T 0762/16 01-04-2019

I. With the decision posted on 21 January 2016, the opposition division decided that the patent EP-B-1 664 562 and the invention to which it related, according to the then valid auxiliary request 3, met the requirements of the EPC.

II. Both appellant 1 (patent proprietor) and appellant 2 (opponent) filed appeals against this decision.

III. Oral proceedings took place before the Board on 1 April 2019.

IV. The requests at the end of the oral proceedings were as follows:

Appellant 1 requested that the decision under appeal be set aside and the patent be maintained on the basis of the main request filed as auxiliary request 4A during the oral proceedings before the Board.

Appellant 2 requested that the decision under appeal be set aside and the patent be revoked.

V. Main request

a) Claim 1 reads as follows:

"(M1) A bearing assembly comprising:

a bearing (1) having an outer race for reception in a bearing housing (2) formed in a casing (3) and an inner race to be journaled onto a shaft (4), wherein

(M2) a retaining plate (6) is mounted for relative rotation with respect to the outer race and (M3) provided with fastening means (7) to cooperate with fastening means (9) provided in or on a wall of the casing (3) opposing the retaining plate (6); (M4") the retaining plate (6) being mounted by means of a plurality of press action loose fitting clinching lips (17) (M5') formed along arcs spaced around the circular inside edge of the retaining plate (6) (M6a) which are plastically deformed (M6b) to engage in a circular groove (21) formed in a circular shoulder (20) in the outer race of the bearing (1)."

b) Claim 5 reads as follows:

"(N1) A method of forming a bearing assembly comprising the steps of:

first mounting a retaining plate (6) on an outer race of a bearing (1) so that the retaining plate can rotate relative to the outer race whereby, (N2) when the bearing (1) is subsequently seated in a bearing housing (2) it is axially retained by the retaining plate (6) (N3) which is secured by fastening means (9) acting between a casing (3) in which the bearing housing (2) is formed and the retaining plate (6); (N4) including the steps of:

forming a shoulder on an outer edge of an outer race of the bearing (1),

forming a groove in the shoulder,

(N5) forming the retaining plate (6) by punching a hole in strip material,

(Nx) punching a sizing nose onto the retaining plate (6) in an arc around the hole,

(N6) forming a plurality of clinching lips along arcs spaced around the inside edge of the retaining plate (6),

(N7) locating the hole of the retaining plate (6) over the shoulder and (N8a) pressing the retaining plate (6) axially against the side of the outer race (N8b) to upset each clinching lip (17) so that a reshaped lip (17) is formed engaging in the groove."

(Feature numbering in bold added by the Board)

VI. The following documents are referred to in this decision:

D1: DE 200 19 278 U1

VII. Appellant 2 (opponent) argued essentially as follows:

a) Admissibility of main request

The request should not be admitted because it formed part of a non-converging set of requests. Moreover, it could have been filed in proceedings before the opposition division but was not. Thus, the Board should not admit this request.

b) Added subject-matter (Article 123(2) EPC)

i) Claim 1

The originally filed claim 1 included the feature that the retaining plate was "mounted onto the outer race before assembly into the bearing housing (2)" (feature M2A). During examination this feature had been deleted despite being portrayed as being essential for the invention. The scope of protection had thus been extended in that the claimed subject-matter now included embodiments in which the plate was mounted onto the outer race during or after assembly into the bearing housing, e.g. by interaction with the bearing housing.

Feature M4" ("a plurality of lips") had been introduced. The originally filed claim had specified "a lip", i.e. singular, the embodiment of the invention shown had three lips. This teaching had been unallowably generalised to "a plurality" and thus encompassed embodiments, e.g. with ten lips, which were never foreseen in the originally filed application.

The scope of the claim also covered more embodiments than had been originally specifically described, in particular with respect to the geometry of the lips and their interaction with the circular groove (cf. description, p. 5, l. 9 - 19).

ii) Claim 5

In claim 5, the term "area" had been changed to "arc". There was no basis in the published application for this change.

Therefore, the subject-matter of both independent claims went beyond that of the application as originally filed.

c) Clarity

i) Claim 1

The term "formed along arcs spaced around the circular inside edge of the retaining plate" (feature M5') did not give any clear technical teaching. It was furthermore unclear whether the lips should be arc-formed or whether they could be some other shape and then arranged in an arc.

It was also unclear at what point the lips should be plastically deformed. Indeed the unclear wording even allowed the plastic deformation to take place at a point in time earlier than and independent of the engagement of the lips in the circular groove.

Thus, claim 1 did not meet the requirements of Article 84 EPC.

ii) Claim 5

The claim did not specify clearly whether the lips were themselves arc shaped or whether they were arranged in an arc. Moreover, it was not specified whether the lips were formed in a single or multiple operations. The claim was thus unclear.

d) Novelty

i) Claim 1

Features M1 - M5 were known from D1.

