T 0886/15 (Power supply circuit board with radiation plate / Murata Manufacturing Co.) 01-10-2020

Admissibility of the patentee's requests

1. The main request and auxiliary requests 1 and 2 were initially filed with the grounds of appeal as auxiliary requests 2, 4, and 6, respectively. They differed from the requests underlying the appealed decision in that "at least a portion of the coil element does not overlap with the radiation plate...", had been amended in order to exclude the possibility of the coil element not overlapping the radiation plate at all, which the Opposition Division considered to define added subject-matter.

2. The main request and auxiliary requests 1 and 2 (former auxiliary requests 2, 4 and 6) were filed in reaction to the decision issued by the Opposition Division. It was generally accepted, until the introduction of the new rules of procedure for the boards of appeal (RPBA 2020), that a fair attempt at amending in view of the reasoning relied upon by the first instance would justify their admission into the appeal procedure. This relies on the understanding that the appellant might have thought, in good faith, that its arguments would persuade the Board.

3. The current requests were filed in response to the communication of the Board. Their admissibility is to be assessed on the basis of the new rules of procedure, which entered into force on 1 January 2020. While acknowledging that the main and auxiliary requests 1 and 2 constitute amendments in the sense of Article 12(4) RPBA 2020, the Board holds that the above considerations justify their admissibility under Article 13(1) RPBA 2020.

4. The admissibility of the main request and auxiliary requests 1 and 2 appears all the more justified because the amendments made with regard to the main request underlying the impugned decision are straightforward from a technical point of view and meet the criterion of convergence.

5. In contrast, auxiliary requests 3 and 4 were filed for the first time in reaction to the communication of the Board.

6. The versions of claim 1 in auxiliary requests 3 and 4 result from claim 1 of auxiliary request 2, by the incorporation of additional features regarding the claimed product, pertaining to the embodiment of Figure 23. The Board considers that they address the comments in its provisional opinion that the requests then on file possibly defined non-allowable intermediate generalisations of this specific embodiment.

7. The Board first notes that claim 1 of auxiliary requests 3 and 4 constitute amendments to the patentee's case in the sense of Article 12(4) RPBA 2020. It further observes, with regard to the discussion and decision regarding the merits of the previous main and auxiliary requests 1 and 2, that the absence of a clearly identifiable effect regarding the coupling of the partly overlapping coil element with the radiation plate did not permit the Board to establish whether a functional relationship existed between the selected features of Figure 23 and those which have been omitted; and, as the case may be, what that relationship might have been. If, on the other hand, the appellant had been able to persuade the Board that no such relationship existed, this would have implied that the amendments were without effect on the questions of inventive step (a further objection that has been raised by the respondent).

8. It is thus considered that the amendments introduced in auxiliary requests 3 and 4 are unlikely to solve the pending issues as to added subject-matter and inventive step (Article 13(1) RPBA 2020).

9. In conclusion, the main request and auxiliary requests 1 and 2 are admitted into the appeal proceedings. Auxiliary requests 3 and 4 are, however, not admitted into the appeal proceedings.

Main request - added subject-matter (Article 123(2) EPC)

10. The amendment introduced in claim 1 of the main request compared to claim 1 of the main request underlying the impugned decision is intended to clarify that a first portion of the coil element does not overlap with the radiation plate while another portion does.

11. The added features have no literal basis in the original application documents. This is not contested by the appellant, who, however, argues that a basis for the amended feature is provided by the patent specification as a whole, which consistently refers to two types of radiations plate, a band-shape electrode and a plate-shaped electrode.

12. In the appellant's view, the drawings illustrating the various embodiments of the invention have to be construed with this information in mind. As a consequence, the basis for the proposed amendments is not limited to the only embodiments of figures 6 and 23, but includes all eighteen embodiments of the invention. Because of of the reduced width of a band-shaped electrode, the coil member only partially overlaps it, as for example shown in figures 6 and 23.

13. The patent specification, however, is devoid of any explicit or implicit indication that the drawings refer indiscriminately to both band-shaped electrodes and plate-shaped electrodes. In the absence of any such indications, the argument according to which the large number of embodiments establishes that the structural specificities of the various embodiments are not essential for the invention, thus justifying their omission from the claim's definition, fails from the start.

14. In view of the embodiments of the invention disclosed in relation with figures 6-8 and 23-25, it has to be established whether these embodiments could also constitute, on their own, a sufficient basis for the claim's definition.

FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC

Figure 6 Figure 23

15. While Figure 6 suggests that a portion of the power supply circuit board 10 overlaps the radiation plate 21 while another portion does not, it cannot establish that the same applies to the coil element incorporated in it. Figures 7 and 8, which pertain to the same embodiment, do not add any valuable information in this respect.

16. Figure 23 contains more details regarding the relative positioning and shape of the various elements constituting the product. It appears to constitute a more promising support for the recited features in claim 1. If it is further assumed, in favour of the appellant, that Figure 23 discloses a coil element partly overlapping the radiation plate - which is contested by the opponent - the question then to be answered is whether said feature can be selected from the embodiment while omitting all other elements depicted in said figure and disclosed in the corresponding section of the description.

17. The selection of some features from a group of features originally disclosed in combination is allowable under Article 123(2) EPC if the selected and omitted features are neither structurally nor functionally linked. It is only when these conditions are met that the intermediate generalisation resulting from the selection can be considered allowable.

18. The magnetic coupling between the coil element and the radiation plate depends on a multiplicity of parameters. It is directly influenced, among other things, by the distance separating the coil from the radiation plate, the amount of magnetic flux intercepted by the plate, the magnetic permeability of the material constituting said plate, the orientation of the coil element, the number of loops it incorporates, the surface they encompass, ...

19. The patent specification explicitly refers to the use of a non-magnetic body for the radiation plate 20. Explicit reference is made to an aluminium or copper foil (cf. page 23, lines 16 - 20) which are metals with permeabilities similar to that of air. Under these circumstances, the fact that a part of the magnetic flux will not flow through the radiation plate, as a consequence of a portion of the coil element not overlapping with the radiation plate, appears deprived of any practical meaning.

20. In the absence, in the drawing and the corresponding portion of the description, of any indication as to the effects resulting from a first not overlapping and second portion overlapping the radiation plate, it is impossible to recognise whether the conditions for selecting a feature from its context, recalled above, are fulfilled.

21. A further consequence is that it is impossible for the skilled person to recognise what purpose is meant to be achieved by the selected features in the context of the invention. They thus cannot be considered to be the deliberate result of technical considerations directed to the solution of the technical problem involved (cf. T 398/00, point 3.4). In the absence of any identified technical purpose justifying the features in question, their selection in claim 1 is purely arbitrary. Their introduction into claim 1 of the main request results only from the intention of defining an artificial difference with the prior art.

22. The introduction of the features directed to the coil element having a first portion not overlapping the radiation plate and a second portion overlapping the radiation plate defines new subject-matter in contravention of Article 123(2) EPC.

First and second auxiliary requests

23. The additional feature introduced into claim 1 of auxiliary request 1 as to the spiral shape of the coil element does not affect the finding developed above with regard to the main request, as conceded by the appellant.

24. The same applies to the added feature regarding the winding axis of the coil element being perpendicular to the radiation plate which was introduced in claim 1 of auxiliary request 2.