T 2759/19 17-10-2023

1. Main request

1.1 Sufficiency of disclosure - Article 83 EPC

1.1.1 Interpretation of feature 1.11 and claim 1

Feature 1.11 - which is part of granted claim 1 - reads: "wherein the two parallel walls connected by plates are substantially equivalent, as for the stiffness provided to the panel, to a full rib of equal width, but they require less plastic material and are lighter".

The Board agrees with the opponent that feature 1.11 defines a result to be achieved. Moreover, the unspecific weakening of the requirement by the terms "substantially" and "equivalent" may cast doubt on the clarity of the feature.

However, feature 1.11 was part of granted claim 1 and it must be lived with (see G3/14, headnote and Reasons 55) since clarity is not a ground for opposition. What must be established to assess whether the invention is sufficiently disclosed is how to interpret this feature.

The skilled person reading claim 1 understands that the formwork is to be used at a construction site for its normal purpose (i.e. containing poured concrete for a period of time). As submitted by the parties, formwork panels usually have technical specifications printed on them which inform the user about the loads for which they can be used. The skilled person understands that feature 1.11 makes reference to the stiffness required for the load when using a respective formwork comprising full edge ribs according to this indication. Thus, the skilled person would not interpret feature 1.11 as requiring that the stiffness provided by the edge rib comprising two parallel walls connected by plates be enough to withstand any possible load but to withstand the usual load at work of a particular formwork, according to its specification.

Moreover, the expression "substantially equivalent" does not require that the stiffness provided to the panel by the "two parallel walls connected by plates" be the same as provided by a full rib of equal width in a mathematical or numerical sense but that the "two parallel walls connected by plates" provide the panel with a stiffness comparable to that of a panel with a conventional full rib having a particular specification (i.e. with the loads required in this context). That is, the parallel walls with plates must provide an "equivalent" stiffness such that they make the panel of the formwork sufficiently stiff for purpose.

1.1.2 Implementation of feature 1.11

In view of the above understanding, the skilled person was in a position to carry out feature 1.11.

They were able to achieve a "substantially equivalent" stiffness of the panel compared to the same panel with a given full rib of specific dimensions intended for a particular load. The figures show how such an arrangement can look in principle. Furthermore, modifications, of e.g. the number of connecting plates or the distance between the parallel walls, are well within the capabilities of the skilled person. In fact, the skilled person knows from their general technical knowledge examples of formworks made from plastic materials in which ribs with parallel walls and reinforcing elements in between are used to withstand a particular load. Such structures achieve sufficient structural strength for performing the intended function of the formwork and require less plastic material. Hence, in the Board's view, it does not represent an undue burden for the skilled person to define a formwork falling within the terms of claim 1.

Whether the strength provided to the formwork is - or can be - exactly the same as that provided by a solid rib of equal width, or up to which value the required "substantially equivalent" stiffness can be considered fulfilled, is a question of clarity, not sufficiency of disclosure (see point 1.1.1).

Moreover, sufficiency of disclosure of feature 1.11 cannot be contested by tests showing that, for a particular geometry, two parallel walls connected by plates do not provide an equal stiffness to a particular "full rib", in particular when the tests focus on the stiffness of the rib instead of that of the panel. Feature 1.11 does not require that all formworks comprising two parallel walls connected by plates as defined in features 1.5 to 1.8 fulfil the conditions defined in feature 1.11. Hence, arrangements not fulfilling the definition of feature 1.11 would simply not fall within the scope of claim 1.

Furthermore, even if the opponent's argument that the stiffness provided to the panel by any rib comprising voids (i.e. not a "full" rib) would necessarily be lower than that provided by a full rib is accepted, this only supports the understanding set out above that the terms "substantially" and "equivalent" cannot be construed as requiring identical stiffness.

The invention is thus sufficiently disclosed (Article 83 EPC).

1.1.3 Admittance and consideration of A2 and A2a

Documents A2 and A2a were filed by the opponent in support of its argument on the impossibility for an edge rib comprising two parallel walls and connecting plates to provide the same (in a strictly numerical sense) stiffness to the panel as a full rib of equal width.

