T 0618/12 27-02-2015

1. Amendments (Article 123(2) EPC) - Main Request and Auxiliary Requests 1 and 3

1.1 The generally accepted standard for assessing amendments for their compliance with Article 123(2) EPC is the "gold standard", according to which amendments are permitted within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge, from the application as filed. In particular, the skilled person may not be presented with new technical information.

In the present case, claim 1 according to the Main Request, which is identical to claim 1 of Auxiliary Request 1, was amended in opposition proceedings by combining original claims 1, 2, 11 and 12 with original claim 15 containing the "post"-feature. Moreover, a further feature ("expansible material (18) is molded in place around the marginal rim (30)") stemming from the description of the application as filed was introduced in claim 1. Claim 4 according to Auxiliary Request 3 also combines these features (claim 4 includes the "post"-feature and is dependent on claim 1, which includes the "molded in place" feature) so that the following considerations apply equally.

1.2 In the application as filed, claim 1 is directed to expansible material which is "mounted to said marginal rim". Such general wording leaves open how mounting of the expansible material is performed, encompassing all embodiments as described in the dependent claims and the description as filed. This would comprise, as argued by the respondent, expansible material which is molded in place as described explicitly on page 9, lines 7 to 9 of the application as filed in relation to the first embodiment according to Figures 2 to 7. However, the Board finds that, on the basis of claim 1 as filed, the term "mounted" cannot be equated with "molded in place", because such generic disclosure does not implicitly include all specific disclosures which might fall under the generic term. Therefore, the combination of original claims 1, 2, 11, 12 and 15 specifies an embodiment containing the "post"-feature but not yet an assembly where the expansible material is "molded in place", i.e. cannot form the basis for the feature combination which is objected to under Article 123(2) EPC.

1.3 Taking into account the teaching in the general part of the application as filed on page 2 (lines 14 ff) according to which the "expansible material is preferably injection molded in surrounding relationship around the carrier ..., or alternatively insert molded ...", it is acknowledged that this passage refers to a process of "molding in place". However, as indicated by the term "preferably", a preferred - i.e. specific - embodiment is meant at least in relation to injection molding. Assuming that the term "preferably" only refers to "injection molded" and not equally to "insert molded", it would be disclosed that alternatively the process of insert molding is applied. But the introductory portion then goes on to recite the use of different projections at the margin of the carrier (page 2, lines 25 ff), mechanically connecting the expansible material to the carrier, without mentioning a post as specific embodiment for such kind of projections. Only three configurations are explicitly listed (page 2, lines 27 to 31) which relate to the first, second and third embodiment, as described later in relation to Figures 2 to 7 ("substantially continuous T-shaped projection around which the expansible material may be molded"), Figures 8 to 10 ("a plurality of intermittently positioned, circumferentially spaced projections around which the material is molded to present a woven connection") and Figures 11 to 13 ("circumferentially intermittent, alternately axially spaced projections which contain the expandable material therebetween").

Therefore, it might be derivable from page 2 of the application as filed that the expansible material is molded onto the carrier for configurations as described later in relation to the first to third embodiments, i.e. the term "molded" might always mean "molded in place" when used in connection with these embodiments.

In the Board's judgement, page 2 of the application as filed again relates to specific embodiments and cannot be considered to contain a general teaching - i.e. that the expansible material is always molded in place by injection or insert molding - which shall apply to all alternative embodiments of the claimed assembly as discussed afterwards (see pages 3 and 4 as filed, in particular in respect of Figures 14a to 14f: "alternative embodiment of the assembly thereof").

1.4 The description as filed states (see page 10, lines 31 to 33) that "Figs. 14a through 14m show alternative configurations of the baffle and reinforcing assembly 16 having an interior area 28 and attachment member 32 as shown and described in reference to assemblies 16a, 16b, and 16c", i.e. in relation to assemblies relating to the first to third embodiments. However, this passage only makes reference to the interior area and attachment member, without specifying how to mount the expansible material. Then (page 10, lines 33 to 35) the expansible material is said to be "as described above", which only relates to the material specification, and "may be routed through or over the insets as described with reference to any of the assemblies 16a, 16b or 16c". The respondent apparently takes this passage as comprising a general teaching which has to apply to all embodiments, meaning that the "post"-embodiments according to Figures 14e and 14f would comprise an expansible material which is molded in place. However, the term "may be routed" already suggests the optional character of this passage, in the sense that the previous teaching might be applied where appropriate. Moreover, as convincingly argued in particular by appellant 01, there are several passages in the description as filed which indicate that the expansible material might also be provided separately as a preformed band which is mounted to the carrier. In particular, according to page 11, lines 21 to 29 of the description as filed, the "expansible material 18 is provided as a continuous band 156 ... and is provided with a bore 158 in registry with the post 154 which passes through the bore 158 to retain the band 156 thereon" (which relates to the embodiment according to Figure 14e), and "the expansible material 18 is molded in a continuous band with a hole 164 extending only partway therethrough" (which relates to the embodiment according to Figure 14f). These passages at least cast doubts on whether embodiments having a post are disclosed in combination with expansible material molded in place.

