T 0116/84 28-11-1984

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC; it is, therefore, admissible.

2. The statements of the appellants in their statement setting out the grounds of appeal justify the Board to point out the following:

The European Patent Organisation is not a party to the Paris Convention. The rights on the subject of claiming priority, which is valid according to Article 150 (3) EPC also for an international application for which the EPO acts as designated Office or selected Office, are governed by the provisions of Articles 87 to 89 and Rule 38 EPC. They form a complete, self-contained, code of rules of this law (cf. Decision T 15/80 - Official Journal EPO 7/1981, 213). It follows from these Articles that the right of priorty has the effect that the date of priority shall count as the date of filing of the European patent application for the purpose of Article 54(3) EPC. According to Article 88(3) EPC the priority date is valid only to that extent in which the prior application or applications coincide with the content of the subsequent European patent application as filed, i.e. in case the original content of the subsequent European prior application, the priority of the prior application is not valid for a claim comprising additional matter.

Contrary to the opinion of the appellants it is, therefore, without importance as to whether features of the invention disclosed in the prior application are mentioned in an earlier application whose priority is not claimed in the prior application. As is stipulated in Article 88(3) EPC, the only question to be examined is whether or not those features of the subsequent European patent application for which protection is sought in the later application are included in the application or applications whose priority is claimed.

3. The examination of the prior US patent application No. 009 170 whose priority is claimed in the cited European application No. 79 901 428.7 produces the following result:

3.1 The main frame for the cutterhead disclosed in the aforesaid US application comprises as the subject-matter of European patent application No. 79 901 428.7 the following features for which protection is sought also in present Claim 1:

(a) an annular beam by which the cutterhead is mounted on the earth boring machine for rotation about an axis of rotation,

(b) a central hub structure disposed forwardly of the annular beam and

(c) a plurality of radial spoke beams having inner ends intergrally connected to the hub structure, intermediate portions extending rearwardly and radially outwardly from the hub structure to the annular beam and outer ends which are integrally connected with the annular beam to thereby form the main frame in a generally dome shape, each of said radial spoke beams having side portions defining an elongate opening extending through and substantially along the entire length of said beam (cf. particuarly pages 7 and 13 of the copy of priority document).

With regard to those features the priority is, therefore, claimed validly.

3.2 However, the main frame according to the prior US application No. 009 170 and its subsequent European application No. 79 901 428.7 comprises additionally a plurality of face-support ring members which are radially spaced apart and are also located on the main frame (cf. pages 5,8,23 and the claims of the priority document and pages 4, 8, 15, 16 and Claims 1, 19 and 35 of European patent application No. 79 901 428 7). It follows from the whole content of the prior application and its subsequent application that this feature is as such an essential element of the invention according to these applications. Therefore, it is impossible to omit the feature "face-support ring member" without falling outside the scope of the prior invention.

3.3 Hence, it follows that the subject-matter of present Claim 1 differs from the main frame which must be considered as comprised in the state of the art according to Article 54(3) EPC by the fact that the radial spoke beams are connected together only by the annular beam on the one hand and by the central hub structure on the other hand.

3.4 The main frame according to Claim 1 is, therefore, novel having regard to the prior European applicaton No. 79 901 428.7.

3.5 Furthermore, those features of the rotary cutterhead according to European application No. 79 901 428.7 which are mentioned in the present independent Claim 6 are likewise in the prior US patent application No. 009 170. Considering that the appellants have not disputed this fact, the Board deems it not necessary to give the reasons in detail.

From the statements made in paragraph 2, it follows that the priority is also validly claimed in respect of these features.

However, the rotary cutterhead according to the prior European patent application No. 79 901 428.7 comprises in any case also the aforesaid radially spaced apart face- support ring members.

The subject-matter of Claim 6 is, therefore, also novel having regard to the prior European application No. 79 901 428.7.

4. The Examining Division was of the opinion that the subject-matter of Claims 1 and 6 lacked novelty. Consequently, it has not yet examined whether or not the main frame according to a Claim 1 and the rotary cutterhead according to a Claim 6, whose characterising portion states the feature metioned in paragraph 3.3, involve an inventive step. Under these circumstances, the Board deems it inappropriate to decide this issue, but makes use of the power, given to it by Article 111(1) EPC, to remit the case to the Examining Division for further prosecution.

5. In seeking to justify their request for reimbursement of appeal fee, the appellants submitted that the Examining Division had not considered at all the earlier US patent application No. 931 384, when assessing the state of the art according to Article 54(3) EPC. The certified copy of US priority document 009 170 contained a specific cross-reference to this prior filed application.

It follows from what has been said in paragraph 2 that there was no occasion for the Examining Division to consider also US patent application No. 931 384 when it examined the problem as to whether or not the content of European patent application No. 79 901 428.7 as filed should be considered as comprised in the state of the art. A substantial procedural violation by reason of which the reimbursement would be equitable does not, therefore, exist.