T 1137/12 14-03-2017

1. Remittal to the opposition division

1.1 The appellant's request to remit the case to the opposition division had been indicated at the very end of its statement of grounds of appeal, with the very sparse reasoning that the opposition division had improperly read and understood the wording of the claims. In order to allow this request, the alleged errors in the reading and understanding of the claims would have to be fundamental deficiencies as indicated in Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA). However, in relation to the request for remittal in the written statement of grounds of appeal, no detail was provided regarding the way in which the claims had been incorrectly read and understood by the opposition division, or what the consequence of the alleged incorrect reading and understanding had been. The Board thus does not see how what is alleged to be an error of judgment on the part of the opposition division can result in a procedural defect justifying remittal.

1.2 During oral proceedings the appellant submitted new arguments regarding the request for remittal, which became its main request. These new arguments do not prove the existence of a fundamental defect in the sense of Article 11 RPBA for the reasons which follow.

1.2.1 The appellant's argument that the claims had been wrongly interpreted by the opposition division cannot per se result in a procedural defect. The interpretation by an opposition division of features in a claim is dependent upon the technical understanding of its subject-matter by the individual members of the division. If a party is not satisfied with this interpretation it may appeal and have this interpretation reviewed; that is the very purpose of an appeal.

1.2.2 As regards the appellant's argument that no guidance had been provided in advance of the oral proceedings, this is not a requirement before an opposition division. The provision of any preliminary opinion by the opposition division is entirely at its discretion. Omission of such guidance being provided can thus not be seen as a procedural violation. It is furthermore noted that, as is evident from point 8 of the minutes of the oral proceedings before the opposition division, after having been presented with the opposition division's interpretation of the claims, an opportunity to respond through the filing of further requests was not taken by the proprietor. Therefore even if the patent proprietor heard the opposition division's interpretation for the first time at oral proceedings, it had an opportunity to react and did not at that time do so.

1.3 The Board thus concludes that there was no fundamental deficiency in the procedure before the opposition division which would justify a remittal (Article 11 RPBA). The request for remittal is thus refused.

2. Main request

2.1 Article 123(2) EPC

The subject-matter of claim 1 fails to meet the requirement of Article 123(2) EPC.

2.1.1 The subject-matter of claim 1, at least due to the inclusion of the following features, lacks a direct and unambiguous basis in the application as filed:

- 'the first sprocket support having a first radially innermost end attachable to a hub'; and

- 'the second sprocket support having a second radially innermost end attachable to the hub'.

There is no explicit basis in the application as filed for either the first or the second sprocket support to be simply attachable, without further structural detail, to a hub. Indeed, the sole disclosure of the first sprocket support's attachment to the hub is from col. 7, line 57 to col. 8, line 4 (referring here to the published (A2) version of the application as filed) in which a splined attachment is described, this also being clearly depicted in Figures 4 to 6. As regards the attachment of the second sprocket support to the hub, col. 8, lines 5 to 7 discloses that this follows analogously to that of the first sprocket support to the hub. This being the sole disclosure of how the two sprocket supports are attachable to the hub, the omission of this detail in claim 1 amounts to its subject-matter comprising an unallowable intermediate generalisation of the original disclosure.

2.1.2 The appellant's argument that the feature was derivable from the entirety of the application as filed is not persuasive. Whilst it can be accepted that the two sprocket supports must each be connected to the hub in some manner in order for the sprocket assembly to be able to drive the hub, the only specific way in which this is disclosed is by way of the splines and grooves in col. 7, line 57 to col. 8, line 4. An attachability in such generality as claimed cannot be directly and unambiguously derived from the application as filed. Indeed, as currently claimed, the attachability includes in its scope even an interim element between the sprocket support and the hub to which each sprocket support was attachable (as argued by the respondent), rather than the attachability being directly to the hub, which possibility is clearly not disclosed to the skilled person in the application as filed. The claimed attachability of the sprocket supports to the hub thus clearly extends beyond the sole, very specific disclosure in the application as filed of how this is achieved by way of the splined connection.

2.1.3 The appellant's argument that the innermost end of the sprocket supports had to be attachable to something does not convince the Board of the claimed generality of attachability to the hub being originally disclosed. The only disclosure of any attachment of the sprocket support to the hub in the application as filed is, as indicated in point 2.1.1, by way of a splined connection. A general attachability is not disclosed and indeed includes further possibilities within its scope, such as an interim attachment piece between the sprocket supports and the hub, which are not disclosed or even implicitly suggested to the skilled reader of the application as filed.

2.1.4 The appellant's suggestion that the attachable nature of the sprocket supports to the hub had no technical bearing on the claimed invention is not accepted. It is firstly noted in this respect that the proprietor chose to include such a formulation in the claim, and all features in a claim define the invention; if a particular feature were of no importance it would not need to be included in the claim. This feature was indeed added to the claim during examination of the application. As regards the 'technical bearing' on the claimed invention, it is the structural or functional relationship of the splined connection to the features included in claim 1 that is of importance. In this respect the first and second sprocket supports are a structurally and functionally integral element of the subassemblies comprising the sprockets and the space maintaining projections, such that the splined connections of the sprocket supports to the hub are in a structural defined relationship to the features in the claim. The splined connections are also important from a functional point of view, since these allow the torque to be transferred from the sprockets to the hub. It thus follows that the splined connections between the sprocket supports and the hub are both structurally and functionally related to the claimed bicycle sprocket assembly.