Moreover, comparison of Figure 14f (which shows openings 160, 162) with the embodiment according to Figure 22 (showing opening 304) provides further indication that the embodiment according to Figure 14f is not "molded in place". As mentioned in relation to Figure 22, "during molding in place, expansible material 18 flows through the openings 304 to provide nibs 306 extending inwardly through the openings 304 to mechanically hold the wedge 302 in place" (see page 14 of the application as filed). Although openings are also present in the embodiment of Figure 14f, no nibs are formed.

1.5 As follows from the foregoing, the Board concludes that the combination of expansible material "molded in place" and the "post"-feature is not clearly and unambiguously disclosed in the application as filed. Therefore, the criterion for judging allowability of amendments is not met with regard to claim 1 according to the Main Request, which is identical to claim 1 according to Auxiliary Request 1. This also applies to claim 4 according to Auxiliary Request 3, which includes this combination of features.

1.6 It might be, as argued by the respondent, that the skilled person would consider that the step of directly molding the expansible material onto the carrier is more economic than providing the two separate steps of first molding and then mounting the molded expansible material. This, however, is a consideration relevant to obviousness and not to the criterion of clear and unambiguous disclosure. The respondent further referred to a high stiffness of the expansible material preventing its mounting once it was molded. However, no convincing evidence was provided by the respondent in support of the fact that any expansible material would not be suitable for mounting after molding.

1.7 Therefore, the Board comes to the conclusion that the Main Request, Auxiliary Request 1 and also Auxiliary Request 3 are not allowable since the claims contain a combination of features which is not directly and unambiguously disclosed in the application as filed, contrary to the requirements of Article 123(2) EPC.

2. Admittance of Auxiliary Request 2

According to the appellants, Auxiliary Request 2 should not be admitted into the proceedings on the ground that it entails a reformatio in peius. The feature added, concerning "a peripheral bead", was not in the claims of the patent as granted and was not considered by the department of first instance. Therefore, admitting this request would disadvantage the appellants.

The Board considers that these grounds do not justify disregarding Auxiliary Request 2, which was already filed and admitted (see point 18 of the contested decision) in the first-instance proceedings. It is however not necessary to discuss the issue of admissibility in detail, as this request fails on other grounds.

3. Issue of remittal to the Opposition Division

Appellants 01 and 02 requested remittal to the department of first instance in the event that Auxiliary Request 2 was to be considered. The respondent requested during oral proceedings that the case not be remitted.

In accordance with Article 111(1) EPC 1973, second sentence, the Board decided to exercise its discretion not to remit the case and thus allowed the respondent's request. Since Auxiliary Request 2 fails on other grounds, further details are unnecessary.

4. Inventive step (Article 56 EPC 1973) - Auxiliary Requests 2 and 2a

4.1 Document D2 is considered to represent the closest prior art and shows a baffle and reinforcement assembly adapted for positioning in a cavity within a structural member (page 1, lines 4 to 7 and Figure 2), which was not disputed. A carrier (Figure 3: support plate 50; Figure 6: support plate 104) is made of synthetic material (page 7, lines 12 to 14: support plate made of nylon). Contrary to the submission of the respondent, the attachment member shown in D2 (Figure 3) includes a clip (fastener 46) extending radially outwardly from the marginal rim of the carrier, since the wording of claim 1 leaves open the specific shape of the carrier's marginal rim and also of the clip. Hence, flange 44 shown in Figure 3 represents part of the marginal rim of the carrier and bears fastener/clip 46 which extends radially outwardly.

