T 1791/12 24-03-2015

1. Main request

1.1 Article 100(a) EPC 1973 - Novelty

The subject-matter of claim 1 is novel with respect to the cited prior art.

1.1.1 D1 discloses the following features of claim 1 (see Figs. 1, 2 and 4; col. 2, line 29 - col.3, line 31; col. 3, lines 41-54), whereby reference numerals in brackets refer to features in D1

A bicycle sprocket assembly comprising:

- a rotational drive unit (11,19);

- a sprocket (1) comprising a sprocket ring (3) with an inner periphery (radially inner portion of mount portion 24 in Fig. 4) and sprocket teeth (5) on an outer periphery (see Fig. 4);

- a synthetic resin fastening part (24) coupled (via through holes 25) to the sprocket ring part (3);

- the synthetic resin fastening part (24) including at least one mounting through hole (10; col.2, line 59);

- a fastening member (22) having an enlarged head to apply a fastening force (see Fig. 2);

- the sprocket (1) including a tubular member (23) mounted in the mounting through hole (10) of the synthetic resin fastening part (24);

- the tubular member having a first fastener contact surface (right hand end surface of bush 23 in Fig. 2) with which the fastening member (22) has contact;

- to apply a fastening force to the first fastener contact surface (right hand end of bush 23) to fixedly couple the tubular member (23) to the rotational drive unit (11,19).

The sole feature of claim 1 not known from D1 is that the tubular member is metallic.

1.1.2 The opponent's argument, that also the metallic nature of the tubular member is known from D1 is not convincing. The nature of the hatched lines shown on the bush 23 in the cross-section of Fig. 2 relative to the other hatching shown does not allow the skilled person to derive that the bush material is unambiguously metal. It is to be noted that patent figures are not engineering drawings, and hatching is used in cross-section drawings to differentiate physically distinguishable elements of an assembly and provides no indication of particular materials of construction. The opponent's argument that the drawings are of a US patent, and that drawing requirements there necessitate that metal be shown as depicted is not persuasive, at least for the reason that it cannot be concluded that this aspect of the drawing had not been overlooked. Whilst col.3, lines 29 to 30 states that 'the bush 23 can be placed in the bore 10 when the annular member 1 is molded' from which it can be derived that the bush is most likely not the same construction material as the annular member, this does not allow a conclusion to be drawn that the bush is metal. An equally viable material for such a bush would be, for example, carbon fibre reinforced resin.

1.1.3 The proprietor's argument that feature 1.8 is also not known from D1 is not convincing since the expression 'rotational drive unit' is so broad as to encompass more than solely the pedal crank. Additionally, any drive to the chain via sprockets 5 in D1 is transmitted from the pedal crank 19, via the plate member 11 and the fastening screw 22 to the annular member 1 and thus sprockets 5 (see Fig. 2), such that the plate member 11 unambiguously falls within the scope of the expression 'rotational drive unit' of claim 1 since it forms part of the assembly by which the chain is driven by rotating the pedal crank. The proprietor's references to paragraphs [0002] and [0011] do not alter the aforegoing conclusion. Paragraph [0002] merely notes a possible rotational driving unit 'such as a crank' and paragraph [0011] includes the phrase 'a rotational drive unit of a bicycle or crank' which may indicate alternatives. Neither of these unambiguously equates a crank with a rotational drive unit.

1.1.4 The proprietor's argument that the bush 23 is not fixedly coupled to the inner gear 13 is not accepted. Firstly it is noted that the primary function of the screw 22 is to axially secure the annular member 1 and the plate member 11 together; the circumferential drive transmission from the plate member 11 to the annular member 1, whilst supported by the screw 22 in the bore 10 formed in the base portion 8 of the annular member 1, is provided by way of the mount boss 18 extending into the bore.

