T 1760/10 29-10-2013

1. The appeal is admissible.

2. Public prior use "Kettler"

2.1 Novelty of the subject-matter claimed was contested by the appellant based on the public prior use of a hub transmission in the form of a delivery to a customer. The respondent contested that there was no proof that the hubs as mentioned in the telefax dated 20.8.99 had in fact had been delivered at all and that it was not clear whether they were anyway of the configuration as shown in D1 since other situations than those alleged were also realistic possibilities which could not be ruled out.

2.2 The Board considers the statement given by the witness Mr Steuer concerning the problems of the noisy (clattering) bicycle hubs experienced by Kettler, which required a solution, as entirely credible. As was commonly known in the technical field at the time, a transfer of the bicycle hub branch from SACHS to SRAM took place in 1997. In the following years, the SACHS SUPER 7 hub was renamed to SRAM SPECTRO S7, but kept the same construction. This is also confirmed for example by the evidence WUE-3, WUE-4, where for example the Spectro S7 appears in the SRAM brochure from 2001 which also continued to quote company products with reference to both Spectro and Sachs (see e.g. item 12 on page 2/3 of WUE-4 where the nomenclature Spectro / Sachs is used, while on page 3/3 reference is again made to the Spectro S7).

2.3 According to the witness Mr. Steuer, in answer to the question of how he could be certain that the hubs supplied to Kettler had the configuration using the parts 0334 113 000 (i.e. part 113) and 0334 112 000 (i.e. part 112) shown in D1, he replied (see page 5/7 of the minutes, first three sentences) that there was only one solution. This was as shown in D1 (page 1) consisting of a bush and a supporting ring for silencing the hubs shown in the drawings of D1. It is also entirely credible in accordance with the chain of evidence that, after Kettler had threatened SRAM with stopping obtaining further supplies from them, intensive activity had started in order to solve the problem since this was a major customer. Since Kettler remained SRAM's customer, the conclusion must logically be drawn that the noise (clattering) problem was indeed solved. Therefore, since this sequence of events complies with the normal life situation to be expected, the Board has no doubt that the intended delivery of hubs "1000 Super 7" according to the telefax (D1, page 4) had indeed been delivered by SRAM to Kettler before the priority date of the patent in suit, that the hubs were fitted with the bush 0334 112 000 and the supporting ring 0334 113 000 and that the hubs depicted in D1 with supporting documentation are part of the prior art according to Article 54 EPC 1973.

2.4 Although page 7 of D1 does not show the bush or the support ring, the Board accepts, as entirely consistent with the remaining evidence, Mr Steuer's statement that the bush is not visible in the exploded view because the bush is in the hub (minutes; end of page 5/7). Indeed this makes technical sense, as during servicing - which was what page 6 related to - the ring would not be extracted if it were, as indicated in other parts of D1, sprung into contact with the inner surface of the hub. In this regard it is important to note that page 6 does not relate to a retrofit (see minutes page 6/7). Likewise, the Board accepts Mr Steuer's statement that the drawing of the ring gear is not technically accurate so that the support ring is not visible (see minutes page 6/7), since there are many other parts on the ring gear which are not shown, even though logically these have to be present; in particular it can be seen that on page 5 for example, this discloses the integral support ring in the explanation but does not depict this. The incorrect graphic representation of sizes on page 5 of D1 is also understood by the Board logically as a mere draughtsman's inaccuracy.

2.5 Although the respondent objected to the hearing of Mr Steuer as a witness at all, the Board was not persuaded by the objection. In its grounds of appeal, the appellant had offered a different witness to testify to the public prior use if required. The opposition division had not found hearing a witness necessary based on the documents in proceedings. With its response to the appeal, the respondent had continued to contest the public prior use and, due to the death of the first witness offered, a replacement witness, Mr Steuer, had been offered. Nothing should have surprised the respondent in this regard. In the communication issued with the summons to oral proceedings, the Board had indeed indicated that the chain of alleged public prior use contained certain irregularities and did not seem to be sufficiently proven and that the appellant was at liberty to request Mr Steuer to attend oral proceedings at which he might be heard, albeit that it remained unclear at that time as to how Mr Steuer had relevant knowledge of the events.