In D2, the expansible material (page 6, line 15: sealing material 52; page 9, lines 25 to 26: sealing material 102; claim 1: heat expandable sealing material) is molded in place around the marginal rim (page 7, lines 19 to 21). The carrier (50; 104) of D2 includes (see Figure 3 or Figure 6 showing a specific embodiment of Figure 3) an interior area (58), a marginal rim (56; also flange 44, see above) positioned outwardly of the interior area (page 6, lines 17 to 18), and an attachment member (46) integral with the interior area and marginal rim adapted for coupling to the structural member (page 6, lines 6 to 9). In D2, a continuous and circumscribing band (page 6, lines 14 to 16) of thermally expansible material (52; 102) is mounted to said marginal rim in surrounding but not overlying relationship to said interior area (Figures 3 and 6; claim 1).

The respondent contested that D2 discloses a marginal rim which includes a base wall extending substantially perpendicular to said interior area. However, when looking at Figure 6 in D2, the marginal rim of the carrier is made of a flange portion (106) of reduced thickness, as compared to the interior area, which extends radially outwardly, and a wall connecting said flange portion with the interior area of the carrier, which extends in axial direction and therefore perpendicular to the interior area. The Board judges that this wall represents a "base wall" within the meaning of claim 1, because the wording of claim 1, aside from specifying its orientation ("perpendicular to said interior area"), leaves open whether the base wall protrudes above the interior area (as depicted e.g. in Figure 3 of the contested patent) or not (as in Figure 6 in D2).

According to Figure 6 in D2, the expansible material (102) is received on the base wall, and the marginal rim includes a first support flange (106) extending from said base wall away from said interior area, and the first support flange (106) is substantially continuous about said base wall and has a width in cross-section (see Figure 6; page 9, lines 27 to 29), which was not contested.

The Board follows appellant 02 in that the additional feature of claim 1 of Auxiliary Request 2a ("attachment member includes at least one retainer wall proximate said clip and oriented substantially perpendicularly to said interior area") is also known from D2. The attachment member in D2 (see Figure 3) is composed of fastener/clip 46 and a flange 44 proximate to the clip and oriented perpendicularly to the interior area, the latter corresponding to a retainer wall as claimed. This still concurs with the attachment member as defined previously in claim 1 ("includes a clip extending radially outwardly from said marginal rim", "integral with the interior area and marginal rim adapted for coupling to the structural member"). In particular, flange 44 forming part of the attachment member can also be regarded as forming part of the marginal rim of the carrier as argued already above, since according to the wording of claim 1 attachment member and marginal rim are integrally formed.

4.2 In summary, except for the marginal rim including a peripheral bead having a width in cross-section which is greater than the cross-sectional width of the first support flange, D2 discloses all features of claim 1 according to Auxiliary Request 2 and also of claim 1 according to Auxiliary Request 2a.

Such a peripheral bead provides an interlocking connection between expansible material and marginal rim. Therefore, the distinguishing feature has the technical effect of providing a superior attachment or bonding of the expansible material on the marginal rim.

Starting from D2, the objective technical problem to be solved was therefore to improve the bonding or fixation between the expansible material and the marginal rim.

4.3 As argued in the contested decision (see point 24.1.2) and also by the respondent, the skilled person, considering that adhesive bonding by molding in place would not provide a sufficiently strong connection, had different possibilities at his disposal to solve the problem of improving the connection. In particular, he might either use different options of form closure, or increase the contact surface as already taught by D2.

In the Board's view, providing the marginal rim with a peripheral bead having a width in cross-section which is greater than the cross-section width of the first support flange is to be regarded as being merely one of several straightforward ways of modifying the marginal rim known from D2, among which the skilled person would choose without exercising any inventive skill when trying to solve the above-mentioned problem.

Since the baffle and reinforcement assembly of D2 had to be placed in a specific cavity (e.g. a vehicle pillar), outer dimensions - in particular the length the support flange extended in radial direction - were already limited. Knowing that a better bonding could be realised by increasing the contact surface between the expansible material and the carrier and/or by means of form closure, the skilled person would e.g. conceive recesses inwardly in radial direction, as known already from document D2 (Figure 5), or provide an additional structure in a direction perpendicular to the interior area (i.e. parallel to the base wall in D2), such as an enlarged end portion of the first flange portion or an additional flange or fin provided on the first support flange. This would even be advantageous in order to avoid problems during demolding and would inevitably lead to a peripheral bead having a width in cross-section which is greater than the cross-section width of the first support flange. In the Board's view, selecting one of these obvious alternatives does not involve an inventive step.

4.4 Irrespective of whether claim 1 according to Auxiliary Request 2 or Auxiliary Request 2a contains further deficiencies with regard to Article 123(2) EPC or Article 84 EPC 1973, both requests must be refused for lack of inventive step (Article 56 EPC 1973).

5. Since there is no allowable request, the European patent has to be revoked.