Referring to Fig. 2, this shows bush 23 having a flange at its right hand end face against which the head of screw 22 pushes when tightened. This flange is also embedded in the annular member 1, as depicted in Fig. 2, such that tightening of the screw 22 will force the annular member 1 axially towards the plate member 11. If the bush 23 is accurately dimensioned to correspond in axial length to the base portion of the annular member 1, the bush will, by way of tightening screw 22, itself tighten against the plate member, corresponding to the claimed expression 'fixedly couple'. However, even if, as argued by the proprietor, the bush 23 does not extend to contact the plate member 11, the bush is nonetheless fixedly coupled to the plate member 11 on tightening of the screw via the annular member into which the bush is preferably molded. The proprietor's argument in this respect that the bush need not be fixedly molded into the annular member and could be loosely located on the mount boss 18 is not convincing, particularly in view of col. 3, lines 29 to 30 stating that the bush 23 can be placed in the bore 10 when the annular member 1 is molded. This would leave the skilled person in no doubt that the molding of the bush into the annular member results in the fixed coupling between the bush and the plate member irrespective of bush axial dimension.

1.1.5 The subject-matter of claim 1 is thus novel over D1. With no further arguments raised against the novelty of the subject-matter of claim 1 and the Board also seeing none as valid, the subject-matter of claim 1 is found to be novel (Article 54 EPC 1973).

1.2 Article 100(a) EPC 1973 - Inventive step

The subject-matter of claim 1 does not involve an inventive step.

1.2.1 As found under point 1.1.1 above, the subject-matter of claim 1 differs from D1 only in that the tubular member is metallic. Based on this difference, the most appropriate objective technical problem is to provide a suitable material for the tubular member.

D1 shows (see Fig. 2) the tubular member (bush 23) as a separate material from both the annular member 1 (plastic; col. 2, lines 33 to 34) and the plate member 11 (metal; col. 2, lines 61 to 62). Being inserted into the plastic annular member preferably by being molded into the annular member (see col.3, lines 29 to 30), the provision of a metallic tubular member would be an obvious option for the skilled person. A metal tubular member is not least an obvious option since it would protect the plastic annular member 1 from damage by taking the forces resulting from tightening the screw 22. To use metal bushes in moulded plastic parts to prevent damage or help in the mounting thereof is something well known to the skilled person in the field of mechanical engineering.

1.2.2 The proprietor's argument that D1 is directed to saving weight which would dissuade the skilled person from selecting a metal bush is not persuasive. The bush 23 in D1 is a physically small item which would not have a significant mass, whether manufactured from hard plastic, ceramic or metal. Thus, even if metal were selected as the bush material, the weight penalty, if any, would be very slight and not of such a proportion to dissuade the skilled person from its adoption.

1.2.3 Thus, starting from D1 and wishing to solve the objective problem of finding a suitable material for the bush, the skilled person would, through his general knowledge of suitable bush materials in such applications, provide a metallic bush and reach the subject-matter of claim 1 without exercising an inventive step (Article 56 EPC 1973). The main request is thus not allowable.

2. Auxiliary request 1

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 amendment to claim 1 to include 'a support arm portion having a mounting section' is not directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed. First it should be noted that whilst claim 1 does not explicitly define a 'single' support arm, its subject-matter covers this possibility due to the wording 'a support arm'. Figs. 1 to 5 in combination with col. 6, line 36 to col. 12, line 10 of the A-publication (corresponding to the application as originally filed) however clearly indicate five support arm portions for the depicted and described embodiment, rather than just a single one as now covered due to the amendment made to claim 1. There is also no indication in the originally filed documents that a single support arm portion was ever intended as part of the disclosure.

2.1.2 The Board finds the proprietor's argument, regarding the skilled person considering the technical relevance to the invention of the five support arm portions and coming to the conclusion that a single support arm portion was all that was required to fully define the invention, not persuasive. Indeed the basic premise of the proprietor's argument that the technical relevance to the invention was of importance when considering which features were disclosed to the skilled person, is invalid. As clearly indicated in G2/10, this is not the test to be applied when analysing an amended claim; the technical relevance is not considered. Of importance is solely that which the skilled person would directly and unambiguously see as being disclosed in the application as filed. In the present case, the sole embodiment directed to the claimed bicycle sprocket assembly includes five support arm portions (see col. 6, line 36 to col. 12, line 10) and nowhere is an indication to be found suggesting that a single support arm portion suffices for the bicycle sprocket assembly.