Since the interpretation of feature 1.11 as requiring the same stiffness for both edge ribs cannot be accepted, as outlined above, the content of A2 and A2a is not relevant for the outcome of the case.

Consequently, the admittance and consideration of A2 and A2a does not need to be discussed.

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

1.2.1 Feature "cylindrical body", alleged omission of "circular cross-section"

The opponent argued that in view of the interpretation of the "cylindrical body" feature as a mathematical cylinder having whatever cross-sectional shape allegedly having been made by the patent proprietor in parallel infringement proceedings, the omission of the fact that the cylindrical body had a circular cross-section in amended claim 1 extended the subject-matter beyond the content of the application as filed.

This is not persuasive.

The term "cylindrical body" is explicitly disclosed as such in originally filed claim 9 (features 9.0a and 9.2c) and also in paragraph [0044] of the A2 publication. This literal disclosure encompasses any possible interpretation of the wording "cylindrical body". Any possible interpretation that the patent proprietor may bring forward of this wording in other proceedings cannot change the fact that the feature was originally disclosed as such. Whether such an interpretation is justified may play a role for novelty but has no bearing on the question of original disclosure.

Thus, the "cylindrical body" feature does not extend the subject-matter of claim 1 beyond the content of the application as filed.

1.2.2 Omitted features 9.5 and 9.6

Features 9.5 ("said cylindrical body has diameter equal to the diameter of the holes of the edge ribs of the modular formwork, and length larger than the thickness of two edge ribs") and 9.6 ("radial relieves have preferably the shape of an annular segment in order to pass through the grooves of the holes of the edge ribs of the modular formwork") were omitted when the subject-matter of granted claim 9 was partially combined with granted claim 1. Granted claim 9 is based on originally filed claim 9, which defines a closing key comprising all the features of the closing key defined in granted claim 9.

The Board does not agree with the argument of the patent proprietor on the alleged implicit disclosure of the whole of features 9.5 and 9.6 in features 9.1, 9.2 and 1.10 and that a robust connection implied that the diameters of the cylindrical body and the holes in the edge rib were the same.

Feature 9.1 defines that the modular formwork can be closed with another similar formwork by the fastening means in the form of a closing key.

Feature 9.2 defines that the closing key is made of a cylindrical body.

Feature 1.10 defines that the fastening means (i.e. the closing key) are inserted into the aligned holes in the edge ribs of the two modular formworks and that the fastening means pass over the holes on the two walls of the two coupled edge ribs.

These features taken together define a closure between formworks achieved by a closing key made of a cylindrical body. They also imply that the cylindrical body has a length larger than the thickness of two edge ribs (part of feature 9.5).

However, even if it can be considered that a robust connection is an implicit feature of formworks intended to be connected to hold initially liquid concrete, it has not been shown that a robust connection can only be achieved when the cylindrical body of the closing key has a diameter equal to the diameter of the holes in the edge ribs. The wording "for the insertion of fastening means" in feature 1.10 merely means that the fastening means can be inserted through the holes on the walls of the edge ribs. From a technical point of view, the formworks can also be solidly connected when the cylindrical body has a diameter considerably smaller than that of the holes since the compression carried out by the closed fastening means is not conditional on having equal diameters. Moreover, claim 1 does not exclude the presence of other elements on the formworks which could cooperate with each other to avoid relative movements between the formworks once they are closed by the closing keys.

The omission of the diameters of the cylindrical body and the holes being equal is linked to a different effect - the improved guidance of the cylindrical body when being inserted through the aligned holes in the edge ribs of the formworks. No reference to a guiding function of the cylindrical body, which could theoretically speak in favour of an implicit disclosure of the omitted features, is made in claim 1.

Furthermore, feature 1.10 does not imply any shape of the holes on the edge rib since it does not define any interaction between the holes and the radial relieves (which could even be foldable and completely retractable or which could cooperate with further fixing means after having passed through a hole without grooves which is big enough for it), apart from the fact that the fastening means must be suitable to be inserted through the holes.

