T 0133/10 26-04-2013

I. By its interlocutory decision dated 16 November 2009 the opposition division considered that the European patent number 1 356 876 in its amended form submitted during the opposition procedure met the requirements of the EPC.

II. Independent claim 1 of the auxiliary request found allowable by the opposition division reads as follows:

"1. A method for automatically feeding metal profiles in bar form in systems for machining said profiles, comprising the steps of:

(a). gripping a set of metal profiles (2) in bar form in one or more accumulation sections, from a magazine (5) that collects said profiles (2);

(b). transferring said set of metal profiles (2) in bar form or the gripped portion of said set of metal profiles (2) in bar form into a raised position;

(c). arranging said metal profiles (2) in bar form or the gripped portion of said set of metal profiles (2) in bar form on a transfer device (10) provided with means (16) for separating said metal profiles (2);

(d). counting a preset number of metal profiles (2) to be fed at each work cycle;

(e). untangling said preset number of metal profiles (2) taken previously from the bundle to which they belong and counted, engaging said preset metal profiles (2) to be fed by way of auxiliary supporting means (40) coupled to said transfer device (10) and actuated gradually along the longitudinal axis of said metal profiles (2) in order to gradually lift the bars (2);

(e2). disengaging said auxiliary supporting means (40) from said profiles (2) so as to deposit said profiles (2) on an underlying pre-accumulation channel (46);

(f). transferring and unloading the metal profiles (2) thus selected onto a conveyance and measurement line (6) in order to feed at least one machine arranged downstream.

This auxiliary request further comprised a second (amended) independent claim 10. This claim is however not relevant for the present decision, so that its wording is not reproduced here.

III. On 25 January 2010 the appellant (opponent O1) filed an appeal against this decision and paid the appeal fee on the same day. The grounds of appeal were submitted with the letter dated 18 March 2010.

IV. An intervention under Article 105(1)(a) EPC was filed by Schilt Engineering B.V. (hereafter opponent O2) on 28 November 2011. The opposition fee was paid on the same day. The intervention was based on a writ of summons as served on 31 August 2011 concerning an infringement suit lodged before the 's-Gravenhage district court by the proprietor (respondent) of the patent in suit against opponent O2.

V. In preparation for the oral proceedings the Board informed the parties of its preliminary opinion on the case, according to which discussion appeared to be necessary inter alia on the question of whether amended independent claim 1 underlying the impugned decision met the requirement of Article 123(2) EPC.

VI. Oral proceedings before the Board of Appeal took place on 26 April 2013. During the oral proceedings the respondent withdrew auxiliary requests 1 to 5, which had been submitted as a response to the Board's communication in preparation for the oral proceedings, and submitted new auxiliary requests 1 and 2 each constituted by a single method claim.

VII. The appellant and opponent O2 requested that the decision under appeal be set aside and that the European patent be revoked. The respondent requested as a main request that the appeal be dismissed, or that the patent be maintained on the basis of the first or second auxiliary request filed during the oral proceedings on 26 April 2013.

VIII. The single claim of auxiliary request 1 reads:

"1) A method for automatically feeding metal profiles in bar form in systems for machining said profiles, comprising the steps of:

(a). gripping a set of metal profiles (2) in bar form in one or more accumulation sections, from a magazine (5) that collects said profiles;

(b). transferring said set of metal profiles (2) in bar form or the gripped portion of said set of metal profiles (2) in bar form into a raised position;

(c). arranging said metal profiles (2) in bar form or the gripped portion of said set of metal profiles (2) in bar form on a transfer device (10) provided with means (16) for separating said metal profiles (2);

(d). counting a preset number of metal profiles (2) to be fed at each work cycle;

(e). untangling said preset number of metal profiles (2) taken previously from the bundle to which they belong and counted, engaging said preset metal profiles (2) to be fed by way of auxiliary supporting means (40) coupled to said transfer device (10) and actuated gradually along the longitudinal axis of said metal profiles (2) in order to gradually lift the bars (2);

(f). transferring and unloading the metal profiles (2) thus selected onto a conveyance and measurement line (8) in order to feed at least one machine arranged downstream;

said step of

(e). engaging said preset metal profiles (2) by means of auxiliary supporting means (40) furthermore entailing:

(el). moving said auxiliary supporting means (40) longitudinally to said profiles (2) so as to untangle said preset metal profiles (2) to be fed at each work cycle from said collection magazine (5);

(e2) sliding said auxiliary supporting means (40) in opposite directions longitudinally to a beam (52) said beam (52) being arranged in a bridge-like fashion over said magazine (5), parallel to said bars (2) and supporting wheels at the opposite ends, which roll on a pair of transverse guides (53) that are monolithic with the fixed framework of the magazine (5)

(e3) said bars (2) resting on rollers (45) and being retained laterally by forks (41)

(e4) said auxiliary supporting means (4) reaching an unloading position at the end of said beam (52)

(e5). disengaging said auxiliary supporting means (40) from said profiles (2) so as to deposit said profiles (2) on an underlying pre-accumulation channel (46);

said underlying pre-accumulation channel (46) being supported in a cantilevered fashion longitudinally to said beam (52)."

