T 0185/82 (Minicassette box) 26-10-1983
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I.An error on the part of an applicant in inverting the dates of two documents published prior to his application and falsely concluding that the supposedly older of the two could not lead a person skilled in the art to simplify a device thought to be more recent and arrive at the subject-matter of his application cannot justify a decision by the Office to refuse the application on the grounds of lack of inventive step.
II. Article 114(1) EPC states that the EPO in examining the facts shall not be restricted to the facts, evidence and arguments provided by the parties. If certain facts prove to be inaccurate it must invite the parties to present their comments (Article 113(1)). Failure to do so is a procedural violation justifying reimbursement of the appeal fee - Rule 67 of the Implementing Regulations.
Reimbursement of appeal fee
Incorrect interpretation of facts by the examining instance
Inventive step - error
I. European patent application No. 80 400 593.2 filed on 29 April 1980 claiming a French priority of 14 May 1979 and published under number 0 019 514 was refused by decision of the Examining Division of the European Patent Office dated 27 July 1982.
II. In its decision the Examining Division considered claims 1 and 2 received on 27 March 1982 and found that the invention as claimed in claim 1 was not patentable within the meaning of Article 52(1) EPC. In setting out its reasons it took the state of the art to be that described in FR-A-2 189 811, FR-A-2 297 478 and US-A-2 285 464 and concluded that:
1. The subject-matter of claim 1 was novel.
2. It did not involve an inventive step within the meaning of Article 56 EPC.
3. The means, described in claim 2, came within the normal reach of a person skilled in the art and did not as a result justify this claim being converted into an independent, admissible claim.
4. The subject-matter of claim 2 did not seem, either by itself or taken in conjunction with claim 1, to involve an inventive step.
III. The applicant appealed against the above decision on 8 September 1982. The appeal fee was paid on the same day and a Statement of Grounds was received on 18 November 1982. The applicant argued that FR-A- 2 189 811 and FR-A-2 297 478 could not easily be combined and that hence the device claimed in claim 1 did not involve an inventive step. It asked that the decision be revoked and that a European patent be granted on the basis of the version of claims 1 and 2 received by the Office on 18 November 1982.
IV. In the course of a discussion with the appellant on 14 April 1983 the rapporteur stated that as things stood the appellant would have to reframe the claims by adding to the precharacterising portion while removing features that were superfluous, and then amend the description to take account both of the state of the art that had emerged during examination and the problem of the invention.
V. On 27 April 1983 the appellant submitted a new version of claims 1 and 2 together with a new description and asked that a European patent be granted on the basis of these. Claim 1 now reads as follows:
1. An improved box for use as a container for a minicassette or other form of data carrier having two spools, the said box comprising a first component of moulded plastics material with a main surface integral with sides forming two lateral flanges connected by a base and a second component also of moulded plastics material having a main surface integral with a rear strip and lateral flanges abutting against the lateral flanges of the first component to which they are articulated, resilient interlocking means connecting the two lateral flanges of the two components at the ends at which they open, characterised in that
- the first component is opaque and comprises a front section (9) and a rear section (10) connected together in a manner known per se by a hinge (8), produced by moulding, extending along the front wall parallel to the base (29) and continued through the side flanges in the form of dividing slits (30, 31), as also in that
- the opaque front section (9) and the second transparent component (1) are joined by rigid though disconnectable connecting means (15 to 24) so as to form a rigid body.
VI. The initial wording of claim 1 and of the description as first filed are contained in the application published under number 0 019 514.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. The Board of Appeal has the following comments to make on the wording of the claim as given above: The pre-characterising portion uses French patent FR-A-2 189 811 as a reference point to relate the invention to the prior art, the mention of "securing lugs for the spools" being omitted as introducing an unnecessary restriction.
Claim 1 meets the requirements of Rule 29 (1) (a) EPC. The characterising portion of the claim has been amended as follows:
- the phrase "the rear section forms a lid holding the cassette ..." which does not appear on page 6, lines 32-35 of the description has been deleted.
- The statement that "the lateral flanges co-operate with those of the transparent component by resilient interlocking means has been transferred to the pre-characterising portion.
- The term "means of making integral" has been substituted for "connecting means", even though the latter are not mentioned in the description. This change is justified by the fact that the front section and the transparent component are made integral by clipping them together as described in the fifth and last paragraph on page 5 is in effect using rigid though disconnectable connecting means. The above amendments, made with the aim of clarification, are in accord with Articles 84 and 123(2) EPC and thus admissible.