Paragraph [0021] of the A2 publication discloses - in the general description of the invention - that "[o]n the edge ribs there are holes for the insertion and the closure of the closing keys". However, the only closing key comprising features 9.1 to 9.4 ("the modular formwork is closed with another similar formwork by the fastening means in form of a closing key, the closing key being made of a cylindrical body with, at one end, a handgrip and at the opposite end two or more radial relieves") is disclosed in the embodiment and originally filed claim 9.

The only feature disclosed as optional in originally filed claim 9 is the "shape of an annular segment" for the radial relieves. The features "cylindrical body has diameter equal to the diameter of the holes of the edge ribs" (feature 9.5) and "grooves of the holes of the edge ribs" (feature 9.6) are not presented as optional and are inextricably linked with the technical function of the closing key. The relieves ensuring the closure of the formworks pass through the grooves. The fact that these omitted features are disclosed in paragraph [0045] instead of paragraph [0044] of the A2 publication - where features 9.1 to 9.4 are disclosed - cannot be a basis for isolating features 9.1 to 9.4 from their functional context. The skilled person understands from both paragraphs and the figures that a single embodiment of a closing key is disclosed, and they would not consider any technically related feature defined in features 9.5 and 9.6 optional.

Thus, omitting the features "cylindrical body has diameter equal to the diameter of the holes of the edge ribs" (feature 9.5) and "grooves of the holes of the edge ribs" (feature 9.6) in amended claim 1 presents the skilled person with technical information which could not be derived from the application as filed.

Consequently, the subject-matter of claim 1 of the main request extends beyond the content of the application as filed (Article 123(2) EPC).

2. Auxiliary requests 1 to 5 - Article 123(2) EPC

In view of the amendments to claim 1 of the auxiliary requests 1 to 5 (see points IX. to XIII. above) and the reasoning in point 1.2.2 above, none of auxiliary requests 1 to 5 can overcome the objection of added subject-matter discussed above for claim 1 of the main request.

Claim 1 of auxiliary requests 3, 4 and 5 omits the feature "grooves of the holes of the edge ribs" (feature 9.6), and claim 1 of auxiliary requests 1 and 2 also omits the feature "said cylindrical body has diameter equal to the diameter of the holes of the edge ribs" (feature 9.5).

This was not contested by the patent proprietor.

Therefore, the subject-matter of claim 1 of each of the auxiliary requests 1 to 5 likewise extends beyond the content of the application as filed (Article 123(2) EPC).

3. Auxiliary request 6

3.1 Sufficiency of disclosure - Article 83 EPC

Since the only objection of sufficiency of disclosure is against feature 1.11, the same reasons as in point 1.1 above apply.

3.2 Clarity - Article 84 EPC

Amended claim 1 of auxiliary request 6 consists of the combination of granted claims 1 and 9.

The opponent argued that the skilled person understood from the feature "the grooves of the holes" in granted claim 9 that this claim depended on claim 7, which introduced the "grooves" feature. Since claim 9 had been combined with claim 1 without the features of granted claim 7, a lack of clarity arose from this amendment due to the fact that no preceding mention of "the grooves" was available anymore. Hence, the skilled person could no longer, upon reading the claims, correct this lack of clarity as they could in the granted claims. Consequently, the considerations of G 3/14 did not apply in this case since the lack of clarity arose from the amendment.

This is not persuasive.

Granted claim 9 is explicitly dependent on "any of the previous claims" and thus also directly on claim 1.

Hence, the lack of clarity due to a missing preceding mention of "the grooves" was present in this combination in the original claim set, which likewise did not include the additional features of granted claim 7.

Consequently, combining granted claims 1 and 9 cannot give rise to any new lack of clarity not present in the granted patent.

Since 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 (G 3/14, headnote), it is not for the Board to examine the clarity of claim 1 on the grounds raised by the opponent.

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

The opponent argued that claim 1 omitted the restriction that the grooves were "diametrically opposite" as defined in granted claim 7, this infringing the requirements of Article 123(2) EPC. This was because the reference to "the" grooves in granted claim 9 made reference to the preceding definition of the grooves in granted claim 7 and was thus only disclosed in combination with the features of granted claim 7.

This is not convincing.

Firstly, as explained in point 3.2 above, granted claim 9 is directly dependent on granted claim 1. Thus, granted claim 7 does not define a necessary limitation on the arrangement of the grooves of claim 9.

