by the Opposition Division; see point II above) comprises the functional definition of the spacing of the pair of electrodes: "the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving". This defines a result to be achieved.

1.1 In its communication annexed to the summons to oral proceedings the Board remarked that, since this feature, which had been introduced during the opposition proceedings into claim 1, was taken from the description of the patent in suit, the issue of clarity of the wording of claim 1 as maintained has to be examined (see point V above).

1.2 The respondent argued at the oral proceedings that the Board, particularly in the light of point 18 of the reasons of the decision G 9/91 (supra), would not be entitled to examine ex-officio this amendment since the appellant did not raise any corresponding clarity objection in the entire proceedings, let alone in its statement of grounds of appeal.

These arguments cannot hold for the following reasons.

1.3 First of all, the quoted decision G 9/91 (supra) concerns the extent and power of examination in opposition cases by the Opposition Division and the Boards of Appeal and the principle of examination by the EPO of its own motion as laid down in Article 114(1) EPC with respect to grounds of opposition. This is clear from the quoted point 18 of its reasons which states "Although Article 114(1) EPC formally covers also the appeal procedure; it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage" (emphasis added by the Board).

1.3.1 As admitted by the respondent at the oral proceedings clarity does not represent a ground of opposition as specified in Articles 100(a) to 100(c) EPC. Nonetheless as soon as amendments are made in the claims or the specification during the opposition and/or appeal proceedings the verification that all requirements of the EPC are met has to be carried out.

This view is supported by G 9/91 (supra, see point 19 of the reasons) wherein it is further stated that "In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)" (emphasis added by the Board).

This conclusion is fully in line with the longstanding case law (see Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, section VII.D.4.2; see e.g. T 227/88, OJ EPO 1990, 292; T 472/88 and T 922/94 both not published in OJ EPO). Where the Opposition Division, in the impugned decision, has not even discussed the issue of clarity, it is up to the Board to do so.

1.3.2 The respondent argued also on the basis of the statement of the EBA in G 9/91 that the appeal procedure is more a judicial procedure for principally reviewing the decisions of the first instance and by its nature less investigative on the part of the Board. As the opponent had not objected to the clarity of this claim in the opposition proceedings, nor in the statement of grounds of appeal, the Board overstepped its competence in itself raising the issue.

However, in the present case the appellant raised objections under Article 83 EPC in its statement of grounds of appeal (see page 10, point c)) in that the patent did not define what is meant by the term "normal use of the razor" (one of the amended features objected to by the Board) nor what is "the amount of shaving foam collected on the blade unit in the course of shaving" (the other amended feature objected to by the Board). These objections had already been raised during the opposition proceedings with letter dated 17 September 2008 (see page 5, third paragraph to page 6, first paragraph) and have been discussed at the oral proceedings.

Since the issue is in the proceedings and is related to amended features in the claim, the Board considers it perfectly in order for it to address it on its own motion as an issue of clarity of claim 1 of the patent as maintained, even on the premise advanced by the respondent. In this respect it does not matter whether the issue was raised under Article 83 or 84 EPC.

1.4 As far as the amendments are concerned, the Board remains of the opinion that claim 1 as maintained does not comply with Article 84 EPC, for defining a result to be achieved "… the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged …". This result is influenced by the unspecified shaving foam, its amount, the hardness of the water used for shaving, etc. Further, it includes the vague and unspecified term "in normal use of the razor"; it is not clear what that feature means in practice and what limitations are implied by "a normal use".

1.5 The respondent's arguments to the contrary cannot hold for the following reasons.

In the present case, as convincingly argued by the appellant, it is actually possible to more precisely define the subject-matter claimed (see e.g. claim 1 of the first auxiliary request) without unduly restricting the claim. Further, it is considered to be impossible to determine the distance between the pair of electrodes by experimentation without undue burden for the person skilled in the art. This is due to the fact that the result of such experiments, i.e. whether or not the electrodes are bridged when varying the distance between them, is primarily dependent on the electrical conductivity of the used, but unspecified shaving foam and its unspecified components as well as the amount thereof and the hardness of the water used. The patent in suit is absolutely silent in this respect and gives no guidance at all. Hence the quoted conditions for allowing this functional definition are considered not to be met in the present case.