2.1.3 The proprietor's argument regarding the invention clearly having no link to the five support arm portions is not convincing. In this respect it is noted that the concept of what the 'invention' comprises may change over the course of examination and opposition dependent upon the way in which the claims are amended and which prior art is considered. As such, the argument that particular features of an embodiment are not to be considered as part of the disclosure due to the 'invention' not being related to these features, is not a valid method for establishing what was unambiguously disclosed by the original application documents to the skilled person. With the 'invention' not necessarily being constant, allowing such a basis for an amendment would result in different amendments being acceptable dependent upon the particular invention defined by the claims at any particular time. This is clearly not the standard to be applied, rather of importance is what the skilled person would directly and unambiguously see as being disclosed in the application as filed. In the present case, this is five support arm portions, not the single support arm portion introduced to claim 1.

2.1.4 The proprietor's argument that the word 'five' being placed in parentheses in col.9, line 16 onwards and line 39 onwards clearly indicated that this was an optional feature was also not convincing. As also argued by the opponent, even if the word five in parentheses were ignored, the remaining physical features in the sentences are still described in the plural, i.e. bolts, nuts, tubular members such that also here no basis exists to suggest just a single support arm portion ever having been intended in the application as originally filed.

2.1.5 The proprietor's reference to col. 11, lines 4 to 8 was also unconvincing in supporting its view regarding compliance with Article 123(2) EPC. This reference merely states that, due to preferably identical tubular members and identical attachment to the fastening parts, only one of the 'tubular members' will be explained and/or illustrated in detail. Thus, whilst only one tubular member is described in detail, it is clear that the embodiment as a whole includes more than one tubular member and thus more than just one support arm portion.

2.1.6 The further reference to claim 1 as originally filed which claimed 'at least one through hole' is also not persuasive regarding compliance with the requirement of Article 123(2) EPC. This feature does not explicitly present a basis for the limitation in claim 1 'including a support arm portion', it simply claiming at least one through hole. It also does not implicitly disclose the possibility of a single support arm portion, nor does it suggest to the skilled person that a single support arm portion is intended since it is clear that an embodiment in which a single support arm portion were present would not present a mechanically sound arrangement of the bicycle sprocket assembly unless special, and undisclosed, measures were taken.

2.1.7 It thus follows that the subject-matter of claim 1 does not meet the requirement of Article 123(2) EPC at least due to the addition of the feature 'including a support arm portion'. The auxiliary request 1 is thus not allowable.

3. Auxiliary requests 2 and 3

3.1 The subject-matter of claim 1 of each of these auxiliary requests also includes the feature 'including a support arm portion', found above not to meet the requirement of Article 123(2) EPC. The proprietor offered no further defence of these requests so the Board finds, for the same reasons as apply to auxiliary request 1, that the subject-matter of claim 1 of auxiliary requests 2 and 3 fails to meet the requirement of Article 123(2) EPC. Auxiliary requests 2 and 3 are thus not allowable.

4. Request for referral of a question to the Enlarged Board of Appeal

4.1 Article 112(1)(a) EPC 1973 requires the Board of Appeal during proceedings on a case, and in order to ensure uniform application of the law or if an important point of law arises, to refer any question to the Enlarged Board of Appeal, either of its own motion or following a request from a party to the appeal, if it considers that a decision is required for the above purposes.

4.2 In the present case, the proprietor has requested the referral of a question relating to the principles which apply for judging an intermediate generalisation under Article 123(2) EPC.

