T 1278/18 04-06-2020

1. Applicable provisions of the EPC

1.1 The application was filed on 17 May 2007, i.e. before entry into force of the EPC 2000 on 13 December 2007.

1.2 According to Articles 1(1) and 6, first sentence of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 4, OJ EPO 2007, English version, 217), Articles 54(1)(2), 84, 111(1) and 114 EPC 1973 as well as Article 123 EPC (2000) apply. Since Rule 29 EPC 1973 is linked to Article 84 EPC 1973, it is to be applied in the present case (by analogy with J 10/07, OJ EPO 2008, 567).

2. Applicable Rules of Procedure of the Boards of Appeal

2.1 The revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020). Subject to the transitional provisions (Article 25 RPBA 2020), the revised version also applies to appeals pending on the date of the entry into force.

2.2 In the present case the statement of grounds of appeal was filed before 1 January 2020. Thus, Article 12(4) to (6) RPBA 2020 does not apply, and instead Article 12(4) RPBA 2007 applies to the grounds of appeal (Article 25(2) RPBA 2020).

2.3 Since the summons to the oral proceedings has been notified after 1 January 2020, Article 13 RPBA 2020 is to be applied for questions regarding any amendment to the appellant's appeal case in response to the summons.

3. Document D9 - Consideration in the proceedings

3.1 D9 is mentioned in the application as filed (paragraphs 70, 72 to 74 and 83).

3.2 The Board has introduced this prior art document into the appeal proceedings because its content is highly relevant for construing the claims and assessing the question of novelty and possibly inventive step (Article 114(1) EPC 1973).

4. Main request - Novelty

4.1 The appellant challenges the examination division's decision

- that the subject-matter of claim 1 lacks novelty in light of D1, D2, D3, D4, D5 and D6, and

- that the subject-matter of claims 10 and 20 lacks novelty in light of D6.

4.2 The Board shares the appellant's view that D2 and D4 fail to disclose a "curved bottom wall" as required by feature (1.2) of claim 1.

4.3 However, the Board is not persuaded by the appellant's argument that D1, D2, D5 and D6 fail to disclose a "fill trough" as defined in features (1.4) and (1.5) of claim 1:

4.3.1 On a normal reading of the disputed term "fill trough" in the context of claim 1, it simply defines a narrow open box-like vessel adapted to contain water, alternatively a channel, pipe, trunk or conduit for conveying water (see e.g. Oxford English Dictionary). The language of the feature "fill trough" is clear, albeit broad. For instance, claim 1 covers embodiments wherein the trough is arranged right above the mold and/or extends along an end wall of the mold (see e.g. D9, "trough 39" in figures 1 and 4 and column 3, line 49 to column 4, line 3).

4.3.2 Since claim 1 itself imparts a clear and technically sound teaching to the skilled reader, there is no reason for consulting the description and the drawings of the application to give the disputed feature a narrower meaning. The appellant submits that it follows from figure 31 and the teaching in paragraph 90 of the description that the fill trough is arranged aside the mold, forms a continuous extension of the curved bottom wall at the mold edge and extends substantially along the entire length of the mold. However, this teaching of the application cannot be relied on to read into the claim implicit restrictive features which are not suggested by the explicit wording of the claim.

4.3.3 Based on the above interpretation of the feature "fill trough", the water receiver 12 disclosed in D1 forms a fill trough as defined in claim 1. Indeed, it is an elongated open box-like vessel adapted to contain water for filling the ice mold 9 (figures 3 and 4 of D1). In contrast to the trough 446 shown in figure 31 of the application, the trough 12 of D1 is funnel-shaped in cross-section and arranged right above the mold 9, whereby it extends essentially along the mold width. However, this is not excluded by the claim wording.

4.3.4 For the same reasons, the elongated water receiver 9 shown in figures 2 to 4 of D5 forms a "fill trough" in the broad sense of claim 1, even though it is arranged above the ice mold 11, but not aside it.

4.3.5 The elongated receptacle 7D shown in figures 2 and 3 of D2 is adapted to direct water to the ice mold and extends along a mold edge and above it. Hence, the receptacle 7D anticipates the "fill trough" required in claim 1.

4.3.6 The water inlet element 123 disclosed in D6 (figures 4 to 8 and 20a) is an elongated water receptacle adapted to direct water from an ice maker fill tube into the ice mold 116, and thus forms a "fill trough" as defined in broad terms in claim 1. In contrast to the trough 446 shown in figure 31 of the application, the element 123 of D6 extends along an end wall of the mold. However, this is not excluded by the claim wording.

4.4 With respect to D3 and D4, the Board agrees with the appellant that these documents fail to disclose a "fill trough" as required by claim 1. In this respect, the examining division refers to item 17a in figure 5 of D3. However, this is the water receiving port of the ice tray 17, which is formed as a lip or mouth, rather than a trough. The examining division refers to items 32 and 34 in figures 1 and 2 of D4 but item 32 is the heat insulating material of the lid 28 covering the ice tray 23, while item 34 is a water inlet formed in the periphery of the lid 28.

4.5 The ice maker apparatuses disclosed in D7 and D8 are similar to those disclosed in D4 and D3. For the reasons set out above, they do not anticipate the claimed subject-matter.

