T 1763/15 25-02-2019

1. Admissibility of 2nd and 3rd auxiliary requests

1.1 According to article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA) the board has the power to hold inadmissible requests which could have been pre­sented in the first instance proceedings.

1.2 The main request (patent as granted) and 1st to 3rd auxiliary requests were filed with the grounds of appeal. The main request and the 2nd and 3rd auxiliary requests do not correspond to any of the requests presented during the opposition procee­dings.

1.3 With the letter of 21 January 2019 (page 2, beginning of the second paragraph after the table) the respondent no longer contested the admissibility of the main request or of the 1st auxiliary request.

1.4 Claim 1 according to the 2nd auxiliary request com­pri­ses a combination of claims 1 and 13 of the patent as granted.

Claim 1 according to the 3rd auxiliary request com­pri­ses replacing the steps of claim 1 with the more numerous steps of claim 12 of the patent as granted.

The 2nd and 3rd auxiliary requests are thus prima facie based on granted dependent claims and thus cannot come as a surprise to the respondent even though the subject-matter of these dependent claims was not dis­cussed in detail during the opposition proceedings. Although these requests could have been filed during the oppo­si­tion proceedings, they were filed early in the appeal proceedings, namely with the grounds of appeal. The respondent had an opportunity to respond to these re­quests, which they did. In addition, since the appel­lant is adversely affected by the deci­sion of the op­position division, the board - at present - considers it legitimate for a losing patent proprietor that they attempt to save their patent by introducing subject-matter from dependent claims into claim 1. In conse­quence, the board uses its dis­cretion to admit the 2nd and 3rd auxi­liary requests into the proceedings.

2. Novelty of claim 1 as granted (Article 54 EPC)

2.1 According to established case law, it is a prerequisite for the acceptance of lack of novelty that the claimed subject-matter is "directly and unambiguously derivable from the prior art". In other words, it has to be "beyond doubt - not merely probable - that the claimed subject-matter was directly and unambiguously disclosed in a patent document" (Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, page 102). In addition, according to the boards' settled case law, the technical disclosure in a prior art document must be considered as a whole (see T 56/87, OJ 1990, 188).

2.2 Document D1 concerns a method for laying a pipeline having an inner corrosion proof cladding onto a seabed from a laying drum on the lay barge (title, page 1, lines 6 to 11). The method on page 2, lines 15 to 29 of document D1 involves the following steps a) to e):

"a) a section of the pipeline is reeled onto a pipe laying drum, whilst an overpressure of 5-25 bar is maintained within the section by means of a pressurised fluid inside the section,

b) a further pipeline section is joined to the sec­tion already reeled onto the pipe laying drum, whilst the pipeline is motionless without mecha­ni­cal movement, as the overpressure can be relie­ved as long as the sections are without mechani­cal movement,

c) an overpressure of 5-25 bar is applied within the sections and the further section is reeled onto the pipe laying drum,

d) several sections are joined together and reeled onto one or several pipe laying drums by repea­ting step b) and c) until the predetermined pipe­line length is achieved,

e) the pipeline is laid from the lay barge onto the seabed using conventional method, whilst an over­pressure of 5-25 bar is maintained within the pipeline by means of a pressurised fluid until the pipeline is correctly placed onto the seabed".

2.3 In the context of this method, the parties only diffe­red with respect to whether in step b) the overpressure from step a) is maintained during joining or not.

2.4 In step c) the overpressure is applied within the sections and the further section is reeled onto the pipe laying drum. If the overpressure were to have been maintained during joining, there would be no need to apply the overpressure again "to the sec­tion already reeled onto the pipe laying drum" and in step c) only the singular "section" would have been used instead of the plural "sections". The board also cannot accept that the plural "sections" is used in step c) in anti­ci­pation of the repetition of steps b) and c) indicated in step d): Why would this only apply to step c), but not to step b) where only "a further pipeline section is joined to the sec­tion already reeled onto the pipe laying drum"?

