T 0375/16 07-03-2019

1. The subject-matter of claim 1 as maintained by the Opposition Division in the contested decision, i.e. in accordance with the third auxiliary request of the patent proprietor in appeal proceedings, does not involve an inventive step in view of E1 in combination with common general knowledge (Article 56 EPC).

1.1 This subject-matter corresponds to the alternative (ii) of the subject-matter of claim 1 of the main request and the first and second auxiliary requests. As a consequence, as accepted by the appellant (patent proprietor) during the oral proceedings before the Board, the finding of lack of inventive step in respect of the subject-matter of claim 1 according to third auxiliary request also applies to claim 1 of these higher ranking requests.

1.2 In line with the Opposition Division in its decision, the differences between the subject-matter of claim 1 as maintained and the tire and electronic device assembly of E1 (see slide 8, left figure) are:

(a) the transponder device and at least a portion of the dipole antenna being at least partially embedded within the compound having compatible permittivity and conductivity with operation of the dipole antenna; and

(b) the transponder tag is operably mounted to the tire in a position at a distance in a range of from 10 mm to 40 mm from the apex component end.

This was not disputed by the appellant (patent proprietor) nor by opponent 2.

1.3 The proprietor alleges that features (a) and (b) provide a synergetic effect for solving the problem of providing a tire having a transponder embedded in which the durability of the tire is not degraded, readability of the transponder is suitable, and incorporation into the manufacturing process is efficient. This problem amounts to finding a position for the transponder tag which provides a compromise among the aforementioned durability, readability and manufacturing (see paragraph [0028] of the contested patent). The prior art does teach the features of this solution in combination, but only in an isolated manner. For instance, D4a discloses feature (a) and D14 different locations for the transponder in the side wall of the tire. However, the question at hand is whether the skilled person would arrive to the solution and not if he could. No guidance is found in the state of the art which would prompt the skilled person to the claimed solution.

1.4 The Board however concurs with the opponents in that the combination of features (a) and (b) of claim 1 represents an aggregation of features which does not provide any synergetic technical effect. According to the patent specification the compound in which the transponder device is embedded is not disclosed in relation to its positioning within the tire (see paragraph [0023] and [0024] of the patent) and no combined technical effect associated to the compound and the specific claimed position of the transponder is identified. The compound must simply be such as not to interfere with the antenna performance and to provide a suitable integration of the rigid electronic device to the tire rubber neighbouring components.

Further, the specification does not disclose any particular technical effect associated with the specific claimed location of the tag in a range of from 10 mmm to 40 mm from the apex component end. The specification generally explains that the position of the transponder tag within the tire has to be chosen in order to meet a compromise between good readability of the tag and tire durability and stability together with tag protection (see paragraphs [0027] to [0031] of the patent specification). The only embodiment where the tag is above the apex component end is the one of figures 7A and 9A, and according to the description (see paragraph [0028]) this position is advantageous in achieving a good reading but disadvantageous to tire and tag durability.

1.4.1 The proprietor admits that embedding a transponder tag and an antenna in a rubber composition for tire integration (feature (a)) is as such known already for quite some time for the skilled person and evidenced by D4a (see also E2, pages 42 and 45, as pointed out by the opponents).

Therefore, embedding the transponder tag of E1 in such a compound for its integration in the rubber of a tire is obvious to the skilled person.

1.4.2 Regarding feature (b), E1 does not specify any measures and distances for the different components of the tire assembly. As mentioned above, according to the patent specification the specific selection of a distance from a range between 10 mm to 40 mm from the apex component end is not explained as purposive (no additional technical effect related to it). This distance is expressed in absolute terms in claim 1 but the claim leaves open other dimensions of the tire and its components. The tire of clam 1 could be a passenger car tire, a tractor tire, aircraft tire or any other kind of tire with completely different dimensions. The claimed range for the position thus amounts merely to a location within the tire sidewall which the skilled person would consider when putting into practice the tire of E1 in a specific application and bearing in mind the above mentioned compromise. Feature (b) cannot thus justify an inventive step.

1.5 The contested decision is therefore to be set aside.

2. Claim 1 of auxiliary request 4 is not clear (Article 84 EPC).

2.1 Claim 1 differs from claim 1 as granted in that it is only limited to the alternative (i), the alternatives (ii) and (iii) being deleted, and further including the following feature for the location of the tag within the tire:

"and radially inward of the ply ending".

