T 0013/15 08-02-2017

1. The appeal is admissible.

2. In the Board's view the Opposition Division correctly exercised its discretionary power pursuant to Article 114(1) EPC when admitting into the opposition proceedings the line of arguments based on E4 related to lack of novelty of granted claim 1.

First, contrary to the Patentee's allegations, there is absolutely no evidence that these arguments were wilfully and intentionally submitted late, only during oral proceedings, in order to put the Patentee at a disadvantage. The Opponent's statement in this respect is entirely plausible, to the extent that it realized the relevance of E4 only when preparing for the oral proceedings on the preceding day.

Second, the Opposition Division correctly allowed the Opponent to outline its arguments (see minutes, points 8, 9, 10, 11), in order to be able to understand their nature, and the Patentee to comment on these arguments. Thereafter the oral proceedings were interrupted (see minutes, point 10) to allow close consideration of these arguments by the Opposition Division and by the Patentee, and to allow the Opposition Division to deliberate on their admission. Thus, the Patentee had enough time to prepare for a response and its right to be heard was not violated. When the oral proceedings were resumed the Opposition Division announced its decision to admit said arguments (see minutes, point 11) and the Patentee presented its response during the following discussion (see minutes, point 12). What is more, the minutes demonstrate that admission of said arguments occurred only after listening to both parties' arguments and after deliberation.

The Respondent argued that the Opposition Division should have assessed the relevance of the arguments based on E4 by means of a prima facie examination.

The criterion of prima facie relevance is indeed used by the departments of first instance when deciding whether to admit facts, evidence or grounds for opposition not filed in due time. If these are prima facie relevant, then according to the Guidelines for Examination (see E-V, 2.) "the competent department has to take such grounds, facts or evidence into consideration, no matter what stage the procedure has reached and whatever the reasons for belated submissions. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2)".

Furthermore, in decision G9/91, the Enlarged Board of Appeal stated that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC 1973, should only take place before the Opposition Division in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of te European patent. The criterion of prima facie examination thus has to be applied by an Opposition division when deciding whether to admit a new ground for opposition.

However, there is no obligation for an Opposition to apply the principle of prima facie relevance in case of a new line of attack which is within the framework of a ground for opposition (here: lack of novelty, Article 100(a) EPC) and which is based on a document (here: document E4) which is already in the proceedings (E4 being cited and discussed in the notice of opposition, although only in respect of dependent claims). In fact, in the present case, the Opposition Division gave precedence to the principe of examination by the EPO of its own motion under Article 114(1) EPC, having regard to the fact that neither reasons of procedural economy (see point 6.1 of the of the impugned decision: "E4 was already in the proceedings from the beginning and it could be expected that arguments based on the teaching of E4 might be filed later in the proceedings") nor reasons of fairness in respect of one of the parties spoke against it. In fact, the Opposition Division considered that the Patentee could be expected to deal with the new line of argumentation during an interruption of the oral proceedings (see point 6.1 of the impugned decision: "to give the patent proprietor and the opposition Division sufficient time to study E4 and the arguments of the Opponent based on E4 the proceedings were interrupted"). This, in fact, was not contested by the Patentee as is apparent from the minutes of the oral proceedings before the Opposition Division.

Under these circumstances, the Board does not see any valid reason to conclude that the Opposition Division incorrectly exercised its discretionary power and thus set aside the decision of the Opposition Division to admit the line of argumentation of lack of novelty in view of E4.

3. The subject-matter of granted claim 1 lacks novelty over E4 (Article 54 EPC). The Patentee's generic arguments against the nature and quality of the evidence provided by E4 are rejected by the Board, these objections being to the extent that said evidence is solely (and not sufficiently clearly) derivable from the figures of this Japanese document and its machine translation. As a matter of fact, the discussion of novelty with respect to E4 (before the Opposition Division and before the Board) did not present any specific difficulties related to a proper interpretation of the disclosure of E4.

