T 0803/96 05-08-1998

I. The appellant is proprietor of the European patent No. 0 378 711, which was granted with one main claim and three dependent claims 2 to 4 on the basis of the European patent application No. 89 100 607.4 citing EP-A-0 048 794.

II. An opposition was filed on the grounds that the subject-matter of the opposed patent lacked novelty or at least an inventive step having regard to the above-mentioned EP-A-0 048 794, to new cited prior art documents comprising inter alia DE-B-103 459, and to a prior public use based on the content of a letter of the patent proprietor (appellant) mentioning no need for confidentiality and addressed, before the date of filing relevant to the opposed European patent, to the opponent (respondent).

III. During opposition proceedings, claim 1 was amended to read as follows:

"1. A method for manufacturing an essentially ball-shaped anode piece suited for an electroplating bath, characterised in that the anode piece (4) composed of some anode material is separated from an object (1) essentially longer than the diameter of the anode piece (4) to be produced, essentially simultaneously with the forming of the anode piece, whereby the working of the anode piece is carried out by one-stage rolling."

The European patent, with this amended claim 1, was revoked.

The Opposition Division found that the amendments resulting in the submitted claim 1 were admissible and that the subject-matter of this claim was novel, but reasoned substantially as follows with respect to inventive step:

The acknowledgment of an inventive step must be based on the question as to whether the claimed method is obvious in view of the cited state of the art, as well as on unexpected technical effects and/or advantages of said method, e.g. based on particular properties of the article produced by the method. In this connection, relevant to the question of obviousness is primarily the disclosure of DE-B-103 459 concerning the production of ball-shaped objects from steel bars in a multi-step process, although a multi-step process is not necessarily required. In fact, this document also teaches that the number of rolling steps to produce a ball-shaped object is dictated by the desired final dimensions of the object, i.e. a multiplicity of rolling steps is required for ball-shaped objects of relatively large dimensions (see e.g. the paragraph bridging pages 1 and 2).

This teaching can be regarded as implying that if, conversely, it is intended to produce ball-shaped objects of relatively small dimensions, then a one-stage rolling step as specified in the submitted claim 1 would be a measure that the skilled person aware of the teaching of DE-B-103 459 would be induced to adopt without the exercise of inventive ingenuity, i.e. he would use thinner bars or softer materials to produce ball-shaped anodes of relatively small dimensions.

As far as the alleged advantages and/or properties of the ball-shaped anode pieces produced with the claimed method were concerned, such as e.g. the absence of a passivation layer or others which may derive from a change in the crystal lattice of the anode material, the proprietor had failed to substantiate, for instance in terms of tests or comparison data, any differences that the present ball-shaped anodes might possibly show when compared with ball-shaped anodes of the same material produced according to the known multi-step methods, i.e. the proprietor has failed to prove that only by the present method it would be possible to avoid the formation of passivation layers during the working of the anode material into the ball-shaped objects, which is the problem underlying the claimed invention.

Therefore, the claimed process was considered as lacking an inventive step.

IV. The patent proprietor lodged an appeal against this decision. He requested that the decision under appeal be set aside and that a patent be maintained on the basis of a main request or of an auxiliary request consisting of claim 1 having formed the basis for the impugned decision. Moreover, the appellant auxiliarily requested, inter alia, that the appeal fee be reimbursed because of a substantial procedural violation. With a subsequent letter, the appellant filed an auxiliary request for oral proceedings.

V. The respondent (opponent) declared by a letter dated 18. September 1997 that he withdrew the opposition.

Beforehand, he had submitted arguments, in particular against appellant's auxiliary request, which concerned the obviousness of the claimed method either by taking into account the "rolling" technology known from the prior public use or by making use of the method of DE-B-103 459 for making anode balls as those known from EP-A-0 048 794. Moreover, the relevance of the comparative measurements provided by the appellant was denied.

VI. In a communication dated 24 April 1998, the Board of appeal informed the appellant that only the auxiliary request, with the text having formed the basis for the impugned decision, seemed to involve an inventive step. Moreover, it was stressed that, pursuant to Rule 67 EPC, the question of reimbursement of appeal fees could be treated only if the appeal was deemed allowable. The appellant was asked to specify if he wished to be heard before any possible negative decision concerning his main request and/or his request of reimbursement of appeal fees.

VII. With letter dated 1 July 1998, the appellant declared that he is requesting to maintain the patent in amended form with claim 1 of his former auxiliary request and with claims 2 to 4 as granted, and that the request of reimbursement of appeal fees is not further maintained.

VIII. In his letters, the appellant argued as follows in support of his requests:

The crucial question is whether the specific feature of the simultaneous separating of the anode pieces and their forming as ball-shaped pieces by one-step rolling was known or made obvious by the state of the art. EP-A-0 048 794 represents the closest prior art in that, contrary to the other prior art documents, it is concerned with the manufacture of anode pieces. However, the anode pieces produced in the known method are separated from the wire and then the separated pieces are submitted to mechanical treatment to form them as balls. Thus, the anode pieces are not separated from an object such as a wire essentially simultaneously with the forming of the anode pieces. Moreover, in this document, the working of the anode pieces is carried out for instance by pressing, and not by one-stage rolling. The present invention intends to separate the anode pieces and form them, i.e. work them, in one step and not in two steps, as in the known method.

Another method for manufacturing essentially ball-shaped pieces is known from DE-B-103 459 but, contrary to methods such as that of EP-A-0 048 794, it is not specified as being for manufacturing anode pieces suited for an electroplating bath, so that the skilled person would not take it into account because the problem addressed to is in any case different. The information derivable from the prior public use alleged by the respondent is insufficient and thus not significant enough in the present context. Therefore, starting from the method known from EP-A-0 048 794, the skilled person found no specific incentive for using one-stage rolling.

Results of comparative measurements, filed with the statement of grounds, show the advantages, having respect to their function as anode, obtained with the balls made by the presently claimed method as compared to the heavily forged balls of EP-A-0 048 794 which in particular have a passivation layer. These results are relevant to the present invention and to the method of EP-A-0 048 794, respectively, as can be confirmed by the person responsible for these measurements, if necessary. Therefore, the claimed method involves an inventive step.