Secondly, Article 123(2) EPC prohibits an extension beyond the content of the application as filed.

Claim 1 of auxiliary request 6 is based on a combination of claims 1 and 9 as originally filed, i.e. on a combination of the formwork defined in claim 1 with the closing key defined in claim 9 of the originally filed application.

The closing key according to claim 9 as filed implies the presence of grooves in the holes of the edge ribs (feature 9.6), as set out in point 1.2.2 above, but it does not define in more detail how the grooves or the radial relieves (feature 9.4) are arranged. Thus, it is not limited to radial relieves and grooves arranged "diametrically opposite". It is also clear that originally filed claim 9, as an independent claim, did not make reference to "the" grooves defined more specifically in originally filed claim 7.

Therefore, the omission of the restriction to "diametrically opposite" grooves in claim 1 of auxiliary request 6 does not infringe Article 123(2) EPC.

As to the alleged further extension of subject-matter by the "mathematical interpretation" of the term "cylindrical body", see point 1.2.1 above.

3.4 Inventive step - Article 56 EPC

3.4.1 Prior use D1a as the closest prior art

(a) Uncontested findings of the opposition division

The opposition division acknowledged a prior use at the World of Concrete Fair, Las Vegas, in February 2003 ("prior use D1a"), based on - among others - document A3g and the hearing of Mr Hannawa as a witness.

Also in light of the witness hearing, the opposition division relied on A3g, and established which features were disclosed by prior use D1a.

The opposition division concluded that prior use D1a disclosed "a modular formwork in plastic material, comprising a panel with a first and second side having, on the first side opposite to the second side in contact with the concrete, some edge ribs and main transversal ribs, said edge ribs being made of two walls parallel one to the other and perpendicular to the panel between which of said two walls there is a plurality of plates connecting said two walls".

The opposition division also concluded, based on the black items in the pictures of A3g and Annex ABC, Figure A, that the prior use disclosed fastening means that passed over holes in the edge ribs. These holes were aligned on the edge ribs for coupling various modular elements by aligning the holes and inserting the fastening means such that they passed over the holes.

This has not been contested by the patent proprietor in appeal. The patent proprietor actually explicitly accepted that the arrangement of formworks connected by spacers in Figure 12 of D1 (published after the priority date of the contested patent) reflected the disclosure of prior use D1a.

(b) Distinguishing features, technical effect and objective technical problem

It is common ground that features 9.1 to 9.6 (i.e. those related to the closing key) are not disclosed in prior use D1a. They read as follows: "said modular formwork is closed with another similar formwork by the fastening means in form of a closing key, wherein said closing key is made of a cylindrical body and has, at one end, a handgrip perpendicular to said body and at the opposite end two or more radial relieves, and wherein said cylindrical body has diameter equal to the diameter of the holes of the edge ribs of the modular formwork, and length larger than the thickness of two edge ribs, and wherein said radial relieves have preferably the shape of an annular segment in order to pass through the grooves of the holes of the edge ribs of the modular formwork".

The technical effect of the distinguishing features is that the connection between formworks is carried out by a single element.

Consequently, the objective technical problem hinted at by the opponent - simplifying the connecting means of formworks - is correct. This was accepted by the patent proprietor.

(c) Admittance and consideration of A3i, A3j (pictures) and A3k (video)

A3i and A3j show spacers from a perspective perpendicular to that of A3g, thus enabling a more accurate observation. The information derived from this corresponds to the arrangement shown in Figure 12 of D1. The patent proprietor accepted that Figure 12 of D1 matches the use of spacers in prior use D1a. Consequently, it is not necessary to discuss the admittance and consideration of A3i and A3j in the appeal proceedings.

A3k is a video which does not show the formworks of the prior use. The video was instead filed by the opponent to clarify its arguments about the stability of closing keys in general when inserted into the holes of an edge rib. Three images of screenshots of A3k were inserted in pages 15 to 17 of the grounds of appeal for the same purpose. Consequently, as A3k and its screenshots are just an illustration of the arguments that the opponent brought forward and since these arguments have to be dealt with anyway, the question of the admittance and consideration of A3k can also be left open.