2.5 In addition, document D1 considers it to be a feature of importance, "that the pipeline or pipeline sections shall have no mechanical movement when the prescribed overpressure is not applied within the pipeline or sec­tions thereof. The term "without mechanical move­ment" means no reeling onto or unwinding from the pipe laying drum; or lowe­ring of the pipeline from the lay barge onto the sea­bed, without the prescribed overpressure" (page 2, line 30 to page 3, line 3).

Document D1 thus emphasises that overpressure is manda­tory during any movement of the pipe. Against this con­text, the fact that joining occurs "whilst the pipeline is motionless without mechanical movement, as the over­pressure can be relieved as long as the sections are without mechanical movement" from step b) is under­stood by the skilled person both as an indication that the overpressure is relieved and as an explanation of why this is possible, namely, because "the pipeline is mo­tionless without mechanical move­ment". It is only when "the pipeline is motionless without mechanical move­ment" that the overpressure can be relieved without the inner cladding buckling or wrinkling (page 1, lines 28 to 34).

2.6 It was advanced on behalf of the respondent that the relief of the overpressure is to be considered optional in document D1. This relates to the use of the verb "can" in step b) (page 2, line 21 and page 5, line 14). Although the verb "can" may be an indication of an op­tional fea­ture, it is also used to designate the cir­cumstances in which something is possible, as indicated by the preceding "as". As already set out above, the skilled person considers the latter meaning to be the correct one for document D1 when read as a whole: in this case the circumstances are that there is "no mechanical move­ment" as further defined at the top of page 3 of document D1 (see point 2.5 above).

2.7 In consequence, there is no direct and unambiguous disclosure in the method of page 2 of document D1 of "joining the first pipe section with the second pipe section wherein at least one of the first and second pipe sections maintains the pressurised fluid therein" (step (d) of claim 1 as granted versus steps b) and c) of document D1).

2.8 In addition, document D1 considers the situation when the entire pipeline cannot be reeled onto one pipe laying drum and it is necessary to join pipeline len­gths on different pipe laying drums (page 4, lines 12 to 16). One alternative is to use a method for joining the pipeline sections by installing an ice plug on either one or both sides of the joint, whereby the overpressure can be maintained (page 4, lines 16 to 19).

2.9 However, this passage does not directly and unambi­guously disclose that the resulting pipeline sections are spooled onto a reel.

2.10 On the contrary, when such joining occurs on the lay barge, the skilled person would avoid such unnecessary spooling and resulting unnecessary additional bending of the pipeline and instead proceed directly with laying the pipeline on the seabed. Since document D1 as a whole is concerned with a "method for laying a pipeline onto a seabed from a lay barge" (see claim 1 of document D1) and both the paragraphs before and after the one in lines 12 to 20 of page 4 are con­cerned with the situation on the vessel (page 4, lines 7 to 9) or lay barge (page 4, lines 21 and 22) and in the absence of any statement to the contrary, it is impli­cit for the skilled person that the passage page 4, lines 12 to 20 also mainly relates to the situation off-shore.

2.11 Since there is no direct and unambiguous indication in document D1 that particular teaching of the passage on page 4, lines 12 to 19 is to be combined with the method set out on page 2, it is not possible to combine a parti­cular step from the passage on page 4, lines 12 to 19 with the method of page 2 when considering a lack of novelty objection.

2.12 Therefore, the subject-matter of claim 1 of the patent in suit is new with respect to the teachings of docu­ment D1 (Article 54 EPC).

3. Remittal

3.1 According to article 111(1) EPC, the board of appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

3.2 The issue of inventive step has not yet been examined by the opposition division. Furthermore, the appellant explicitly expressed a preference for remittal while the respondent did not argue against it. For these special reasons, the board considers it appropriate to exercise its discretion under Article 111(1) EPC and remit the case to the department of first instance for further prosecution.