IX. The claim of auxiliary request 2 reads:

"1) A method for automatically feeding metal profiles in bar form in systems for machining said profiles, comprising the steps of:

a. gripping a set of metal profiles (2) in bar form in one or more accumulation sections, from a magazine (5) that collects said profiles;

b. transferring said set of metal profiles (2) in bar form or the gripped portion of said set of metal profiles (2) in bar form into a raised position;

c. arranging said metal profiles (2) in bar form or the gripped portion of said set of metal profiles (2) in bar form on a transfer device (10) provided with means (16) for separating said metal profiles (2);

d. counting a preset number of metal profiles (2) to be fed at each work cycle;

e. untangling said preset number of metal profiles (2) taken previously from the bundle to which they belong and counted, engaging said preset metal profiles (2) to be fed by way of auxiliary supporting means (40) coupled to said transfer device (10) and actuated gradually along the longitudinal axis of said metal profiles (2) in order to gradually lift the

preset number of metal profiles (2);

f. transferring and unloading the metal profiles (2) thus selected onto a conveyance and measurement line (8) in order to feed at least one machine arranged downstream;

said step of

e. engaging said preset metal profiles (2) by means of auxiliary supporting means (40) furthermore entailing:

el. moving said auxiliary supporting means (40) longitudinally to said profiles (2) so as to untangle said preset metal profiles (2) to be fed at each work cycle from said collection magazine (5);

e2. sliding said auxiliary supporting means (40) in opposite directions longitudinally to a beam (52), said beam (52) being arranged in a bridge-like fashion over said magazine (5), parallel to said metal profiles (2)and supporting wheels at the opposite ends, which roll on a pair of transverse guides (53) that are monolithic with the fixed framework of the magazine (5);

e3. said preset number of metal profiles (2) resting on rollers (45) and being retained laterally by two forks (41) of the auxiliary supporting means (40);

e4. said auxiliary supporting means (40) reaching an unloading position at the end of said beam (52), when said auxiliary supporting means (40) have exceeded the length of said preset number of metal profiles (2);

e5. disengaging said auxiliary supporting means (40) from said preset number of metal profiles (2) so as to deposit said preset number of metal profiles (2) on an underlying pre-accumulation channel (46);

said underlying pre-accumulation channel (46) being supported and tipping in a cantilevered fashion longitudinally to said beam (52);

the step (f) of transferring and unloading, comprising the step of

f1. actuating said beam (52) at said conveyance and measurement line (6) and tipping said pre-accumulation channel (46) to convey said preset number of metal profiles (2) onto said conveyance and measurement line (6)."

X. The arguments of the appellant and opponent O2 as far as relevant to the present decision may be summarised as follows. In the following, all references to the originally filed application refer to its published version.

a) With respect to claim 1 of the main request in view of Article 123(2) EPC:

The feature "in order to gradually lift the bars (2)" was disclosed in the application as filed only in relation to the two preferred embodiments of the apparatus in paragraphs [0028], [0045] and in paragraph [0051]. These provided no basis for the generalisation of the feature in the way it had been introduced into claim 1.

The added feature "e2" was taken from original claim 3 in which it was defined in combination with a further step "e1" relating to a longitudinal movement of the auxiliary supporting so as to untangle the profiles from the collection magazine. Paragraphs [0028], [0046] and [0050] disclosed the same combination of longitudinal movement, untangling and disengaging. Paragraph [0046] stated more specifically that, as a result of this longitudinal movement of the auxiliary supporting means beyond the ends of the metal profiles, their deposition on the underlying pre-accumulation channel was completed by the disengagement of the metal profiles. The statements made in paragraphs [0048] to [0050] related to the preferred embodiment, which comprised several other features which were linked to the untangling and disengaging steps, such as a movable screw-feeder or two forks. These paragraphs did therefore not support the generalisation of the feature "e2". No basis could be found in the application for the step of disengaging for the purpose of depositing without the longitudinal movement of the auxiliary supporting means. The second embodiment mentioned in paragraph [0051] did not disclose how the step of disengaging the profiles should take place and could thus not serve as a basis for the omission of the step "e1" and the resulting generalisation of step "e2" from claim 3. This embodiment related to lifting arms or elements replacing entirely the auxiliary supporting means and did not mention the disengaging of the bars or their deposition on an underlying pre-accumulation channel. Moreover, the lifting arms did not provide the same functions of supporting and untangling of the auxiliary supporting means as disclosed in paragraph [0028].

b) With respect to auxiliary request 1 in view of Articles 84 and 123(2) EPC:

Feature "e3" was drafted entirely disconnected from the auxiliary supporting means, whereas paragraph [0026] disclosed the features defined in "e3" only in relation to specific auxiliary supporting means, comprising two forks, rollers and also sliders. Consequently this amendment was objectionable under Articles 123(2) and 84 EPC. Paragraph [0046] described that the deposition was completed in the unloading position, and that this position was reached after the auxiliary supporting means had exceeded the length of the bars. These features had only partly been defined in the claims, thus infringing Article 123(2) EPC. Also the term "unloading position" lacked clarity because it was not clear what and where this position was. Paragraph [0048] disclosed that the transfer device had to be pivotable between a raised and lowered position in order to allow the loading of the bars, which was an essential condition for the engaging step of feature "e", and could thus not be omitted. Also in feature "f" the feature of a pivoting pre-accumulation channel should have been added, such as originally defined in claim 20.