(d) Alleged obviousness of distinguishing features 9.1 to 9.6 in view of D10

The opponent argues that the skilled person would have found a solution for the posed technical problem in D10, which discloses the advantages of using a turn key for simplification of the connection between formworks (see D10, page 4, lines 24 to 35).

According to the opponent, using the turn keys disclosed in D10 with the formworks of prior use D1a did not pose any problem when assembling the formworks. Moreover, all holes involved - including those of the spacers used in D1a - could be adapted to the shape of the turn key of D10 without any drawback.

The Board is not convinced by this argument.

It is common ground that the formworks of prior use D1a are connected to each other by a system involving the use of spacers, i.e. elongated metallic plates extending from one formwork to the opposite one, to fix a distance between them and to withstand the pressure of poured concrete. These spacers comprise holes for receiving the bolts connecting adjacent formworks. It is not contested that the assembling of such a connecting system is - as argued by the patent proprietor - as follows.

- The bolts are inserted into the holes of the edge rib of a first formwork.

- Spacers are mounted onto the bolts.

- A second formwork is moved close so that the bolts protruding from the first formwork are inserted into the holes of the edge rib of the second formwork and so that the spacers are located between the two adjacent formworks.

- The bolts are secured.

D10 discloses the use of a turn key only in a system not comprising spacers (see Figure 4 and 5). The skilled person would recognise this and realise that the use of any of the turn keys of D10 in prior use D1a would require an adaptation of the holes of the spacer and the formwork (i.e. an enlargement) to allow the passage of a turn key with the "broche transversale" (4). This would result in a weakening of the spacer due to the provision of grooves, according to the patent proprietor.

The opponent argued that the weakening created by providing the holes with grooves as in D10 would not be relevant for the skilled person for the following reasons. Firstly, the spacers used in prior use D1a already had weakening points along their length (see the indentations along the spacer in A3i or Figure 12 of D1), and the additional weakening by the grooves for the relieves would be marginal. Secondly, the contested patent left open the precise construction of the relieves and their size, and the skilled person knew how to provide relieves of the right dimensions to avoid the alleged weakening. Finally, Figure 4 of D10 suggested a horizontal arrangement of the grooves, which only led to a negligible weakening of the spacers, and the skilled person would anyway decide on the orientation of the grooves to be provided in the case of prior use D1a according to their needs.

This is not convincing.

According to the teaching of D1a, the tension to be supported by the spacers is directly supported by the contact region between the spacer and the bolt. In the case of D1a, this contact region is the minimum necessary circular opening in the spacer that allows the passage of the bolt. The circular design of the opening ensures a load distribution in which no weak points are created.

Following the teaching of D10 and providing any irregularity along the perimeter of the D1a openings (to allow the passing of the D10 turnkeys) translates into the appearance of weak points susceptible to deformation by the tension created under the load of the liquid concrete to be contained by the formworks. This is the case whatever the orientation of the grooves. If the grooves were oriented horizontally, the tension between the cylindrical body replacing the bolt and the spacer would be supported by a reduced section of the opening corresponding to the remaining material on the half of the opening oriented outwards. If the grooves were oriented vertically, they would tend to expand when tension rose between the cylindrical body and the outer half of the opening. Any intermediate orientation would also result in a non-uniform distribution of tensions in the spacer material.

Irregularities on the top and bottom sides of the spacers used in prior use D1a (see indentations on the top and bottom edges of the spacer in A3i and Figure 12 of D1) is irrelevant for this discussion since these regions are not subject to tension by direct contact with another element pushing against them (i.e. the bolt or turn key) - in contrast to the bolt openings.

The argument of the opponent about the contested patent having left open the precise construction of the relieves and their size is also not pertinent for the assessment of inventive step, which is about what the skilled person would or would not envisage doing in view of the prior art, not the patent. The Board is of the opinion that the modifications required to implement a turn key as disclosed in D10 would lead to a weakening of the spacers that is not negligible and would require further modifications. These modifications that the skilled person would have to provide to compensate for the weakening of the spacer go beyond what the skilled person would, in the Board's view, envisage in an obvious manner. No teaching on this can be seen in the prior art, and there is no evidence that this belonged to the common general knowledge of the skilled person.