3. In a communication dated 24 March 1982 the appellant was mistaken in claiming that a person skilled in the art would have had access to FR-A- 2 297 478 before FR-A-2 189 811 and therefore that the inventor had achieved an inventive step in simplifying the box described in FR-A-2 189 811 without regard to the teaching of FR-A-2 297 478, which he assumed to be older. This argument is obviously wrong and cannot be used to justify inventive step. The Examining Division concluded that on the contrary when the documents were put back in their correct chronological order the subject-matter of the application was obvious to a person skilled in the art. The Appeal Board cannot agree with the reasoning of the Examining Division. It considers it to be contrary to Article 114(1) EPC which states that the Office shall examine the facts of its own motion and not be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It makes it abundantly clear that the Office has to take account of all the facts it considers necessary to advance the proceedings, especially of those it has introduced itself. This being so, it must always take care that all the arguments on both sides are heard in accordance with due process of law. In the present case the appellant was obviously basing his argument for the existence of an inventive step on a confusion of dates. It is not for the Examining Division to use such a mistake to the applicant's disadvantage but to note the error and inform the applicant so that he can put matters right or else simply refrain from using it against him. By not acting in this way and instead using the error to justify refusal of the application, the Examining Division has omitted to apply Article 113(1) EPC, leading to a serious procedural violation.
4. According to the appellant, the cassette container described in FR-A-2 189 811 has two disadvantages, namely: (1) it is not efficient enough in keeping out dust, (2) its manufacture is complex and therefore expensive.
5. The present application relates to a box for cassettes as described in the pre-characterising portion of claim 1 but without the disadvantages of that described in the patent above-mentioned.
6. According to the appellant the problem is solved by designing the new cassette box as described in the characterising portion of claim 1.
7. Having examined the various published documents referred to in the search report, the Appeal Board agrees with the Examining Division on the novelty of the application subject-matter and considers the device as claimed in claim 1 to be novel not only in relation to the earlier French Patent FR-A-2 189 811 but also to FR-A-2 297 478.
8. The examination on the subject of inventive step produced the following conclusions:
8.1 When the box described in FR-A-2 189 811 is closed, the only parts of body and lid that overlap, are the sides. There is left at the front and rear a gap which may be larger or smaller depending upon the play allowed by the hinge. The tightness of the fit between the two sections is in the case of this kind of box much less than that obtained with the box of the present invention. If any teaching is to be derived from FR-A-2 189 811 it is that of a box whose lid is articulated to the base to allow it to move. However, this does not lead to a cassette box which entirely covers the exposed portion of the cassette and whose lid and base are designated to ensure a rigid connection - the fact stated in the characterising portion of claim 1. The same is true of the prior publication - French Patent FR-A-2 297 478 - which describes a box made up of three parts - an outer case in the shape of a parallelepiped, an inner casing secured inside the case and a drawer which slides into this inner casing. The drawer is composed of two sections articulated together by a hinge to enable the cassette to be removed. The drawer is prevented from coming right out by a flap extension of the inner casing. A person skilled in the art who starts from a box of this kind, one feature of which is the fact that the drawer is able to move relatively to the inner casing, does not logically arrive at an arrangement in which the drawer is rigidly fixed to this casing. The box which the Examining Division produced by basing itself on the two earlier patents and replacing the lid of the box of FR-A-2 189 811 by the sliding drawer of FR-A-2 297 478 and then fixing the drawer to the body of the box by connecting means able to be disconnected is not equivalent to the subject-matter of the present invention. For it to be so would require the following operations: (1) pulling out and removing the drawer, (2) turning it over, (3) transferring it to the box described in FR-A-2 189 811, (4) replacing the sliding articulation with rigid connection means capable of being disconnected, (5) fixing the drawer to the box. In doing this the Examining Division is juxtaposing means already known in the art but has not considered the fact that to arrive at the subject-matter of claim 1 these means still have to be adapted to enable them to co-operate. This adaptation is not obvious to a person of average skill in the art.
8.2. In the preamble to the specification the appellant refers to French Patent FR-A-1 319 370. This patent, used to demonstrate the inventive nature of the subject-matter of claim 1, relates to a box used for the packaging of pharmaceutical products such as lozenges. It shows a box whose lid has a groove acting as a hinge between a movable flap and a fixed portion. This form of closure for a moisture-tight box makes it unnecessary to remove the whole lid in order to get at the contents. This is not the purpose of the invention, which is to afford protection against dust. Moreover, the lid does not have a flanged portion to hold the cassette in place nor an inter-locking system on the box itself, so that a person skilled in the art does not need to take such a box into account.
8.3 From what has been said it is clear that claim 1 is not an obvious extension of the state of the art and that its subject- matter involves an inventive step within the meaning of Article 56 EPC. It is, therefore, patentable.
9. Claim 2, which is dependent on claim 1, concerns a particular embodiment of the rigid connection means to which that claim relates. It is supported by the original description in terms of both form and substance and is admissible on the same grounds as claim 1.
10. The Board of Appeal has no objection to the amendments made to the description by the appellant, the effect of which, given the state of the art represented by FR-A-2 189 811, is to redefine the problem of the invention and the ambit of protection to be granted.
11. Although the appellant has not requested reimbursement of the appeal fee, the Board considers that he is entitled to benefit from Rule 67 EPC, which provides for reimbursement where an appeal is allowable and where such reimbursement is equitable by reason of a substantial procedural violation (see point 3).
ORDER
For these reasons, it is decided that:
1. The matter is referred back to the first instance for the granting of a European patent on the basis of claims 1 and 2 and pages 1 to 7 of the description as received on 27 April 1983 and the original drawings.
2. The appeal fee is to be reimbursed