T 0672/14 17-01-2017

1. The appeal is admissible.

2. Subject-matter of the invention

The application concerns an apparatus for the singularization and separation of agricultural or vegetable products. As stated on page 4, paragraph 5, it is in particular sought to improve singularization even if the vegetables are still joined together by a stalk or stem, as for example in cherries and beans.

The solution is broadly provided by separation means for separating the vegetables including one or more cutting means placed aside a "V" shaped slot in which the vegetables are conveyed.

3. Main request and first auxiliary request- added-matter

3.1 Claim 1 as amended according to the main request combines claims 1, 2 and 3 as originally filed (see page 14 of the international publication WO2012/028382 with the following addition:

- the two opposed and inclined walls

- are flat

- and are basically joined by their lower edge,

- the two motorized belts (3A, 4A) are similarly flat and are substantially adhering to the respective said flat walls.

3.2 The examining division came to the conclusion that the added features of the two opposed and inclined walls and of the motorized belt were not derivable from the original filed figures alone, and that the reference to the the document cited as reference in the last paragraph of page 5 did not represent an acceptable source for the proposed amendments.

3.3 With his grounds of appeal the appellant submits that these features are supported by the original disclosure of the figures, whereby the features of the belt would also be derivable from page 6.

3.4 The board concurs with the appellant that the drawings form part of the whole original disclosure. However according to established jurisprudence, Case Law of the boards of Appeal, 8th edition 2016 (CLBA) II.E.1.12.1, 8th edition, 2016, for features to be included in a claim from figures their structure and function must be clearly, unmistakably and fully derivable from the figures, as well as the fact that they can be isolated from the other features shown but not claimed.

Considering the figures depicting the walls and belts as quoted by the appellant figures 2, 2A concern a first embodiment, figures 3, 3A the second embodiment, and figures 4, 4A the third embodiment, and figure 6A a further improved embodiment. From these very schematic drawings the same broad characteristics of the walls 3, 4, belts 3A, 4A and first body 30A, 31A are derivable. However, the schematic nature of the drawings is such that little detail is discernible regarding the walls and belts apart from the fact that the belt sections are thin and elongated, as will be apparent to the skilled person. In particular the skilled person cannot clearly recognise the way the belts cooperate with the walls from the drawings alone.

The appellant also mentions the passage on page 6, lines 2 to 5, where the belts are disclosed as being installed on the wall. However, the amendment to claim 1 now requires the belts and walls to be in an adhering relationship, which defines a more specific relationship than the originally disclosed belts that are installed on the walls. Such a specific relationship is not directly and unmistakably derivable for the figures referred to, as no particular surface structure for the belt and walls is recognisable from the schematic drawings. Hence by the addition of the feature that "the two motorized belts (3A, 4A) are .... substantially adhering to the respective said flat walls", the claim now contains subject-matter not directly and unambiguously disclosed in the application as filed.

In addition and irrespective of the above, the lack of a clear and unambiguous disclosure of the belts adhering the walls, the board is also unconvinced that, on the basis of figures and description as originally filed, the recessed walls can be unmistakably qualified as "flat". As can be seen in all the figures, the upper edges 7, 8 appear to be raised in relation to the wall surface 3, 4 which at their bottom edge connect in an upside down "W" configuration, from which the skilled person infers the presence of outwardly projecting recesses receiving the belts. It would therefore appear that qualification of the walls as "flat" is incomplete, if not incorrect. At least all the above recognisable characteristics should then have been included in an amended claim based on the disclosure of the drawings. This is so as in particular the recessed portions of the walls are also functionally related to the belts as they provide a guiding function. Consequently, omitting these recesses, and including in the claims the walls as flat in isolation results in unallowable intermediate generalisation, cf. CLBA, II.E.1.7.

3.5 The appellant also quotes the disclosure in EP 1 880 959 (D3) cited as cross reference. However, according to established jurisprudence, it is only possible to add features from a cross reference under particular conditions, cf. CLBA II.E.1.1.6, see in particular T689/90 (OJ 1993, 616) cited therein. The conditions elaborated therein require that the description of the invention as filed left the skilled reader in no doubt that protection was sought for those features; that they helped achieve the invention's technical aim and thus formed part of the solution to the technical problem underlying the invention claimed; that they implicitly clearly belonged to the description of the invention contained in the application as filed and thus to the content of the application as filed; and that they were precisely defined and identifiable within the total technical information contained in the

reference document. The corresponding conditions have also been included in the Guidelines for examination (see Chapter H-IV 2.3.1), on which the examining division relied in its decision.

It is questionable whether any of these conditions are met. The relevant passage in the present application referring to D3, the paragraph bridging pages 5 and 6 of the published application, states merely that the apparatus is "ideally of the type described in D3" and refers only to a conveyor line 5 and window 18 of figure 5 of D3. There is no mention of the wall or belt or their relationship to each other. Nor, when consulting figure 5 of D3 and the relevant passages in D3, is it apparent that these features are of any significance, let alone can be considered in isolation from the rest of the features shown in figure 5 of D3.

3.6 From the above the board concludes that the amendments concerned do not have a direct and unambiguous basis in the original disclosure, and therefore claim 1 according to the main request contains subject-matter extending beyond the content of the application as filed (Art 123(2) EPC).

3.7 The same conclusions hold for claim 1 of the auxiliary request 1 that includes the same added-features but which are merely moved into the preamble of the claim. Therefore claim 1 according to this first auxiliary request also contains subject-matter extending beyond the original disclosure, contrary to Article 123(2) EPC.

4. Auxiliary request 2

4.1 Claim 1 of this request removes the above added features which were the sole amendments identified by the examining division as contravening the requirements of Article 123(2) EPC and which led to the refusal of the application. Claim 1 now only contains in straightforward combination the features of claims 1, 2 and 3 as originally filed which were dependent on each other. Therefore claim 1 of the auxiliary request 2 does not comprise the above added-matter identified in relation with claim 1 of the main request and first auxiliary request.

The board therefore concludes that these amendments to claim 1 according to the second auxiliary request comply with the provisions of Article 123(2) EPC.

5. Remittal

As also observed by the appellant on page 2 of the grounds of appeal, the appealed decision only considered the issue of added subject-matter. The patentability, in particular novelty and inventive step, of claim 1 was not discussed. Therefore, the board considers it appropriate to remit the case to the first instance for further prosecution pursuant to Article 111(1) EPC. Furthermore, as the Board holds auxiliary request 2 to be allowable with respect to the sole ground of refusal, there is no need for oral proceedings in accordance with the final, conditional request of the appellant.