T 0071/11 18-09-2014

1. Terminology 'stepped bearing'

1.1 The characterising portion of claim 1 includes the features: '... a stepped bearing including an inner race carrying the shaft, an outer race carrying the movement generating means and a middle fixed race ...'. From the above wording alone it is clear that a single item is being claimed, namely a bearing, rather than a plurality of bearings in some way construed to make up a stepped structure. Such a plural bearing structure might perhaps be referred to as a bearing arrangement or a bearing assembly providing a stepped configuration, but this is distinct from the terminology 'a stepped bearing'. The feature 'a stepped bearing' in the manner defined in claim 1 is therefore to be understood as a component with its own structural integrity comprising (at least) three structurally connected races.

1.2 The appellant's argument that only one of the two elements making up the middle race was included in the claim, such that a two bearing arrangement also read onto the claim, is unconvincing. Such an arrangement would not be included in the claimed expression 'a stepped bearing' since it would not be a bearing, i.e. a single component, as claimed, but rather two bearings. While a two bearing arrangement as purported by the appellant may indeed have a somewhat similar bearing function to the claimed stepped bearing, this in no way lessens the limitation imposed by the wording 'a stepped bearing' in the claim, which limits the scope of the claim to a bearing which is a component with its own structural integrity as explained above. It is also noted that the appellant's comparative two bearing arrangement, with a function similar to a stepped bearing, would necessarily comprise two separate, individual bearings which, when not installed in the claimed device, would consist of these two bearings which are not structurally integral with each other. Also in this respect, such a bearing arrangement does not fall within the scope of the feature 'a stepped bearing'.

The appellant's further argument that a bearing race was to be understood as a single surface on which the bearing elements ran and that two separate surfaces, or races, were possible in the position of the middle race, also falls foul of a stepped bearing necessarily being one structurally integral component. In as far as the appellant's argument can be understood, such an arrangement would require two concentrically arranged bearings, one located within the inner race of the other, in which the middle race would consist of the inner race of the outer bearing and the outer race of the inner bearing. Such a two bearing arrangement, however, cannot be considered 'a stepped bearing' as defined in claim 1 for the reasons already given. The appellant's related argument that two concentrically arranged bearings would also achieve the cited advantage of reducing the bearing radial dimension is not relevant. Regardless of such an arrangement allowing radial dimension reduction (although arguably not as much as a stepped bearing, as claimed, which for comparison purposes would then have a single middle race), such a two bearing arrangement does not fall under the definition of 'a stepped bearing'.

1.3 The appellant's contention that a bearing arrangement in which two bearings were joined together via an external element, such as a housing element protruding between the bearings, would also fall within the scope of the claim, is not persuasive. Even though such a bearing arrangement might have a somewhat similar function to a stepped bearing as defined in claim 1, it is nonetheless a bearing arrangement comprising two separate bearing components, rather than one structurally integral component.

1.4 The Board does not accept the appellant's argument that a stepped bearing comprising just a single component would have been described in the claim as a 'bearing unit' had this been meant. A singular component providing the stepped bearing with all of its races is already defined in the claim due to the use of the grammatical singular, namely 'a' in the terminology 'a stepped bearing'.

1.5 The Board concurs with the appellant insofar as it is the wording of the claims, rather than the description or figures, which defines the scope of the invention and thus the interpretation of the subject-matter of the claims (see also T121/89, Reasons 2 and T544/89, Reasons 3.1). Nonetheless, in the present case, although not decisive for the meaning of the terminology 'a stepped bearing', it may be noted that the description and figures of the patent do confirm the interpretation which is attributed by the Board to the feature 'a stepped bearing' in claim 1; particularly para. [0009] of the patent states that 'The pump body 11 has, integral therewith, a seal .... and the middle race 20a of a stepped bearing 20', and Fig. 1 shows the middle race 20a as a single component rather than an amalgamation of 2 races from separate bearings or the like.

1.6 The expression 'a stepped bearing' in claim 1 is to be interpreted as a (i.e. single) component with its own structural integrity comprising (at least) three structurally connected races.

2. Claim 1

2.1 Objection of lack of novelty

2.1.1 The Board exercised its discretion under Article 13(1) RPBA not to admit the appellant's objection concerning novelty (Article 54 EPC 1973) into the proceedings.