2.6 Although the respondent objected that it was not clear what exactly the witness would testify to, it was clear to the Board from at least D6 that Mr Steuer had worked with the initially offered (and now deceased) witness in the matter concerning the clattering hubs objected to by the Kettler company, and that he was aware of the circumstances surrounding the need to find a solution.

2.7 Likewise, although the respondent objected to the hearing of witness evidence since it was partly based on new material (D6 to D8) and had to involve new facts being heard, the Board was not convinced by this objection. The new material (D6 to D8) was not further material of the prior use itself, but merely indicative of Mr Steuer's involvement in the matter, and therefore knowledge of the circumstances and suitability as a witness. Likewise, there was no presumption that Mr Steuer would introduce any new evidence, but merely testify as to why the already filed evidence was sufficient substantiation of public prior use.

2.8 Since the witness was present at the oral proceedings, and since the Board had been informed that Mr Steuer was employed at the time of the telefax in D1 and could confirm that the drawings in D1 would correspond to the alleged public prior use in accordance with the delivery, the Board decided to hear the witness and took the required decision to this effect under Rule 117 EPC after having heard the parties on this matter (see page 2/7 of the minutes).

2.9 The production start date for the plastic rings being stated as "seit 23.09.99" (as of 23.09.99) compared to the date of D6 (06.07.1999) is evidently a typing error, when considering the witness's declaration in relation to D1. The wording "Kunststoffringe erst seit 23.09.99 KW 38" is given in the context of the start of production of Spectro at the end of June 1998 ("Produktions-start Spectro Ende Juni 98"), whereby the equipment with supporting rings made of plastic (Kunststoffringe) must logically have occurred before the date 5.7.99 of the "Besuchsbericht". Therefore the date 23.09.99 KW 38 is obviously incorrect and can only be understood as 23.09.98, not least since this date also logically follows in the sequence compared to the start of production "Ende Juni 98" (end of June 98) corresponding with KW 26/27 (calender week 26/27) which is about week 26/27 in 1998. The Board thus does not accept the respondent's argument that D6 fails to establish a date of production of the rings in 1998 or that D6 would at best be ambiguous in this regard.

3. Main request, first auxiliary request (prohibition of reformatio in peius)

3.1 In its communication before the oral proceedings, the Board had indicated, with respect to the main request and the first auxiliary requests, that the removal of a restricting feature in the claims found allowable by the opposition division was likely to result in these requests being held inadmissible. The non-appealing patentee was essentially bound to defending the form of the patent as found allowable by the opposition division (the current second auxiliary request), or to adopt fallback positions from that. The exception to the prohibition of reformatio in peius in G 1/99 was seemingly not met by filing higher ranking requests (i.e. compared to the second auxiliary request) containing broader terminology. In G 1/99, the non-appealing patentee was given the opportunity to remove the inadmissible amendment in the order of three possible steps as defined by the Enlarged Board of Appeal. Thus, only if the (current) second auxiliary request were found to be deficient under Article 83 EPC 1973 (presuming the objection under Article 100(b) EPC 1973 was admitted), would it have been appropriate to allow amendments to overcome that objection and then only in the order stated by the Enlarged Board.

3.2 Although the appellant had raised an Article 100(b) EPC 1973 objection in its grounds of appeal (see pages 5 and 6), this objection was based on the premise that a skilled person, in accordance with the opposition division's decision (page 12), would have to exercise inventive skill when considering which resin material might be suitable in the hub of D1 when taking into account the number of possible resins available. However, since the objection under Article 100(b) EPC 1973 was to be handled after having considered inventive step in relation to the form of the patent found allowable by the opposition division, the main request and first auxiliary requests were essentially being filed against an objection which had not yet even been admitted or considered by the Board. Indeed, the appellant stated that such an objection would only arise if the subject-matter of claim 1 of the second auxiliary request was found to involve an inventive step (which was not the case - see infra). Thus no necessity arose to consider an amendment as an exception to the prohibition of reformatio in peius, and the Board therefore confirmed its preliminary opinion that these requests were not admissible as a higher order request than the second auxiliary request. This was also accepted by the respondent, who then relied on these requests being considered as ranked the seventh and eighth auxiliary requests.