In dispute is whether the added wording is open to a clarity analysis and whether it brings an unclarity into claim 1 or not.

2.2 According to the decision of the Enlarge Board of Appeal G 3/14 (see Official Journal of the EPO 2015, 102) in considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

2.2.1 The appellant (patent proprietor) alleges that the added feature does not introduce a non-compliance with Article 84 EPC and is therefore not open to a clarity examination. The wordings "ply ending" and "radially above the ply ending" were already present in claim 1 as granted, so that the added wording "radially inward of the ply ending" cannot introduce an unclarity which was not present already in claim 1 as granted.

In his argument, the appellant (patent proprietor) construes the claimed ply ending as being the ply end line along the tire circumference. No other technical meaningful interpretation of the term is possible.

However and in line with the opponents, it is clear to the skilled person from the patent specification (see paragraphs [0007], [0026], [0029] and [0031], in combination with figures 7A to 9B and claim 1) that the ply ending is defined as the end portion of the ply that wraps around the bead 30 and not solely as the ply end line or edge, unlike the chafer ending/end 52 and the apex ending/end 33. The ply end line in the figures of the patent is not wrapped around the bead and consequently cannot correspond to the claimed ply ending. In contrast, the end portion of the ply 34 (see figure 9A) folds and curves around the bead 30. This meaning is further confirmed with the specific reference to the edge of the ply ending in paragraph [0031] of the patent.

Accordingly, the terms "ply ending" and "radially inward of the ply ending" of claim 1 are as such clear to the skilled person, the ply ending representing the end portion of the ply wrapped around the bead.

Yet the inclusion of the feature "radially inward of the ply ending" does bring along an unclarity within claim 1 which was not present in claim 1 as granted. Indeed, a contradiction has been introduced into the claim in the sense that all conditions for the location of the transponder tag within the tire defined in claim 1 cannot be fulfilled. On the one hand the tag is mounted in a position between the apex component and the sidewall and radially between the chafer component end and the apex component end and, on the other hand, radially inward of the ply ending. These two conditions are mutually exclusive (see figures 7A to 9B of the patent) and as a result the position of the tag is not clearly defined in the claim (Article 84 EPC).

2.3 As a consequence, claim 1 according to the fourth auxiliary request is open to an examination of clarity, which leads to the finding that it does not meet the requirements of Article 84 EPC.

2.4 The Board admitted the fourth auxiliary request in the proceedings essentially because claim 1 thereof is a limitation of claim 1 of the main request to alternative (i) and because it had to be expected that this alternative could form the subject of discussions during the oral proceedings. There is no need, however, to give further details here as this request anyway falls for lack of compliance with Article 84 EPC.

3. The fifth auxiliary request is not admitted in the appeal proceedings pursuant to Article 13(1) RPBA.

3.1 The patent proprietor argued that the amendment introduced in claim 1 of this request addressed the different interpretation of the ply ending which resulted in the lack of clarity of claim 1 of the fourth auxiliary request. Specifying that the location is radially inward of the edge of the ply ending overcomes the contradiction in the claim and reflects what the proprietor always meant.

3.2 According to Article 13(1) of the RPBA, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

3.3 In the case at hand, the issue of interpretation of the term "ply ending" was part of the contested decision (see page 8, point 2.1.c), of the statement of grounds of appeal of the proprietor, of the reply of the opponent 2 from 12 September 2016 (see point 2), as well as of the communication of the Board pursuant to Article 15(1) RPBA (see point 2.1). However, the proprietor chose not to file any requests addressing the conflicting issue at any stage of the appeal proceedings up to the oral proceedings and after the discussion on Article 84 EPC for the fourth auxiliary request took place.

Additionally, the amendment introduced is not clearly allowable since it gives rise to new issues that have to be the object of further discussions, in particular, regarding the issue of intermediate generalisation (Article 123(2) EPC) since the feature in question has been taken solely from figures 7B and 9B.

Consequently, considering that the fifth auxiliary request was filed at the latest stage of the appeal proceedings and considering the need for procedural economy, the Board exercised its discretion not to admit it into the appeal proceedings.