1.6 The Board therefore considers that claim 1 of the main request contravenes Article 84 EPC. The main request is therefore not allowable.

2. Admissibility of claim 1 of the first auxiliary request (Articles 84 and 123(2) and (3) EPC)

In the present case the opponent is the sole appellant and the patent as maintained in amended form would have to be revoked as a direct consequence of this inadmissible amendment (see point 1 above) held allowable by the Opposition Division. Consequently, for this special case with respect to the prohibition of reformatio in peius the relevant decision G 1/99 (OJ EPO 2001, 381) which allows for exceptions to this principle (see Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, section VII.E.6.1 and G 1/99, order of the decision) has to be applied.

2.1 According to the order of G 1/99 (supra), in order to overcome the deficiency in such circumstances, the patent proprietor/respondent may be allowed to file requests, as follows:

- in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;

- if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;

- finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.

2.2 The Board considers that claim 1 of the first auxiliary request - which is based on claim 1 as originally filed taken together with the disclosure at page 4, lines 1 to 5 of the application as originally filed (corresponding to the published WO-A-2004/073940) - corresponds to the second alternative mentioned in G 1/99 (supra).

The first alternative would mean that the objected phrase would remain in the claim, however that with further features the unclarity could be solved. This is not an option here; the addition of further features would not "overcome the deficiency".

The second alternative is a feasible solution, even on the premise that the unclear features did have a limiting effect on the scope of the claim. This is due to the fact that claim 1 of the first auxiliary request, when compared with claim 1 of the main request, has been restricted to the second of the available two alternatives: the first electrode is on the blade unit and the second electrode is on the handle (see point VIII above). Claim 1 of the patent as maintained (main request) covered two alternatives, i.e. one with both electrodes on the blade unit and one with them separate from each other (see point II above).

Additionally, it has to be considered that the range for the distance between the two electrodes according to the - now - deleted functional definition of claim 1 of the main request was unclear (see points 1.4 and 1.5 above) since it was not known what the minimum or the maximum distance actually could be. In contrast to that, the present definition of claim 1 implies a certain distance between the electrodes.

2.3 The appellant's arguments to the contrary cannot hold for the following reasons.

2.3.1 The argument that the "deletion of features" is not mentioned in the second alternative cannot hold since the entire decision G 1/99 (supra), in the context of reformatio in peius, deals with the special case that a feature incorporated during the opposition procedure into the claims as granted cannot be maintained in the amended claims, for example for contravening Article 123(2) EPC, and as a consequence has to be removed from the claims.

2.3.2 In principle the deletion of a feature will result in a broadening of the scope of a claim. However, if said omitted feature of the distance between the electrodes is that unclear that in fact it is not known where the range of values for this distance started and where it ended, then the replacement of this feature by a clearer definition will result in a limitation of the resulting claim when compared to the claim comprising said unclear feature. It would seem that the present solution lies between the first and second alternative of G 1/99 (supra).

2.3.3 Taking account of the unclarity of claim 1 of the main request it is difficult to establish what the "position of the appellant" was, when establishing whether for claim 1 of the auxiliary request this position has worsened. One thing is, however, clear: the possibility of having both electrodes on the blade unit is now excluded for the respondent. This embodiment was feasible under the wording of claim 1 of the main request; the foam would in that case be prevented from bridging the two electrodes by appropriate placing and/or shielding of one or both electrodes.

2.4 The appellant's arguments concerning an objection under Article 84 EPC based on the wording of claim 1 that "a person using the razor immerses the blade unit (2) into a body of water" and that claim 1 does not specify that the person has to immerse also the second electrode which is on the handle, cannot be accepted.

