W 0002/97 10-10-1997

1. The protest is admissible. The Board is responsible under Article 154(3) EPC for deciding on the protest.

2. In these protest proceedings it is to be decided whether, on the basis of the reasons given by the ISA under Rule 40.1 PCT (see the above section I) and the counter-reasons provided by the Applicant under Rule 40.2c PCT (see the above section II), the invitation to pay the disputed additional search fees was justified.

3. The sole independent claim of the international application as filed and searched is claim 1. Each of the other claims 2 to 35 is truly dependent, directly or indirectly, upon this claim 1.

The invitation stated that each of the cited documents US-A-4 962 734 and EP-A-567 688 disclosed all the features of claim 1 and solved the problem underlying the invention that the central part of the fan did not take part in generating the desired air flow.

4. The invitation unhelpfully contained no reasoning as to why the each of the cited documents US-A-4 962 734 and EP-A-567 688 should destroy novelty of the subject-matter of the claim 1 being searched, indeed the invitation did not list a single passage or Figure in either of these cited documents. Thus it could not be determined from the invitation which of the various embodiments of the citations the ISA considered to be novelty destroying.

It is clear that the reasoning for inviting an Applicant to pay an additional search fee or fees must be contained already in the invitation. Reasoning contained in the prior review reaches the Applicant only after he has decided to pay the additional search fee or fees and thus only helps him to decide whether or not to pay the protest fee.

Indeed in the present case, it was only after the Applicant had paid the disputed additional search fees that he received the prior review which drew attention to column 7, lines 63 to 66 of the cited document US-A-4 962 734 (but made no mention of the other cited document EP-A-567 688).

5. The cited document US-A-4 962 734

5.1. While the information in the prior review necessarily arrived too late to be of help to the Applicant in deciding whether to pay the additional fees, the cited passage of document US-A-4 962 734 refers to Figure 4 and thus implies that the ISA must have considered the embodiment of Figure 4 to be novelty destroying.

5.2. This Figure 4 is a cross-sectional view along the line 3 to 3 of Figure 1. The fan 18 of this embodiment has a central region (see Figure 1 and column 3, line 6) where a plurality of blades 20 are coupled with their ends to each other, extend more or less in radial direction and are of a form such that when driven rotatably round the axis of the central region an air displacement occurs. The radial end zones of the blades 20 are connected by a ring 22 which is supported rotatably by a fan support assembly 11 which itself is supported (see the description of the embodiment of Figures 1 to 3, in particular column 2, line 67 to column 3, line 2 and frame member 16 shown on Figure 1 and described in column 3, lines 65 to 68). The blades 20 are rotatably driven round the axis of the central region by magnetic regions 48 (in a flange 41 extending from the ring 22) interacting with field windings 46 on the fan support assembly 11 (see column 7, lines 57 to 60 and Figures 4 and 6) and thus forming a motor located at a distance from the hub outside the air flow generated by the driven blades.

5.3. Claim 1 includes one requirement that has not been mentioned in the analysis in the above section 5.2, the third feature of the characterising part, namely that:

"the axial dimension of the ring and that of the annular housing is a maximum of 0.2 x the diameter".

Column 7, lines 63 to 66 of the cited document US-A-4 962 734 state that:

"The flange 41 of FIG. 4 is longer than the width W of ring 22. The total fan package thickness can be significantly reduced by having relatively thin fan blades 20, the width W being small. For a thin ...".

It can be seen from Figure 4 that the width W of the ring 22 means the same as the term "the axial dimension of the ring" used in claim 1. Thus the cited passage teaches that the axial dimension of the ring can be small.

However the cited passage does not compare the axial dimension of the ring with its diameter. The passage neither states that the axial dimension of the ring shall be a maximum of 0.2 x the diameter nor does it specify dimensions for the ring from which it could be calculated that the ring satisfies this requirement.

Moreover the cited passage, apart from stating that the total fan package thickness can be significantly reduced, does not give any specific information about the axial dimension of the annular housing and its relationship to the diameter. It should also be noted that Figure 4 is a diagrammatic representation of the fan support assembly 11 and so cannot be measured to obtain dimensions and ratios, see the decision T 204/83 (OJ EPO 1985, 310).

Thus the cited passage does not disclose the third feature of the characterising part of claim 1. The Board moreover cannot find a disclosure of this feature anywhere else in the cited document US-A-4962734, either for the embodiment of Figure 4 or for any other embodiment.

6. The cited document EP-A-567 688

6.1. As stated in section 4 above the invitation specified no passage or Figure in the cited document EP-A-567 688. However it is clear that in each embodiment the drive means comprises a rotor 5 consisting of a ring at the periphery of the blades 2 as well as a ring shaped stator 6.

6.2. On the other hand there is no information in the document to show, in the words of the third feature of the characterising part, that "the axial dimension of the ring and that of the annular housing is a maximum of 0.2 x the diameter". No dimensions are quoted in the cited document to calculate the ring and housing ratios for either embodiment. Once again Figures 1 and 2 are diagrammatic representations (see column 2, lines 41 and 42: "Es zeigen in einem schematischen Längsschnitt") and so cannot be measured to obtain dimensions and ratios.

7. Thus, for the reasons given in the above sections 5.3 and 6.2, the Board finds the subject-matter of claim 1 to be novel over the disclosures of the cited documents US-A-4 962 734 and EP-A-567 688.

Consequently the reasoning in the invitation is incorrect and the whole basis for arguing that six inventions are claimed by the set of 35 claims collapses.

The third feature of the characterising portion of claim 1 makes the subject-matter of claim 1 novel and so forms a novel link between all the claims 1 to 35. This technical feature defines a difference over the prior art.

Accordingly the five additional search fees must be reimbursed. The protest is entirely justified and so the protest fee must be refunded (Rule 40.2(e) PCT).

8. The Board is not entitled to investigate of its own motion whether a unity of invention objection could have been raised for some other reason other than that given in the invitation, see section 4 of decision W 3/93 (OJ EPO 1994, 931). Accordingly, the objection of lack of unity could be raised again for different reasons (e.g. lack of inventive step) in the event of subsequent proceedings under PCT Chapter II.