2.1.2 With its grounds of appeal, the appellant objected to claim 1 of the patent solely on the basis of Article 56 EPC 1973. In the letter of 18 August 2014 an objection to novelty of the subject-matter of claim 1 was raised for the first time with respect to D10. This is therefore a change of the appellant's case and is thus open to admittance only under the Board's discretion. The Board finds however that, at least prima facie, D10 at least fails to disclose the stepped bearing of claim 1 and so would not be prejudicial to the novelty of the subject-matter of claim 1. To this finding, the appellant offered no counter argument beyond stating that D10 was also relevant for inventive step considerations.

2.2 Inventive step

2.2.1 D1 in combination with D10

The subject-matter of claim 1 involves an inventive step (Article 56 EPC 1973) whether starting from D1 or D10 as the closest prior art.

D1 can be considered as the closest prior art for assessing inventive step, in that it discloses the most features of the subject-matter of claim 1. D1 however fails to disclose, in respect to the terminology used in claim 1 of the patent, a stepped bearing including an inner race carrying the shaft, an outer race carrying the movement generating means and a middle fixed race to which said electromagnetic means are integral. Based on these differentiating features of claim 1 over D1, the objective technical problem may be seen as the provision of an alternative bearing structure.

D10 fails to disclose a stepped bearing and so, already at the outset, is unable to guide the skilled person to the required modification of the device of D1 in order to reach the subject-matter of claim 1. D10 discloses a dual bearing arrangement in which the bearings (26, 30) are radially aligned (see Figure and paras. [0010] - [0011]) to thereby essentially fulfil the function of a stepped bearing, yet crucially do not provide a bearing component having its own structural integrity between races. It thus follows that D10 does not guide the skilled person to modify the device of D1 in such a way as to solve the technical problem posed and reach the subject-matter of claim 1 without exercising an inventive step (Article 56 EPC 1973).

2.2.2 The appellant's argument that in D10 the outer ring of the inner bearing 26 and the inner ring of the outer bearing 30 are both fixed to the housing 12 thus together forming a middle fixed race, does not change this conclusion. The two bearing arrangement suggested by the appellant to be structurally equivalent to the stepped bearing claimed is not accepted since the two bearings cannot be regarded as a component having its own structural integrity which, as found under point 1 above, is how the stepped bearing of claim 1 must be understood.

2.2.3 When considering D10 as the closest prior art starting point for assessing inventive step, as suggested by the appellant, the Board finds (as explained supra) that at least a stepped bearing as defined in claim 1 is not disclosed therein. The objective technical problem based on this feature may again be seen as the provision of an alternative bearing structure.

D1 (again, as already stated above) fails to disclose a stepped bearing. Thus the disclosure in D1 does not provide guidance for the skilled person to modify the bearing arrangement in D10 with an alternative bearing of the type claimed. Indeed, D1 explicitly discloses the location of just a single bearing, the exact location of the bearing supporting the shaft 2 being left undefined (see the Figure and col.3, lines 31-33). It is thus not realistic to arrive from D1 at any hint to a (single) bearing component with structural integrity for substitution into the device of D10. It thus follows that D1 does not guide the skilled person to modify the device of D10 in such a way as to solve the technical problem posed and reach the subject-matter of claim 1 without exercising an inventive step (Article 56 EPC 1973).

2.2.4 The appellant's contention that providing a stepped bearing in place of the two bearings in D10 would be an obvious alternative arrangement for the skilled person when considering D1 is not persuasive. Starting from D10, firstly the skilled person would have no incentive to change the functioning bearing arrangement, which already comprises two concentric, radially aligned bearings, for a stepped bearing. Secondly, with D1 not disclosing the location of the two bearings of the device with respect to one another, it is not apparent how this can guide the skilled person to provide a specific stepped bearing in which the bearing comprises a single component. At least for these reasons alone therefore, and disregarding further features of claim 1 not disclosed by D10, the subject-matter of claim 1 involves an inventive step when starting from D10 and combining this with the technical teaching of D1.

2.2.5 In summary, in view of the documents cited by the appellant in relation to inventive step and the arguments presented by the appellant in support of its objection, the subject-matter of claim 1 is considered to involve an inventive step (Article 56 EPC 1973).

3. Claim 25

3.1 Claim 25 is directed specifically to a pump for recirculating fluid, rather than more generally to a device as in claim 1. In support of its argument against inventive step of the subject-matter of claim 25, the appellant referred to those arguments presented in respect of the subject-matter of claim 1, offering no further arguments. For the same reasons as apply to claim 1, the subject-matter of claim 25 is thus also found to meet the requirements of Article 56 EPC 1973.