If at all a question of clarity, this deficiency was already present in the combination of the features of claims 1 and 9 as granted and for that reason not open to an objection under Article 84 EPC. Further, as the two electrodes are there to actuate the electrical device when they are bridged, it is implicit that both electrodes make contact with the water, either by immersing into a body of water or by holding under a flow of water for rinsing.

2.5 When asked by the Board at the oral proceedings the appellant stated that it has no further formal objections concerning the claims of the first auxiliary request under Articles 123(2) and (3) EPC.

2.6 Taking account of the above, the Board reaches the conclusion that claim 1 of the first auxiliary request complies with the conditions of G 1/99 (supra) as well as the requirements of Articles 84 and 123(2) and (3) EPC.

3. Inventive step (Article 56 EPC)

Document D12 was considered by both parties as the closest prior art for the safety razor of claim 1 of the first auxiliary request.

3.1 D12 discloses a safety razor in which the cutting effect of the blade during the shaving is enhanced by causing the blade to vibrate. The handling of the razor can be improved by providing a sensor on the razor handle, so that the blade is made to vibrate only when the razor is picked up (see page 3, lines 27 to 30), which can be achieved by providing an infrared sensor or a pressure sensor either in the grip or in the blade area, the latter embodiment having the advantage of further saving energy since the sensor is only activated when the blade contacts the skin (see page 3, line 30 to page 4, line 2). Alternatively, a moisture sensor on the razor head is also feasible and actuates the vibrating mechanism when the razor head (carrying the two electrodes of the moisture sensor) is brought into contact with wet skin during shaving (see page 4, lines 4 to 7 and page 7, lines 29 to 35; figure 1; claims 1, 13 und 18).

3.2 The safety razor of claim 1 of the first auxiliary request thus differs from the razor of D12 having the moisture sensor on the razor head (the latter corresponding to the blade unit) in that the second electrode of the water detecting arrangement (corresponding to the moisture sensor) is located on the razor handle. The preamble of claim 1 thus corresponds to the disclosure of D12.

3.3 The effect of this distinguishing feature is that the electrical device (e.g. for vibrating the blade unit) is only automatically actuated when the two electrodes of the water detecting arrangement are either immersed into a body of water or rinsed under a flow of water in order to aid removing of shaving debris and shaving foam or soap from the blade unit.

3.4 The objective technical problem is therefore defined as the provision or improvement of the cleaning capability of the safety razor of D12, in which the electrical device is only actuated for cleaning purposes but not during shaving (compare patent in suit, paragraphs [0004] to [0007]).

3.5 This technical problem is solved by the subject-matter of claim 1 of the first auxiliary request.

3.6 Contrary to the appellant's arguments this solution is not rendered obvious by a combination of the teachings of D12 and D17 for the following reasons.

3.6.1 First of all, D12 does not mention the problem underlying the patent in suit but aims to solve a totally different problem, namely improving the shaving/cutting effect of a wet razor (according to a preferred embodiment to make the handling of the razor more pleasant) by providing a razor comprising a replaceable razor blade which is excitable to oscillations by either a piezo actuator or an electromagnetic drive (see page 2, lines 5 to 24, page 3, lines 1 to 12; figures 1 and 2; and claim 1).

Hence according to the general teaching of D12 the razor blade is vibrated during the shaving and the electrical device (i.e. the piezo actuator or the electromagnetic drive) is automatically actuated by either a moisture sensor 11' or alternatively an infrared sensor 11 or a pressure sensor 11. The appellant's arguments that the razor may comprise both sensors 11 and 11' (the latter as shown in figure 1) cannot hold since it is absolutely clear from the description of D12 that these sensors represent alternatives only (see page 4, line 32 to page 5, line 9; page 7, lines 11 to 17 and lines 29 to 32).