4.3 However, as pointed out above, under Article 112(1) EPC 1973 a question can be referred to the Enlarged Board only if the Board of Appeal considers this to be necessary. As follows from the findings under points 2.1 to 2.1.7 above, this is not the case here, since the Board of Appeal has been able to answer the question with reference to existing case law of the Enlarged Board of Appeal. The principles which apply for judging an intermediate generalisation are already clear from G2/10 (see item 4.3) which cites the principles which are to be used 'for assessing any amendment for its compliance with Article 123(2) EPC' as the gold standard and having been established in G3/89 and G11/91. The words 'any amendment' evidently also applies to amendments of the type which the proprietor refers to as 'intermediate generalisations'. Also, in the cases cited by the proprietor (T1906/11, T0248/12, T0834/13 and T0801/13), no divergent interpretations of the principles contained in G2/10 for judging amendments are anyway apparent, those principles being that an amendment must be 'directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed'.

4.4 The request for referral of the above questions to the Enlarged Board of Appeal must therefore be refused.

5. Auxiliary request 4

5.1 Non-admittance - Article 13(1) RPBA

Auxiliary request 4 is not admitted into the proceedings as it fails at least to prima facie overcome the objections to Article 123(2) EPC of the higher ranking requests.

5.1.1 In appeal proceedings, the Rules of Procedure of the Boards of Appeal (RPBA) apply. Article 12(2) RPBA specifies that the statement of grounds of appeal and reply must contain the party's complete case. After filing the grounds of appeal or reply, any amendment to a party's case may be admitted and considered at the Board's discretion, which is 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.

5.1.2 The proprietor filed auxiliary requests 4 to 7 in response to the Board's preliminary opinion and, in fact, at a very late stage of proceedings, exactly one month prior to oral proceedings. The request thus represented a change to the respondent's complete case as defined in Article 12(2) RPBA and its admittance is to be considered at the Board's discretion under Article 13(1) RPBA. It is also noted that the proprietor submitted a letter dated 28 June 2013 presenting further arguments in support of its main and auxiliary requests 1 to 3 on file, yet the proprietor elected, at that opportunity to react to the opponent's complete appeal case, not to file further auxiliary requests, even though the objection under Article 123(2) EPC in this respect had been made.

5.1.3 In the present request, the feature 'a support arm portion' objected to in auxiliary requests 1 to 3 is replaced by the feature 'a plurality of support arm portions'. In effect this wording includes within its scope anything from two to an infinite number of support arm portions. This range in number of support arm portions is however not unambiguously derivable from the originally filed application documents, in which only five support arm portions are directly and unambiguously disclosed. The subject-matter of claim 1 thus at least prima facie fails to meet the requirement of Article 123(2) EPC.

5.1.4 The proprietor's reference to several passages in the description where 'a plurality (five) ...' is presented in combination with elements associated with the support arm portions does not persuade the Board that the requirement of Article 123(2) EPC is met in the amended claim. All the references to 'a plurality (five)' are included in the single embodiment of the bicycle sprocket assembly found in the description which specifically depicts and describes an embodiment with exactly five support arm portions. It can thus not be unambiguously derived that the expression 'a plurality (five)' found within the description of this embodiment intends a simple plurality of support arm portions rather than specifically five.

5.1.5 Therefore, the subject-matter of claim 1 is not prima facie allowable, which would be necessary for fulfilling the need for procedural economy and consequently admitting the request into the proceedings at such a late stage. Accordingly, the Board exercised its discretion under Article 13(1) RPBA not to admit this request.

6. Auxiliary requests 5 and 6

6.1 The subject-matter of claim 1 of each of these auxiliary requests also includes the feature 'a plurality of support arm portions', found above not to meet the requirement of Article 123(2) EPC. The proprietor also conceded that the further amendments to claim 1 in these requests did not affect the findings related to auxiliary request 4. The Board therefore finds, as for auxiliary request 4, that the subject-matter of claim 1 of auxiliary requests 5 and 6 at least prima facie fails to meet the requirement of Article 123(2) EPC. The Board thus exercised its discretion not to admit auxiliary requests 5 and 6 into the proceedings (Article 13(1) RPBA).

