T 1180/12 30-07-2015

1. Main request - amendments (Article 123(2) EPC)

1.1 Claim 1 is based on originally filed claim 1 and includes the features that the "large capacity inlet-side through holes" have "an octagonal cross-sectional shape", that the "small capacity outlet-side through holes" have "a square shape" and that these "are arranged alternately, the numbers of through holes of the two types being the same". The respondent does not contest that these features are disclosed in particular in paragraphs 0048 and 0049 in combination with Figure 3(a) to (d) of the application as filed. According to the respondent, claim 1 however included neither the feature of a specific ratio of aperture rates nor that the octagonal shape disclosed in these figures was irregular. Such an omission was contrary to the requirements of Article 123(2) EPC.

1.2 The board observes in this respect that, according to paragraphs 0048 and 0049 and in particular the passage on page 23, lines 4 and 5, the ratio of aperture rates can be varied by changing the cross-sectional area of the small-capacity through holes and by changing the cross-sectional shape of the large-capacity through holes. It is therefore directly and unambiguously derivable from the application as filed that the ratio of aperture rates can be varied and, thus, the specific ratios of aperture rates mentioned in paragraph 0048 are not inextricably linked with the other features disclosed in Figure 3(a) to (d) (see T 714/00, reasons 3.3).

1.3 The board notes that according to the case law of the boards of appeal cited by the respondent, if a claim is restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features (T 1067/97, reasons 2.1.3, cited in T 25/03, reasons 3.3, second paragraph).

1.4 The board is of the opinion that the case at hand is substantially different from the case underlying decision T 1067/97 cited by the respondent. In the latter case, a feature was isolated from other features disclosed in combination in a single embodiment that was said to be particularly preferred (see reasons 2.1.2). Likewise, in T 25/03 the amendments were based on a single embodiment (see reasons 3.3). In contrast, in the case at hand the features now included in claim 1 are disclosed in each of a total of four embodiments, i.e. Figures 3(a) to (d). Therefore, the board is of the opinion that the conclusions drawn in T 1067/97 and T 25/03 cannot be applied to the case at hand.

1.5 The respondent has also cited T 284/94.

In the case underlying decision T 284/94, the amendments were based on a single embodiment (see reasons 2.1.2). In this decision the then competent board, referring to decision T 17/86, stated: "For a claim directed to a device, it should thus 'be ascertained whether the application as filed indisputably disclosed all the technical features of the device covered by the amended claim and whether it is clear beyond any doubt to a skilled person that the device can function independently of any other added element to achieve the object of the invention as now claimed'" (see reasons 2.1.3).

Apart from the fact that in the case at hand the amendments are based on four embodiments and not only a single one (see at 1.41.4 supra), the object to be achieved by the subject-matter of claim 1 of the main request may be considered to by a pillar-shaped honeycomb structural body in which the ratio of aperture rates can be varied desirably (see page 23, lines 4 and 5). This may result in an optimised pressure loss (see in particular page 22, lines 22 to 28), but other means of reducing pressure loss are also disclosed in the application as filed (see for instance page 21, lines 2 and 3). Moreover, the overall object of the application as filed resides in preventing crack formation, which is said to be achieved by increasing the thermal capacity of the outlet-side sealing portions (see paragraph 0010). This overall object is said to be achieved by the inequalities which are present in claim 1 (see paragraph 0012). Thus, it is clear beyond any doubt to the skilled person that the structural body of claim 1 can function independently of a specific ratio of aperture rates to achieve the object of the invention as now claimed.

1.6 According to another of the respondent's arguments, none of the octagonal cross-sections shown in Figure 3 had a regular shape. Claim 1 as amended however also covered octagonal cross-sections having a regular shape.

The board cannot identify any passage in the application documents as filed that would indicate that the octagonal cross-sections needed to have an irregular shape; nor would the skilled person conclude that the object of the invention claimed in claim 1 cannot be achieved by a structural body wherein the octagonal cross-sections are of regular shape.

1.7 The board thus concludes that the requirements of Article 123(2) EPC are met by independent claim 1.

Likewise, the subject-matter of dependent claims 2 to 5 does not extend beyond the content of the application as filed, these claims being based on originally filed claims 2 to 4 and 6.

2. Main request - novelty

2.1 The board notes that the respondent did not object to the main request for lack of novelty.

2.2 The opposition division was of the opinion that document E10, and in particular the embodiment depicted in Figures 2 and 3 thereof, was novelty-destroying for the subject-matter of claim 1 of the then pending main and second auxiliary requests.

E10 does not disclose that the inlet-side through holes have an octagonal cross-sectional shape. The subject-matter of claim 1 of the main request is therefore novel over the disclosure of E10.

2.3 Among the documents relied on by the opponents in arguing lack of novelty in the proceedings before the opposition division, i.e. E1 to E4 and E10, only E3 and E4 disclose embodiments comprising inlet-side through holes having an octagonal cross-sectional shape and outlet-side through holes having a square shape (see E3, Figure 9; and E4, Figure 3(a) to (d)).

2.3.1 E3 discloses certain dimensions of the embodiment comprising inlet-side through holes having an octagonal cross-sectional shape. The plug (or "sealing portion") is made of a material which is similar to the one used for manufacturing the honeycomb structure (paragraphs 0033 and 0037), i.e. porous silicon carbide (see paragraph 0037). While the cross-sectional area of the plug in Figure 9 can be calculated based on the values given in Table 3 of E3, there is no disclosure of the thickness of the plug. The thickness of the plug is however needed to calculate the mass of the plug, which is needed to calculate the thermal capacities of the plugs per 11.8 cm**(2) of the end face on the outlet side. E3 therefore fails to disclose that the relationship (1) for the Y value called for in claim 1 is satisfied. The subject-matter of claim 1 is therefore novel over the disclosure of E3.

2.3.2 E4 discloses honeycomb structural bodies having the configuration depicted in Figures 3(a) to (d) of the patent in suit (see Figure 3(a) to (d) of E4) and having X values falling within the range called for in claim 1 of the main request (see Table 2 on pages 27 and 28 of E4). E4 discloses that the plugs are made of the same material as the raw moulded product of the honeycomb body (see paragraph 0110 of E4), i.e. porous silicon carbide (see paragraph 0109), but is silent about the thickness of the plugs. E4 therefore fails to disclose that the relationship (1) for the Y value called for in claim 1 is satisfied. The subject-matter of the sole independent claim 1 is therefore novel over the disclosure of E4.

2.4 In conclusion, the subject-matter of claim 1 of the main request is novel (Article 54(1),(2) EPC).

3. As the claims of the main request are in compliance with Article 123(2),(3) EPC and with the requirement of Article 54 EPC, the auxiliary requests do not need to be addressed by the board.

4. Remittal

In the notices of opposition, objections on the grounds of lack of sufficiency of disclosure (Article 100(b) EPC) and lack of inventive step (Article 100(a) in combination with Article 56 EPC) had been raised.

However, the impugned decision was based solely on the grounds of lack of novelty (Article 54(1),(2) EPC) and added-subject matter (Article 123(2) EPC).

In view of the above, the board remits the case to the opposition division for further prosecution (Article 111(1) EPC).