4. Second auxiliary request (Article 56 EPC 1973)

4.1 Once the Board had concluded that the alleged public prior use was proven, the respondent asserted that compared to the drawings on page 1 of D1, D1 did not show a "spacing" since the bush was in contact with the ring gear and with the internal surface of the hub, and therefore was not "disposed on" the ring gear with a "spacing" as claimed. However, the arrangement in D1 is not distinguished from the feature defined in the wording of claim 1 which states "so as to define a spacing therebetween" (i.e. between the guide ring and the ring gear/hub body). Such a spacing of tapered form in cross-section can be seen at each of the axially left and right ends of the bush and a further spacing is located between the bush and the hub body in the concave portion of the bush. Importantly, the claim does not define or imply that a free spacing is present over the whole axial length of the guide ring. The further argument that the bush in D1 is disposed on the hub, because it must be inserted before the planetary gears, and therefore not disposed on the outer peripheral surface of the ring gear, is not accepted. The terminology "disposed on" in claim 1, does not relate to an order of assembly, but merely to the status as assembled. In the assembled state, the bush is in contact with both the ring and the hub, and is therefore "disposed on" both of these. Whether it was initially disposed on the hub and later became disposed on the ring by virtue of its contact therewith after insertion of the gear train thus lacks relevance.

4.2 Therefore the Board concludes that the only difference between the subject-matter claimed and the prior used hub of D1 is the feature that the material of the ring gear guide ring is a resin material.

The objective problem underlying the claimed invention can therefore be seen as the provision of an alternative suitable material for the ring gear guide ring.

4.3 The appellant attacked the version of the patent as found allowable by the opposition division based on lack of inventive step starting from D1 and combining this with common general knowledge of a person skilled in the art. First, the Board takes the position that the skilled person in respect of sufficiency of disclosure and inventive step is one and the same. The patent does not provide any information as to which resin material is used or which properties the resin material should have to be suitable as a material for the purpose of a ring gear guide ring. Therefore the skilled person would apply common general knowledge in selecting a suitable material. The POM-material disclosed in D1 is a plastic material having particular properties, which in the mind of the skilled person possibly would be achievable by a resin material, e.g. a fibre reinforced resin, which is not excluded by the wording of claim 1.

4.4 When considering the common general knowledge in the field of plastic materials, it is evident from e.g. K5 that resins are also kinds of plastic material (see e.g. page 118). The skilled person looking for an alternative material for the ring gear guide ring disclosed in D1 which is made from POM having e.g. sufficient rigidity, durability, sufficient sliding and wear properties, would consider for example chemical encyclopaedias to find alternative suitable materials. In K5, alternative materials are listed, and the skilled person would find a resin material having comparable properties as POM for the purpose of a guide ring, thus arriving at the claimed solution without the involvement of inventive activity. The mere fact that the material is not quoted as being specifically for the purpose of a bearing ring in gearings in bicycles, lacks relevance, since the skilled person is aware of the properties generally required and is not required to select a "particularly" suitable material for all these purposes, but merely one that is suitable.

5. Third auxiliary request (Article 56 EPC 1973)

5.1 Claim 1 of this request specifies further that the ring gear guide ring can be located on the inner peripheral surface of the hub body or on the outer peripheral surface of the ring gear defining a spacing radially inside or outside the guide ring.

5.2 Regarding page 1 of D1, it is evident that the bush 0334 112 000 is situated between the inner peripheral surface of the hub body and the outer peripheral surface of the ring gear. A spacing is present radially outside and inside the bush (see point 4.1 above). Taking into account the wording of the claim, this feature is also disclosed in D1. The subject-matter of claim 1 is therefore also considered not to involve an inventive step for the same reasons as apply to the second auxiliary request.

6. Fourth auxiliary request (Article 56 EPC 1973)

6.1 Compared to claim 1 of the third auxiliary request, claim 1 is restricted to the alternative that the ring gear guide ring is arranged on the outer peripheral surface of the ring gear defining a spacing radially outside the guide ring towards the hub body.