In view of the above, the skilled person would not have combined prior use D1a with the teaching of D10 in an obvious manner.

(e) Alleged obviousness of distinguishing features 9.1 to 9.6 in view of D8 or D9

The opponent did not cite any passage of D8 or D9 in its submissions on the obviousness of using a turn key in combination with prior use D1a. No arguments based on the problem-solution approach were presented in connection with these documents. Thus, the mere assertions about the obviousness of the distinguishing features on the basis of D8 and D9 cannot be considered substantiated objections (Articles 12(2) and (4) RPBA 2007).

In any case, the arguments in preceding point (d) apply as well to the turn keys of D8 and D9 mutatis mutandis.

3.4.2 Prior use D1b as the closest prior art

Since the disclosure of prior use D1b is comparable to that of prior use D1a for the use of spacers, the same arguments as in point 3.4.1(e) above against a combination of this prior art with D8, D9 or D10 apply.

3.4.3 Prior use D2 as the closest prior art

D2 discloses "enforcement [sic] supporting parts" (122) connecting the walls of an edge rib (see Figure 5). The obvious role of such supporting parts (122) is to reinforce the edge rib. D2 also discloses a number of wedge holes (20a) extending through the supporting parts (122) of the edge ribs. The wedge holes receive flat wedge pins (200) used to connect the formworks.

The opponent argued that the wedge holes (20a) of D2 represented the aligned holes on the two walls of the edge ribs defined in feature 1.9 of claim 1 since the claim did not require any free space between the walls.

This is not persuasive in view of the interpretation of feature 1.9 by the skilled person.

Feature 1.9 requires a plurality of "aligned holes on the two walls of the edge rib".

The skilled person understands that the holes are defined as aligned because the walls are separated. If there were a continuous connection between the walls as in D2, the term "aligned" would not make technical sense, let alone when two separate walls and two separate holes are not identifiable at the portion where the holes are provided, as in D2.

Thus, feature 1.9 is not disclosed in D2, and even in combination with D8, D9 or D10, as proposed by the opponent, this feature still established a difference over the subject-matter of amended claim 1.

3.4.4 Prior use D3 as the closest prior art

The opponent argued that since the patent proprietor allegedly marketed products in which the turn keys were rotated by 30° only to achieve a connection between formworks, the skilled person would not see it as a problem that turn keys could not be rotated further if implemented in D3.

This is also not persuasive. What is relevant for the assessment of inventive step is what is disclosed in the documents showing the distinguishing features and not what other solutions are currently available on the market (or in the impugned patent). The skilled person understands from the solutions disclosed in the cited documents D8 to D10 - based on their technical knowledge - that the relieves on the body of the turn keys have to be arranged as far as possible from the grooves through which they enter to avoid an accidental release, thus requiring a 90° turn.

Consequently, a combination of the closing keys of any of D8, D9 or D10 with the formwork of D3 would not have been envisaged by the skilled person.

3.4.5 D8 as the closest prior art

The opponent finally also argued that the skilled person would realise that the edge ribs of prior use D1a were lighter than the massive edge ribs of D8, and would, starting from D8, select this feature of prior use D1a to be combined with the formwork of D8.

This is not convincing, either.

Firstly, the opposition division and the patent proprietor are right in that the density of ribs in A3g (prior use D1a) is higher than that disclosed in Figure 1 of D8. This casts doubt on whether the skilled person would consider that the construction in prior use D1a is lighter than the one of D8.

Secondly, if the skilled person were to consider implementing the structure of double walls of the edge ribs of prior use D1a in the formwork of D8, they would do so by adopting the whole technical solution, i.e. including the connecting means disclosed in prior use D1a, which interact with the double walls of the edge ribs.

Consequently, the skilled person would not adopt in isolation, without hindsight, the features of prior use D1a which are necessary to arrive at the subject-matter of the invention.

3.4.6 Final assessment

In view of the above, the subject-matter of amended claim 1 involves an inventive step.

4. Conclusions

In view of the considerations of the Board explained above, the decision under appeal is to be upheld.