2.1.5 The reference to T331/87 fails to change the Board's finding in this respect. In that decision, the removal of a feature from a claim was found not to contravene Article 123(2) EPC provided that the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve, and (3) the replacement or removal required no real modification of other features to compensate for the change. Thus, the situation in the present case is different to that in T331/87. If one were to attempt to analogously apply the finding from that decision to the present case, the specific splined connection would need to be considered as having been removed from a claim in which it was previously present, leaving only the sprocket supports being attachable to the hub. In the present case, conditions (2) and (3) of T331/87 are anyway not met. As regards condition (2), if the technical problem were taken to be limiting the deflection of the sprockets under load, the splined connection between the sprocket supports and the hub is indispensable in order for any drive to be transferred from the sprockets to the hub. If no drive can be transferred no torque will be experienced by the sprockets and these will thus not distort to require limitation of deflection. Regarding condition (3), removal of the splines will require modification of the sprocket supports in order to allow torque to be transferred to the hub.

It thus ensues that, even if T331/87 were applied to the present situation, this would not result in the omission of the splined connections between the sprocket supports and the hub not contravening Article 123(2) EPC.

2.1.6 The subject-matter of claim 1 thus fails to meet the requirement of Article 123(2) EPC. The main request is consequently not allowable.

3. Auxiliary request 1

3.1 Article 123(2) EPC

3.1.1 The subject-matter of claim 1 of auxiliary request 1 includes the features of claim 1 of the main request found to extend beyond the content of the application as filed. The appellant provided no further arguments in defence of this request beyond those presented for the main request. The Board thus concludes that the subject-matter of claim 1 of this request also fails to meet the requirement of Article 123(2) EPC. Auxiliary request 1 is thus not allowable.

4. Auxiliary request 2

4.1 Admittance of the request

This request was submitted during oral proceedings before the Board. The request may thus be admitted and considered at the Board's discretion, as set out in Article 13(1) RPBA, such discretion being exercised inter alia in view of the need for procedural economy. As is established case law of the Boards of Appeal, such procedural economy implies that amended requests should at least be prima facie allowable in order to be admitted.

4.1.1 In claim 1 of this request the nature of the first and second sprocket supports' attachability to the hub has been specified with the addition of features relating to engaging grooves and splines formed on the inner circumferential surface of the boss part. The specific features detailing the first sprocket support 34 have been taken from: col. 6, lines 7 to 11 and lines 44 to 46; col. 7, lines 36 to 37; and col. 7, line 57 to col. 8, line 4 of the published application. These passages of the original description all relate to the embodiments of Figures 2 to 4 which show the sprocket support 34 as part of a subassembly 31 supporting not only sprocket S2, as claimed, but also sprocket S1. This subassembly necessarily including both sprocket S2 and sprocket S1 is underlined through the rivets 37, included in claim 1, which mount the first sprocket S2 to one side of the sprocket support also simultaneously mounting the sprocket S1 to the opposing side of the sprocket support. With the features added to claim 1 being taken specifically from the particular embodiment depicted in Figures 2 to 4 and being detailed in the above referenced passages of the description, and there being no other basis for such an amendment, omission of the further sprocket S1 from claim 1 presents an unallowable intermediate generalisation of the application as filed.

4.1.2 The appellant's argument that the additional sprocket (S1) on the first sprocket support was to be seen as an optional feature since it was in dependent claim 11 of the application as filed is not accepted. It is true that in the application as filed the additional sprocket (S1) on the first sprocket support was merely an optional feature of the claimed invention. However, claim 1 of auxiliary request 2 is not based solely on a combination of claims 1 and 11 as filed, rather comprises a host of features taken from a specific embodiment of the invention disclosed inter alia in col. 6, lines 7 to 11 and lines 44 to 46; col. 7, lines 36 to 37; and col. 7, line 57 to col. 8, line 4. In this specific embodiment, the additional sprocket (S1) is disclosed in combination with the further features of the first sprocket support taken up into claim 1. It thus follows that the extraction of these further features from the description for insertion into claim 1 without the additional sprocket (S1) presents the skilled person with technical information in the form of a new combination of features which is not directly and unambiguously derivable from the application as filed.

4.1.3 The subject-matter of claim 1 thus at least prima facie fails to meet the requirement of at least Article 123(2) EPC.

4.1.4 Therefore, since subject-matter of claim 1 is at least not prima facie allowable the Board exercised its discretion under Article 13(1) RPBA not to admit this request into proceedings.

5. Auxiliary request 3

5.1 Article 123(2) EPC

5.1.1 The subject-matter of claim 1 of auxiliary request 3 includes essentially the same features of claim 1 of auxiliary request 2 which were found to result in subject-matter at least prima facie extending beyond the content of the application as filed. The appellant did not contest that the same finding would also apply to auxiliary request 3 and thus opted to provide no further arguments in defence of this request, and relied instead on those presented with respect to the prima facie allowability of auxiliary request 2. The Board thus concludes, for the same reasons as those for auxiliary request 2, that the subject-matter of claim 1 of this request fails to meet the requirement of Article 123(2) EPC.

Auxiliary request 3 is thus not allowable.

6. Auxiliary requests 4 and 5 were both withdrawn. In the absence of any allowable request the appeal is to be dismissed.