6.2 As stated above (point 5.2), this wording of the claim is fully covered by the situation of the bush 0334 112 000 in D1 disposed on the outside of the ring gear defining a spacing radially outside towards the hub body. For the resin material of the ring gear guide ring, the same reasons apply as given above (points 4.3 and 4.4)

6.3 Moreover, as asserted by the appellant, the subject-matter of claim 1 is also not inventive considering the arrangement of the supporting ring on the ring gear. The supporting ring 0334 113 000 is disposed on an outside peripheral surface of the ring gear, and a spacing of tapered form in cross-section is defined between the supporting ring and the internal surface of the hub body. To make the supporting ring from resin material instead of POM (as is the case in D1) is an obvious step for the skilled person, for the same reasons as apply to the bush in the hub of D1 (see above).

6.4 Thus the subject-matter of claim 1 does not involve an inventive step.

7. Fifth and sixth auxiliary requests - non-admittance into the proceedings

7.1 According to Article 114(2) EPC 1973 the European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned. In Article 13(1) of the Rules of Procedure of the Boards of Appeal (RBPA) it is stated that it is within the Board's discretion to admit and consider any amendment to a party's case after it has filed its grounds of appeal or reply. The discretion shall be exercised inter alia in view of the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. According to the established case law of the Boards of Appeal a late filed request should normally only be admitted into the proceedings if it overcomes all deficiencies and appears prima facie allowable.

7.2 The fifth and sixth auxiliary requests were filed about one month before the oral proceedings. The respondent argued that in its view the filing had become necessary in response to the preliminary opinion of the Board, and thus these requests were not late-filed. Reference was made to e.g. T 978/99, T 98/06 and T 33/08. The Board concludes however that the filing of a new request per se at a late stage of proceedings is not by itself necessarily a reason for not admitting it into the proceedings as long as it meets the above requirements (point 7.1). However, the new requests give rise to new problems under Article 84 EPC 1973 and are therefore not admitted into the proceedings, as explained below:

7.3 The amendments are taken from the description (paragraphs [0006] and [0007]), where it is described under which conditions an imbalance or wobbling is prevented by the ring gear guide ring and how the distance to the neighbouring rotating part should be designed, in particular that the spacing between the ring gear guide ring and the internal peripheral surface of the hub body is sufficient to allow the ring gear to rotate without the ring gear guide ring contacting the internal peripheral surface of the hub body, when the ring gear is precisely in balance and the spacing is small enough that a slight imbalance or wobbling will lead to engagement with the internal peripheral surface of the hub body in a manner that the ring gear is prevented from imbalanced motion. The same applies when the ring gear guide ring is disposed on an outer peripheral surface of the ring gear.

7.4 The respondent asserted that the skilled person was therefore provided with clear information as to how to design the amount of space needed. However, the Board cannot follow this argument since on the one hand it is not defined what a "precise balance" is, noting that this is anyway technically not achievable since the ring gear is not guided in an exact bearing like a ball bearing. On the other hand there is also no definition given as to what is to be understood by a "slight imbalance or wobbling". There is no disclosure at all how the ring gear should be arranged to be "prevented from imbalanced motion" even supposing that it should be understood as "bringing it back from imbalanced motion to precise balanced motion". Since there is no disclosure of how the space indeed should be designed as to be able to be measured such as to be in accordance with the claim, the skilled person is unable to put any clear limitations on what this feature implies structurally and thus how it should be implemented. This lack of clarity is present in claim 1 of both the fifth and sixth auxiliary requests. The Board therefore exercised its discretion not to admit these requests into the proceedings.

8. Seventh and eighth auxiliary requests

9. The seventh and eighth auxiliary requests correspond to the main request and the first auxiliary request, merely re-ranked. These requests are also not allowable since their introduction would contravene the prohibition of reformatio in peius for the same reasons as apply to the main and the first auxiliary requests (in respect of the removal of a limiting feature compared to the second auxiliary request). The respondent provided no arguments to contest this point of view.