Concerning the substantive issues, both features (i) and (ii) are known from E4. In particular, the cap 14 (see E4, figures 1 to 4; paragraphs [0012], [0013], claims) is welded to the reinforcing element 11 and thus can be regarded as forming part of the reinforcing element. Moreover, claim 1 does not stipulate that the reinforcing element be integrally formed and the question whether said cap 14 contributes or not to strengthen said reinforcing element 11 is irrelevant, for anyway it is not prejudicial to its reinforcing function an does not in any way (negatively) affect this function. Further, cap 14 has a polygonal shape and constitutes a polygonal socket having multiple sides (see figure 2). Further, as shown by figure 1 (paragraph [0007]), the nuts 13 (having a polygonal cross section) are received in said sockets 14 and have a threaded bore coaxial with the holes formed in said reinforcing element 11. Finally, figure 1 clearly illustrates that the reinforcing element 11 and the nuts 13 are "embedded" in the molded wear pad material 10, 12, insofar as the term "embedded" does not necessarily entail complete enclosure nor direct contact. Also, the wear pad material 10, 12 obviously contributes to indirectly hold the nuts in place within the sockets, since the wear pad material contributes to holding in place the sockets, particularly during operation of the the crawler track, where external forces acting on the socket and the nut are countered and compensated for by reaction forces generated by the wear pad material.

4. For the same reasons as above, the subject-matter of claim 1 of auxiliary request 1, being identical with granted claim 1 (main request), is not new over E4.

5. The subject-matter of claim 1 of auxiliary request 2 is new over E4 (Article 54 EPC). Indeed, the feature of claim 1 according to which "the outer portions (70,72) being channel shaped in cross-section transverse to the length of the reinforcing element (34, 36)" (see feature (iii)) implies, by referring to the cross- section, that the outer portions are channel shaped throughout the whole transversal extension thereof. This feature is not disclosed in E4, not even in the region of the outer portions where the socket is formed, contrary to the Opponent's allegations. E4 shows (see figure 2) that even in this region the overall cross-section of the outer portion of the reinforcing element 11 is not channel shaped, for the cross-section of the socket constitutes only a portion of the overall cross-section of the outer portion of the reinforcing element in a transverse direction of the same.

6. The subject-matter of claim 1 of auxiliary request 2 involves an inventive step in in view of E4 and further documents E1 or E3, as well as the skilled person's common general knowledge (Article 56 EPC). The Opponent's arguments could not convince the Board. Specifically, feature (iii), distinguishing the invention from the disclosure of E4, does not result in an obvious manner from the combination of E4 with the skilled person's common general knowledge. The Opponent is right in that it is generally known and appropriate in various different situations to form ribs on constructional elements in order to reinforce and strengthen said elements. Nonetheless, the skilled person has at its disposal various different ways in which these ribs may be formed on said constructional elements, depending on the specific needs (e.g. acting external forces) and the specific structure of the constructional elements. The Opponent's arguments do not explain why the skilled person would specifically choose a reinforcing configuration according to feature (iii) of claim 1 and which incentive the skilled person would have to modify the wear pad apparatus in such a manner. Moreover, E4 likewise does not explicitly or implicitly hint at such a modification, for E4 does not deal with this technical problem. In addition, the actual structure and configuration of the wear pad apparatus as depicted in figure 1 of E4 does not suggest any real need for a measure according to feature (iii), for the relative thickness of the reinforcing element 11 and of base plate (or shoe) 20 is about the same and it is comparable to the thickness of the wear pad 10, 12.

Even if the skilled person, starting from E4, would consider E1 or E3, the same conclusions would apply as above. Analogously to the reasons given above, the skilled person starting from E4 would lack any incentive to modify the known wear pad apparatus in the way of feature (iii). E1 and E3 disclosing wear pad apparatuses with a structure and configuration different from those of the apparatus of E4, it is not obvious why, in the absence of any hint or suggestion, the skilled person would extract specific features which are designed and suitable as components and parts of a different construction or structure and translate these features into the apparatus of E4.