4.6 The subject-matter of claim 1 is also anticipated by the teaching of D9, see figures 1 and 4 as already mentioned above. Indeed, this document discloses, in the terms of claim 1, an automatic ice maker apparatus (10) which is arranged for use on a refrigerator or freezer door and comprises: an elongated mold (11) having a curved bottom wall (12) with a first edge on one side of the mold and a second edge on a second side of the mold (front and rear wall portions 14 and 15); a plurality of transverse partial partition walls within the mold defining a plurality of cavities to contain water to be frozen into ice pieces; a fill trough (39) extending along the second edge above the mold; and an opening in the fill trough for water to flow into the mold from the fill trough (inlet chute portion 43). This apparatus disclosed in D9 is similar to that illustrated in figures 3 to 8 of the present application (see paragraphs 70 to 74).

4.7 In conclusion, the subject-matter of claim 1 of the main request is anticipated by the teaching of D1, D5, D6 or D9, but not by that of D2, D3, D4, D7 or D8.

4.8 For the reasons set above, the Board shares the examining division's view that the subject-matter of claims 10 and 20 of the main request is anticipated by the teaching of D6.

5. Third auxiliary request - Admissibility in the appeal proceedings

5.1 The appellant filed the third auxiliary request after oral proceedings had been arranged.

5.2 The Board exercised its discretion pursuant to Article 13(2) RPBA 2020 to admit this new request into the appeal proceedings for the following reasons.

5.2.1 The claims of the third auxiliary request differ from those of the first auxiliary request filed with the statement of grounds of appeal in that reference numbers have been introduced in all claims and claim 18 comprises the further limitation that the ice mold is "an elongated mold having a curved bottom wall with a first edge on one side of the mold and a second edge on a second side of the mold". These amendments are in response to objections under Article 84 and Rule 29(7) EPC 1973 and Article 123(2) EPC which were raised for the first time in the Board's communication pursuant to Article 15(1) RPBA 2020.

5.2.2 Claims 1, 9 and 18 of the third auxiliary request differ from claims 1, 10 and 20 of the main request on which the appealed decision was based essentially by the added limitations that the fill trough "is arranged aside the mold", "forms a continuous extension of the curved bottom wall at the second edge" and "extends along substantially the entire length of the elongated mold". These amendments were already introduced in the first auxiliary request filed with the statement of grounds of appeal, with the aim of overcoming all objections of lack of novelty raised in the appealed decision. They can be regarded as an appropriate reaction to the appealed decision (Article 12(4) RPBA 2007).

5.3 The amendments to the claims clearly overcome all outstanding objections without introducing new issues.

6. The Board is satisfied that the amendments to the claims are supported by the information in the application documents as originally filed, as indicated by the appellant (see point XI-b) above).

7. Third auxiliary request - Novelty

7.1 The appellant contends that the claim amendments overcome the above objection of lack of novelty in light of D1, D5, D6 and D9. In particular, the appellant submits that these documents fail to disclose the further limiting features introduced in claims 1, 9 and 18, namely

(a) that the fill trough "is arranged aside the mold",

(b) that it "forms a continuous extension of the curved bottom wall at the second edge",

(c) that it "extends along substantially the entire length of the elongated mold".

7.2 The Board is satisfied that the fill troughs disclosed in D1, D5, D6 and D9 do not anticipate all of these features:

7.2.1 The water receiver 12 shown in figures 3 and 4 of D1 does not realise features (a) to (c).

7.2.2 In D5, the water receiver 9 extends along substantially the entire length of the elongated mold 11 (feature (c)), but it does not have features (a) and (b).

7.2.3 In D6, the water inlet element 123 is arranged aside the elongated mold (feature (a)), but it neither forms a continuous extension of its curved bottom wall (feature (b)) nor does it extend along substantially its entire length (feature (c)).

7.2.4 In D9, the fill trough 39 is arranged aside the elongated mold 11 (feature (a)) but it does not have features (b) and (c).

7.3 For the reasons set out above for the main request, the Board is also satisfied that D2, D3, D7 and D8 do not anticipate the claimed subject-matter.

7.4 Hence, the subject-matter of claims 1, 9 and 18 is new in the sense of Article 54(1)(2) EPC 1973 in light of the cited prior art.

8. Remittal of the case

8.1 In its communication under Article 15(1) RPBA 2020, the Board set out and reasoned its intention to remit the case to the examining division, as follows (point 11):

"Should the appellant file amendments to the claims of the auxiliary requests which overcome the above objections under Article 84 and Rule 29(7) EPC 1973 and Article 123(2) EPC, the Board considers that it would be appropriate to remit the case to the examining division for further prosecution (Article 111(1) EPC 1973).

Even though the Board should normally not remit the case (Article 11 RPBA 2020), special reasons are apparent in the present case for doing so. In particular, the appealed decision only deals with the objection of lack of novelty in light of D1 to D6, and the question of whether or not the claimed invention is inventive has not been addressed in the decision. It is the primary object of the appeal proceedings to review the appealed decision in a judicial manner (Article 12(2) RPBA 2020), not to conduct a complete examination of the application. In addition, since the added feature that the trough "extends along substantially the entire length of the elongated mold" was taken from the description and drawings, an additional search for relevant prior art documents may be necessary. In fact, the examining division submitted that the search report contained only a small number of novelty destroying documents ("novelty overflow", point 11 of the reasons)."

8.2 In its response dated 21 May 2020, the appellant agreed that the case should be remitted to the examining division for the reasons pointed out by the Board.

8.3 In the absence of any counter-arguments submitted by the appellant, the conclusions reached by the Board in its communication under Article 15(1) RPBA 2020 continue to apply. Hence, the case is remitted to the examining division for further prosecution on the basis of the amended claims of the third auxiliary request.

9. In light of this conclusion there is no need to consider the fourth to sixth auxiliary requests.