BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.2.2 dated 15 October 1992 - W 32/92 - 3.2.2
Composition of the Board:
M. Aùz Castro
Applicants: WISAP Gesellschaft für wissenschaftlichen Apparatebau mbH et al
Headword: Cervical punch/WISAP
Article: 17(3)(a) PCT
Keyword: "Lack of unity "a posteriori" (yes)"
There is lack of unity within the meaning of Article 17(3)(a) and Rule 13 PCT if the subject-matters of independent claims including their effects have no inventive common feature in those parts of the claims differing from the closest prior art (following W 6/90, OJ EPO 1991, 438).
Summary of Facts and Submissions
I. On 24 January 1992 the applicants filed international application No. PCT/EP 92/00 150 containing 16 claims with the European Patent Office. Independent Claims 1 and 2 read as follows:
"1. Cervical punch with
- a hollow cylindrical body (12) for holding a guide rod (24),
- a longitudinal slaving guide (22, 32) for the relative movement of the cylindrical body (12) and guide rod (24), arranged in the cylindrical body (12) and/or on the outer circumference of the guide rod (24),
- a cutting zone (20) provided at the open distal end (18) of the cylindrical body (12) and
- a gripping zone (26) or engaging zone (83) for rotating the cylindrical body (12), arranged at the proximal end of the cylindrical body (12).
2. Cervical punch
with a hollow cylindrical morcellator tube (80) having, at its open distal end, a cutting zone (20) provided with an undulating cutting edge."
Dependent Claim 3 refers to Claim 2 while dependent Claims 4 to 16 each refer to one of the previous claims or a particular previous claim.
II. On 14 May 1992 the European Patent Office, as the competent International Searching Authority, invited the applicants to pay an additional search fee under Article 17(3)(a) and Rule 40.1 PCT, stating that the application did not, in the Office's view, meet the requirement of unity of invention according to Rule 13.1 PCT.
The reasons given were that Claims 1 and 4 to 16 on the one hand and Claims 2 and 3 on the other related to different inventions. All features of Claim 1 were known from document WO-A-88/10 098. Furthermore, the common technical features of Claims 1 and 2, i.e. the features "cervical punch", "hollow cylindrical body (tube)" and "cutting zone", belonged to the prior art. Since there was therefore no common inventive concept between independent Claims 1 and 2, there was lack of unity.
III. On 12 June 1992 the applicants paid the additional search fee under protest and requested reimbursement. In the applicants' view, there is unity of invention since the subject-matter of Claim 2 could be seen as an advantageous embodiment of the hollow cylindrical body according to Claim 1.
Reasons for the Decision
2. In the invitation to pay an additional search fee the Searching Authority pointed to two groups of claims - Claims 1 and 4 to 16, and Claims 2 and 3 - and, referring to patent document WO-A-88/10 098, raised an objection of lack of unity "a posteriori". According to key decision G 1/89 (OJ EPO 1991, 155) of the Enlarged Board of Appeal, that is permissible in clear cases. The only sensible way of interpreting the Searching Authority's assertion that there was no common inventive concept between the independent Claims 1 and 2 is that it was intended to bring out the lack of unity between the subject-matters of the two groups of claims mentioned above.
3. A simple comparison of the cervical punch according to Claim 1 of the present application with the instrument for intra-cervical hysterectomy disclosed in particular in Figure 5 and the accompanying text of WO-A-88/10 098 shows at once that the claimed cervical punch is not novel.
4. After the demise of independent Claim 1 on account of the subject-matter's lack of novelty, the question arises whether the subject-matters of the remaining claims - in this case, the subject-matter of independent Claim 2 and that of any new independent claim formed by combining Claim 1 with a dependent claim, e.g. Claim 4 - are so linked as to form a single general inventive concept, i.e. meeting the requirement of unity of invention within the meaning of Rule 13.1 PCT.
The applicants' argument in their submission of 12 June 1992 that the subject-matter of Claim 2 could be regarded as an advantageous embodiment of the hollow cylindrical body according to Claim 1 is therefore rendered invalid.
5. Claim 2 and any new claim formed by combining Claim 1 with Claim 4 have in common only the following structural features: "cervical punch", "hollow cylindrical body/tube" and "cutting zone at the open distal end of the cylindrical body". Since this group of features is known from WO-A-88/10 098 and thus belongs to the known part of the subject-matter claimed in each case, it may form a single general concept but not on its own the single general inventive concept required under Rule 13.1 PCT (cf. W 6/90, OJ EPO 1991, 438).
6. In view of the aforementioned decision it remains to be examined whether the effects obtained by the subject-matters of Claim 2 and the new claim mentioned can, as another possible common feature, represent a single general inventive concept.
According to page 1 of the specification the problem to be solved by the invention in the broadest sense is that of providing a medical instrument capable of removing uterine tissue in a precisely defined area of the cervix as gently as possible. The identifiable effect is - as is immediately clear - already achieved by the device known from WO-A-88/10 098. On its own therefore this effect cannot contribute to the prior art and form any single general inventive concept.
The feature contained in Claim 2 that is not known from the patent document mentioned, i.e. that is different, wherein the cutting zone is provided with an undulating cutting edge, has the effect according to page 2 of the specification that when the cylindrical body is rotated a very precise incision is made in the uterine tissue without the remaining tissue being excessively traumatised and the cervical fasciae being deformed in the process. On the other hand, the feature contained in the new claim which is derived from Claim 4 and is also not known from the patent document mentioned, i.e. is different, wherein a closely fitting guide cylinder passes through the cylindrical body and in particular has a somewhat greater axial length than the cylindrical body, has the effect according to page 13 of the specification of making it possible to centre the cylindrical body near the mouth of the uterus, in particular at the beginning of the operation. These different relevant effects cannot therefore be connected technically and consequently cannot form a single general inventive concept either.
7. To conclude, in the Board's judgment, there is lack of unity within the meaning of Article 17(3)(a) and Rule 13 PCT if the subject-matters of independent claims including their effects have no obviously inventive common feature in those parts of the claims differing from the closest prior art (following W 6/90, ibid.).
8. In this case it is therefore immediately clear that the groups of claims defined by the Searching
Authority relate to different inventions which do not comply with the requirement of unity of invention.
The Searching Authority was therefore right to issue an invitation to pay an additional search fee.
For these reasons it is decided that:
The protest is dismissed.