7. Auxiliary request 8

7.1 Non-admittance - Article 13(1) RPBA

Auxiliary request 8 is not admitted into the proceedings as it fails to prima facie overcome the objections to Article 123(2) EPC of the auxiliary requests 4 to 6.

7.2 At least two of the amendments made to claim 1 prima facie fail to meet the requirement of Article 123(2) EPC.

7.3 The first of these amendments concerns the last feature in claim 1 'the second contact surface is arranged and configured to contact the mounting section of the support arm portion so that axial tightening force is applied to the metallic tubular member instead of the synthetic resin fastening part when the first sprocket is fixed by the fastening member'. This details only some of the features associated with the arrangement and configuring of the second contact surface which are disclosed to the skilled person in combination from col. 11, lines 8 to 43. This passage in col. 11 is to be read as a whole, since it details how tightening of the fastening member (80) acts upon the first contact surface (92c) in order to urge the synthetic resin fastening part (91) into contact with the mounting section (76a). The embodiment particularly describes from line 8 to 24 how the flange section (92b) of the tubular member (92) fits in an annular groove of the synthetic resin fastening part (91) in order to transfer force applied by the fastening member (80) to the synthetic resin fastening part (91). The omission of at least this detail of how the second contact surface is 'arranged and configured' to contact the mounting section of the support arm portion, results in this feature being an unallowable intermediate generalisation of those features described in combination in the above referenced passage of the originally filed application.

7.3.1 The proprietor's argument that claim 5 as originally filed provides the 'arranged and configured' wording taken up into claim 1 does not alter the Board's conclusion. This claim does use the 'arranged and configured' wording, although specifically relating to the second contact surface (92d) being 'configured and arranged to contact the rotational drive unit'. In present claim 1, however, the rotational drive unit has been further detailed as being the mounting section (76a) of the support arm portion (76), which detail is not taken from the claims as originally filed, rather is only detailed in the passage of the description as originally filed from col. 11, lines 8 to 43 as indicated above. Thus, claim 5 cannot provide the required direct and unambiguous basis for this amended feature in claim 1, the basis being col. 11 lines 8 to 43, where this passage has further features included in the embodiment disclosed in combination with those taken-up into the claim. No basis for not including also those omitted features can be recognised.

7.4 The second amendment prima facie failing to meet the requirement of Article 123(2) EPC is the feature 'wherein the first sprocket (71) and the second sprocket (76) are mounted on both opposite axial sides of the mounting sections (76a)', first introduced in auxiliary request 6 but not forming part of the decision for that request. The alleged basis for this amendment is col. 9, lines 14 to 19 in which, with reference to Fig. 5, a first axially extending fastening hole 76b is disclosed allowing the sprockets 71 and 72 to be fastened simultaneously to the mounting sections 76a. From both Fig. 5 and the statement that both sprockets can be 'simultaneously' fastened, the fastening hole 76b must clearly then be a through-hole which takes the common fastening bolt 80 for both sprockets. This is not reflected in the features introduced into claim 1, where neither a simultaneous fastening, nor features implicitly indicating the structural arrangement necessary for this to occur, have been included in the claim. The scope of claim 1 thus covers, for example, two blind holes for fastening the sprockets from either side, which represents an embodiment extending beyond that originally disclosed in the application documents.

7.4.1 The proprietor's argument that fastening holes 76b were implicitly present in the mounting sections 76a and thus allowed simultaneous connection is not persuasive. Claim 1 solely mentions the mounting sections (76a) to which the sprockets are attached but provides no detail of how this is achieved, let alone that both sprockets are simultaneously attached via through holes in the mounting sections. This feature of claim 1 thus represents an unallowable intermediate generalisation of a combination of features disclosed as a single embodiment in the originally filed description.

7.5 The subject-matter of claim 1 of auxiliary request 8 thus fails to prima facie overcome the objections to Article 123(2) EPC at least for the two reasons mentioned above. The Board thus exercised its discretion not to admit auxiliary request 8 into the proceedings (Article 13(1) RPBA).