T 0109/99 13-09-2000

1. The only outstanding question with regard to the admissibility of the opponents' appeal is whether the requirement of Rule 64(b) EPC has been met that the notice of appeal shall contain a statement identifying the decision which is impugned "and the extent to which amendment or cancellation of the decision is requested".

The only relevant statement in the notice of appeal is that "the decision dated 30.11.1998 to reject the opposition under caption is hereby appealed from and by virtue and under the provisions of Art. 106-108 EPC". Having regard to the facts that the opposition was directed against the granted patent in its entirety and that the opposition was rejected and the patent maintained unamended, the Board can see no genuine room for doubt that the statement quoted above has to be understood as meaning that the opponents were implicitly requesting to have the contested decision set aside and the patent revoked in its entirety, cf. decision T 925/91 (OJ EPO 1995, 469, point 1.1). Since it is the result of the decision which is ultimately being challenged, not the individual aspects of the reasoning which led to that result, there was no requirement for the opponents to identify those aspects with which they agreed and to separate them out of the scope of the appeal.

2. Having regard to the fact that the decision of the Opposition Division under consideration was to reject the opposition and hence maintain the patent as granted, this decision cannot be seen as one adversely affecting the patentee in the sense of Article 107 EPC, notwithstanding the fact that the Opposition Division did not accept the arguments of the patentee dealing with the admissibility of the opposition. The appeal of the patentee against this decision, which seeks to have the opposition declared inadmissible, is therefore itself inadmissible, cf decision T 73/88 (OJ EPO 1992, 557).

3. The Board has no difficulty in agreeing with the contention of the patentee, amply supported by the case law on which he relies, that a notice of opposition which consists of little more than of a list of prior art documents from which various features of the claimed invention are allegedly known and which is effectively nothing more than an attempt to open up a general re-examination of the patent does not meet the requirements of Rule 55(c) EPC. But that is by no means a fair description of the notice of opposition in the present case.

Starting from document D1, which is stated in the patent specification to form the basis for the preamble of granted claim 1 and accordingly did not need to be discussed in detail, it is argued in the sections "Prior art", "Discussion" and "Conclusions" of the notice of opposition that the features set out in the characterising clause of the claim were either known from or inherent to the use of the pipe stopping devices disclosed in documents D2 to D5 and that it was obvious to apply these features to a device as disclosed in document D1, with the result that the subject-matter of the claim lacked inventive step. It is true that some of the argumentation involved is somewhat sketchy and not fully developed, its import however is unmistakeable. Certainly, the patentee himself appears to have had no difficulty in understanding what the case of the opponents was as evidenced by his full reply of 11 December 1996 to the notice of opposition in which he argues for the inventive step of the claimed subject-matter in the light of the cited prior art and in which there is no suggestion that the notice of opposition was inadmissible.

Furthermore, the argument of the patentee that the opponents had placed an unfair burden on him and the Opposition Division by not identifying which parts of extensive documents they were relying on does not stand up to closer examination. In fact, with respect to both documents D3 and D4, the only ones which can be said to be of any significant length, the notice of opposition clearly indicates which pages are the ones considered particularly relevant i.e. Bulletin Nos. 603.0, 604.0 and 605.0 of document D3 and pages 6 and 7 of document D4.

Accordingly the Board comes to the conclusion that the notice of opposition complies with the requirements of Rule 55(1) EPC, and with the other formal requirements for filing an opposition not being at issue, is admissible.

4. In response to the objection raised by the Examining Division that the subject-matter of claim 1 as originally filed lacked novelty with respect to document D1 the claim was amended to specify in its characterising clause features which were effective to ensure that in the operative pipe-blocking, ie "second" position of the device, the flange of the obturating end would be positioned at right angles to the axis of the pipe. Paraphrasing the characterising clause somewhat for the sake of the better understanding, the features involved are that the obturating end is fixed to the rod with its flange arranged at a predetermined acute angle to the axis of the rod; in the operative position of the device the rod is disposed at an angle determined by it abutting the central hole in the end wall of the cup-shaped body and the edge of the through-hole in the pipe, this angle being determined by the "shape" (more properly length) of the cup-shaped body in relation to other parameters, for example length of the sleeve, diameter of the through hole and diameter of the rod (this relationship is not specifically stated in the claim, but is implicit); the angle of the rod with respect to the axis of the cup-shaped body and the sleeve, which is perpendicular to the axis of the pipe, substantially corresponds to the acute angle between the axis of the rod and the plane of the flange or in other words - in the terms of the claim - the axis of the rod forms with the axis of the pipe a substantially complemental angle with respect to that acute angle.

The issue as to whether this combination of features had been adequately disclosed in the original application was first raised by the opponents in their letter filed on 13 October 1997, ie more than two years after the date of grant of the patent. At that stage oral proceedings before the Opposition Division had not yet been appointed; these were finally held on 9. November 1998. At the oral proceedings the issue of the objection under Article 100(c) EPC was discussed and after deliberation the Opposition Division announced that it would not consider this ground of opposition as it was prima facie not relevant. As explained briefly in the statement of reasons in the written decision the Opposition Division was of the opinion that the features in question could be seen in Figure 3 and that this figure was not in contradiction to Figure 5.