3.6.2 Second, the person skilled in the art, when starting from the teaching of D12, would have to change the essential features of its teaching, which includes the vibrating of the blade unit during the shaving which either starts when gripping the handle (i.e. the infrared sensor or the pressure sensor 11) or when contacting the wet skin (i.e. the moisture sensor 11'). The Board cannot see a reason for the person skilled in the art to do so.

3.6.3 Insofar it is questionable whether D12 - which requires vibrating during the shaving - is actually the closest prior art document for the subject-matter of claim 1.

Furthermore, even if the person skilled in the art by chance would realize that the razor with the moisture sensor on the blade unit can be held under a flow of water in order to rinse the latter - which, as long as water bridges the two electrodes, would cause vibrating of the blade unit - he has no reason to relocate one of the two electrodes of said moisture sensor to the handle; it works as it is.

3.6.4 The appellant further holds the argument that relocating the second electrode to the handle would simplify the manufacturing process and that this would be shown by D17. This cannot hold either.

D17 is absolutely silent with respect to any simplification of a process for manufacturing a safety razor.

D17 relates to a razor which makes use of an electric current for increased shaving efficiency (see page 1, left hand column, lines 1 to 4 and line 48 to right hand column, line 8). The metallic handle portion 15 forms one electrode while the blade 13 and optionally the base member 11 and the blade cap 10 form the second electrode which are connected with the positive pole and the negative pole of the conventional dry cell 23, respectively (see page 1, right hand column, line 14 to page 2, left hand column, line 23). The open circuit formed by the safety razor of D17 is closed by contact between the handle and the blade which is realised through the body of the user via the handle being held in the hand of the user and the blade being in contact with the moisture-laden lather on the face of the user (see page 2, left hand column, line 24 to right hand column, line 4). D17 therefore relates also to a completely different technical problem than the problem solved in the patent in suit and is silent with respect to any cleaning of the blade unit.

The teaching of D17 thus cannot change the situation since it is not concerned with providing a vibrating mechanism in a safety razor for any purpose, let alone to facilitate cleaning. With its pair of electrodes which are spaced from each other it aims, likewise as D12, to enhance the shaving effect but using a totally different arrangement.

Therefore the Board considers that the teaching of D17 is incompatible with the aims of D12 and without an ex-post facto analysis it is therefore not logical to combine the teachings of D12 and D17.

3.6.5 The appellant's further arguments cannot hold either. They are likewise considered to be based on hindsight, since the documents in question do not contain any suggestions relating to the cleaning of safety razors, let alone in the light of their disclosed specific examples, which would allow to arrive at a safety razor as defined in claim 1 of the first auxiliary request.

The fact that the patent in suit discloses an embodiment where the actuator of the vibrating mechanism is used during the shaving and not only during the rinsing between the shaving steps (see patent, column 6, line 47 to column 7, line 4) is not relevant since there exists no reason for the person skilled in the art to relocate one electrode to the razor handle.

The same conclusion holds true with respect to the argument that placing the second electrode onto the handle is the second of only two possibilities (the first one is the location in the blade unit which is known from D12) since there is no suggestion at all concerning the cleaning of the razor.

As admitted by the appellant at the oral proceedings the effect of placing the second electrode on the handle is not known from D12, let alone for the intended purpose, so that it is not particularly relevant whether or not the initiation of the vibrating is known from D12.

3.6.6 The appellant did not argue on obviousness starting from the razor of D12 and application of general technical knowledge by the skilled person. The Board has no reason in this particular case to see this differently.

3.7 Taking account of the above the Board considers that the subject-matter of claim 1 of the first auxiliary request involves inventive step.

3.8 Taking account of the amendments to the description as filed at the oral proceedings, which has been adapted to claim 1 of the first auxiliary request the Board considers that also the specification of the patent in suit according to the first auxiliary request complies with the EPC.

The objection raised by the appellant under Article 84 EPC with respect to paragraph [0009] cannot hold since it is clear from the description that in case that the second electrode is formed by a casing of the handle, such as mentioned in that paragraph, then also this casing is carried by the handle.