The feature "in order to gradually lift the bars" still constituted a generalisation of the corresponding statement in paragraph [0045], which read "gradually and continuously lift the bars". The omission of "continuously" was also not allowable under Article 123(2) EPC. The claim still comprised inconsistent wording for the same subject-matter, such as " bars" and the different expressions of "metal profiles", which caused a lack of clarity. The request should not be admitted since it raised new issues at the oral proceedings which could not be dealt with without adjournment. The amendments were entirely based on features taken from the description, some of which could never have been expected to play a role in the proceedings, such as the bridge-like beam. This would have required an additional search in order to be able to discuss inventive step.

c) With respect to auxiliary request 2 in view of Article 84 EPC:

The further amendments did not overcome all objections raised against the previous request and introduced further defects. For example, the meaning of the pre-accumulation channel "being supported and tipping in a cantilevered fashion" was not clear.

XI. The respondent's arguments as far as relevant to the present decision may be summarised as follows:

a) With respect to claim 1 of the main request in view Article 123(2) EPC:

The amendments to claim 1 were directly and unambiguously derivable from the general teaching which the skilled person received from the whole application as filed. In particular, paragraphs [0047] to [0050] referred to the invention in general and were not limited to a specific embodiment. In the two embodiments, see in particular paragraphs [0045] and [0051], the feature "in order to gradually lift the bars (2)" was disclosed as being the intended result of the movement (e.g. by sliding or lifting) of the auxiliary supporting means aimed at untangling the bars. This feature was also found in paragraph [0050] when read in combination with the paragraphs relating to the specific embodiments, i.e. [0045] and [0051], respectively.

The feature "e2" was literally disclosed in claim 3. Moreover, with respect to the first embodiment it was disclosed in paragraphs [0045], [0046] and [0051]. In the second embodiment referred to in paragraph [0051] and which presented all essential parts of the invention, this feature was at least implicit for the skilled person. Also in this embodiment, auxiliary supporting means were present in the form of the lifting elements and it became clear (from the fact that these were actuated gradually in an appropriate sequence) that the sliding movement was not essential for the untangling of the profiles from the bundle. The added feature "e2" in claim 1 provided for a fair protection of the invention by combining the teaching of the two embodiments in terms of their essential features as understood by the skilled reader in view of the original subject-matter in claim 1. The reader would also have understood this feature to be disclosed at least implicitly in the part of the description referring to the invention in general in paragraphs [0047] to [0050], in particular in [0048] and [0050]. The skilled reader would have recognised that neither the step of "moving" nor any of the other features referred to in paragraph [0048] was essential for the invention. All that was necessary for defining the invention was the functional link between the steps of untangling by engaging and lifting of the profiles and the disengaging for the purpose of their deposition in the pre-accumulation channel, which link was present in the two embodiments and in the claim.

b) With respect to auxiliary request 1 in view of Article 123(2) EPC:

The amendments to claim 1 were based on original claim 3, which had now been entirely incorporated in the claim, together with the additional and partly renumbered features "e2", "e3", "e4" and "e5" from paragraphs [0015], [0045] and [0046]. The most representative features were taken from these passages to define with clarity all essential features of the method. Certain features, such as the sliders or the number of the forks, could thereby be omitted since they were not essential. Similarly, neither the movable transfer device referred to in paragraph [0048], nor the specific connection of the pre-accumulation channel for the purpose of the transfer of the metal profiles to a conveyance line according to feature "f", were essential to the accomplishment of the invention. The word "continuously" was not additionally required in the added feature "in order to gradually lift the bars", since the auxiliary supporting means were defined in feature "e2" to be sliding which implied a continuous movement and hence also continuous lifting. The objections raised against the amendments all addressed structural features, whereas the claim related to a method. It was thus more important to define all actions of the method, which had been done. The amendments were filed to overcome the issues raised against the timely filed requests. They did not introduce any complex issues since they limited the subject-matter to the first embodiment. A single method claim simplified the issues to be dealt with, so that also in the light of complexity and procedural economy the auxiliary requests were clearly admissible.

c) With respect to auxiliary request 2 in view of Article 84 and 123(2) EPC:

The additional amendments were based on the same passages as indicated for auxiliary request 1 and introduced further features from the first embodiment. It thereby overcame all raised objections. The addition of the expression "and tipping" was based on lines 27 and 30 of paragraph [0028] and did not lead to a lack of clarity.