Feature M6a was known from D1 because the passage at p. 2, final paragraph disclosed that the lips were formed by stamping or deep drawing i.e. by plastic deformation. Moreover, feature M6b was known from D1 because the plastically deformed lips engaged the groove in the shoulder of the bearing outer race (Figure 2).

Thus, D1 disclosed all features of claim 1.

e) Inventive step

i) Claim 1

Starting from D1, the skilled person would experiment with different fits for the retaining plate on the shoulder. At a certain point, in order to fit the retaining plate, engagement of the circular groove would at least partly include plastic deformation of the lips in order to fit over the shoulder of the outer race.

Thus, as part of their normal design activities the skilled person would arrive at an at least partly plastic deformation falling under the subject-matter of claim 1 without the exercise of inventive activity.

ii) Claim 5

All features of claim 5 with the exception of N5 were known from D1. In particular, engaging the noses 6 into the groove of D1 was encompassed within the scope of features N7 - N8b.

For the skilled person it would however have been obvious to make the retaining plate by means of a punching operation.

VIII. Appellant 1 (patent proprietor) argued essentially as follows:

a) Admissibility of main request

The request was submitted together with the statement setting out the grounds of appeal, i.e. at the earliest possible moment in appeal proceedings. Given that various objections under Article 123(2) EPC had been raised, it was both appropriate and necessary to file diverging requests. Moreover, the requests were reasonable in number and replied directly to the objections raised.

b) Added subject-matter (Article 123(2) EPC)

i) Claim 1

The claim related to a bearing assembly with a bearing and a retaining plate. The bearing housing was not part of the originally claimed subject-matter and thus the omission of feature M2a did not contravene Article 123(2) EPC.

The originally filed description at p. 4, l. 20 - 21 disclosed literally "a plurality of clinching lips". The following sentence stated "[i]n the present example..." before mentioning an embodiment with three lips. It was therefore unambiguous that three lips was only a specific example of the general teaching of a plurality of lips. Thus a plurality of lips was clearly and unambiguously disclosed.

The passage p. 5, l. 9 - 19 had not been generalised in an inadmissible manner. It related to a particular embodiment and the related method steps. This passage was, however, a more specific example of the general disclosure of p. 4, l. 20 - 21 discussed above.

Therefore, the subject-matter of claim 1 did not extend beyond that of the application as filed.

ii) Claim 5

Claim 5 was based on claims 13, 15 and 16 as originally filed. The wording of the claim where "area" had been changed to "arc" was disclosed on p. 4, l. 21 of the application as originally filed.

c) Clarity

i) Claim 1

Claim 1 had been amended in opposition and appeal proceedings and only these amendments could be examined under Article 84 EPC.

The lips were formed along arcs spaced around the circular inside edge of the retaining plate (feature M5'). Consequently the lips must be arc shaped and follow the circular edge of the hole.

Feature M6a which specifies that the lips were plastically deformed was clear because it described a physical state rather than a method step. This state was furthermore distinguishable in the finished product. Moreover, it was unambiguously clear that the term "plastically deformed to engage" implied that the engagement had to be the direct consequence of the plastic deformation.

ii) Claim 5

Whether the lips were made in one or several operations was not defined in the claim. This however did not introduce any ambiguity because both alternatives were covered. Moreover, as argued for claim 1, since the lips were arranged around the circular inside edge of the retaining plate they must be arc shaped. Claim 5 was thus clear.

d) Novelty

i) Claim 1

D1 disclosed a bearing assembly with a bearing and a retaining plate. Unlike the presently claimed bearing assembly in which the lips were plastically deformed to engage the circular groove formed in the bearing race shoulder, according to D1, the lips of the retaining ring were elastically deformed to engage the bearing race. Thus, the subject-matter of claim 1 was new.

e) Inventive step

i) Claim 1

D1 was the closest prior art. The subject-matter of claim 1 differed from the bearing assembly known from D1 at least in that the clinching lips were plastically deformed to engage in a circular groove.

The technical effect of this difference was that the retaining plate could be mounted rotatably on the bearing outer race. The bearing assembly was consequently easier to mount on the gearbox housing.

The claimed solution was not suggested by the prior art. Moreover, it was not possible to modify the arrangement of D1 to allow for such a plastic deformation because there was no space to insert a tool to plastically deform the lips to engage in a circular groove formed in a circular shoulder in the outer race of the bearing.

Therefore, the subject-matter of claim 1 involved an inventive step.

ii) Claim 5

D1 disclosed a method of forming a bearing assembly whereby the lips of the retaining plate were elastically deformed to engage the groove in the shoulder of the outer race. Claim 5 required however that the retaining plate be pressed axially against the side of the outer race to upset the clinching lip so that a reshaped lip was formed engaging in the groove. This feature was not known from D1 because even though D1 disclosed a plastic deformation to produce the lips these were not upset nor was a reshaped lip formed engaging in the groove.

As argued above for claim 1, this was not obvious from the prior art. The subject-matter of claim 5 therefore involved an inventive step.