In its decision T 986/93 (supra) the Board dealt with the question, having regard to the findings of the Enlarged Board of appeal in opinion G 10/91 (OJ EPO 1993, 420) of the extent to which it could and should examine a ground of opposition which had been belatedly raised before the Opposition Division and which had been disregarded by the latter under Article 114(2) EPC. In that decision the Board held that it should only interfere with the decision of the Opposition Division in this respect if it was satisfied that there were indeed, prima facie, clear reasons for believing that the new ground of opposition was highly relevant to the extent that it would in whole or part prejudice maintenance of the patent, so that the Opposition Division had exercised its discretion incorrectly.

Applying these principles to the present case it is readily apparent from a comparison of granted claim 1 with the terms of the original application that the characterising clause of the claim contains features which have no verbal counterpart whatsoever in the description and claims as originally filed. Now, as established in decision T 169/83 (supra), although it is in principle permissible to incorporate into a claim a feature only found in the drawings of the original application, this feature must be clearly, unmistakably and fully derivable from the drawings in terms of structure and function by the person skilled in the art and so relatable by him to the content of the description as a whole to be manifestly part of the invention. In the present case the facts that in the embodiment of Figure 3 a special element is provided for achieving the correct orientation of the flange, which is the alleged function of the features specified in the characterising clause of granted claim 1, and that in the embodiment of Figure 5 the condition resulting form these features is not met, both of which were pointed to by the opponents at the oral proceedings before the Opposition Division, give rise, prima facie, to considerable doubt as to whether the requirements set out in decision T 169/83 (supra) are met. The proper course of action for the Opposition Division would therefore have been for it to proceed to a full examination of the objection under Article 100(c) EPC, as the Board will now do.

In this context the Board cannot see that any constructive purpose would be served by remitting the case at this juncture to the first instance in order to allow it fully to consider the merits of all the arguments concerning the alleged addition of subject-matter. To do so would merely unnecessarily prolong the procedure. The request of the patentee in this respect is therefore refused.

It is not in dispute that in the operative position of the device as shown in Figure 3 the position of the rod with respect to the through-hole in the pipe and the position of the flange within the pipe are as set out in the characterising clause of granted claim with the consequence that the geometric condition stated there - the requirement for the two angles involved to be "complemental", ie to add up to 90 , is also given. However, as already indicated above, this in itself cannot represent a sufficient basis for the incorporation of the relevant features into that claim. What is required in this respect is that the person skilled in the art will clearly and unmistakably recognise from Figure 3, in the context of the description as a whole, that the arrangement illustrated there is the deliberate result of technical considerations involving the relative dimensions of the elements of the device, as explained in more detail above, intended to ensure the correct orientation of the flange of the obturating end of the device when it is in its operative position.

The Board cannot see how this would be the case given that the embodiment of Figure 3 is provided with other means specifically intended for achieving this function. These means are constituted by a tubular element fixably disposed on the rod and having an inclined end face which in the operative position of the device engages the end wall of the cup-shaped body enabling "the rod to be positioned at an optimal inclination...to the axis of the cup-shaped body and the flange to be arranged perpendicular to the axis of the pipe", cf. column 3, lines 12 to 20 of the published A-document. Thus if the contention of the patentee as to what the person skilled in the art would understand from Figure 3 were to be accepted then that person would have to assume that means specifically disclosed for obtaining proper orientation of the flange were redundant. In the opinion of the Board this is not a realistic appraisal of how persons skilled in the art approach the technical information they are presented with.

Another factor which would certainly not encourage the person skilled in the art to see in what is illustrated in Figure 3 a technical teaching involving the abutment of the rod with the edge of the through-hole in the pipe and the consequences that might be involved for the proper orientation of the flange is the fact that in Figure 5 there is no such abutment. Taking into consideration that the embodiments illustrated in Figures 3 and 5 are in general terms quite similar then it would have been expected that the abutment of the rod with the edge of the through-hole would also be shown there if it were of any importance, especially as in this embodiment the tubular element on the rod discussed above is not present. For the Board the argument of the patentee that the person skilled in the art would recognise the device in Figure 5 as being at an intermediate rather than its final operative position has no clear objective basis and is unconvincing. In the circumstances the Board can see no reason why the draftsman would have chosen such a form of portrayal as it would serve no purpose. Furthermore, the Board is not convinced by the contention of the patentee that in practice the pressure in the pipeline would always be effective to move the rod into a position in which it abutted the edge of the through-hole in the pipe since the force on the rod tending to move it in this direction and the forces resisting such movement are dependent on several indeterminate factors.

The Board therefore comes to the conclusion that the subject-matter of granted claim 1 extends beyond the content of the original application in contravention of Article 100(c) EPC.

5. As for claim 1 according to the auxiliary request this merely includes some clarifying amendments, added in response to a comment by the Board in its communication of 31 March 2000, which amendments have no bearing on the central issue of added subject-matter discussed above.