T 1174/20 13-07-2023

Reasons for the Decision

1. Admittance of documents D23 to D30

1.1 Since documents D23 to D30 were filed after notification of the summons to attend oral proceedings before the Board, their admittance into the appeal proceedings falls within the discretion of the board under Article 13(2) RPBA 2020.

When exercising its discretion under Article 13(2) RPBA 2020, the board may rely on criteria as set out in Article 13(1) RPBA 2020 (see T 172/17, Reasons 5.4).

1.2 In the case at hand, the opponent argued from the beginning of the appeal proceedings that the terms "shaft" and "drum" were synonyms in the context of claim 1. In order to support this argument, the opponent cited documents D23 to D30 with the intention of proving the common general knowledge of the skilled person.

Irrespective of whether patent applications can indeed demonstrate the common general knowledge, documents D23 to D30 do not support the opponent's argument.

Although documents D23 to D30 disclose shafts and drums as alternative means in the general part of the description, this does not imply that the terms are synonyms even in these documents. On the contrary, most of the documents clearly use the terms "shaft" and "drum" with different meanings to indicate different mechanical parts, see for example:

D23, page 12, line 8:

"drum-like annulii 17 adapted to fit the shaft"

D25, Figure:

drum z, shaft y

D26, Figure 1:

snub drum 18, rotatable shaft 20

D27, page 4, second paragraph:

"drum shaft 4,6"

D28, col. 2, lines 21-23:

"the driven shaft 3 on which the cable drum ... is

mounted"

D29, col. 2, lines 49-51:

"the shaft 5 is seen which rotates the drum ..."

D30, col. 5, lines 3-5:

"a drum 32 mounted for rotation on a shaft (not

shown) for rotation"

Hence, the late-filed documents are not prima facie relevant in supporting the opponent's argument that the terms drum and shaft are used synonymously.

1.3 The Board considered the above circumstances pursuant to Article 13(2) RPBA 2020, and decided not to admit documents D23 to D30 into the appeal proceedings.

2. Main request - claim 1 - novelty over E1

2.1 E1 discloses, in Figure 1, a system for cutting to length at least two strands of long rolled products, comprising a shear and movable guides.

FORMULA/TABLE/GRAPHIC

Each guide comprises two pipes (21, 28), each pipe being arranged to receive and guide one strand of long product.

One guide is located upstream of the shear and the other guide is located downstream of the shear.

The shear, as shown in Figure 2 of E1, comprises two rotatable shafts (41, 47), each shaft having cutting means (38, 45) arranged to simultaneously cut two strands of long rolled products into finished segments. In addition, there is a space (66) between the cutting means (38, 45) and a space (65) next to the cutting means, which allow the strands to pass the shear without being cut, see column 3, lines 38 to 49.

FORMULA/TABLE/GRAPHIC

Hence, the guides of E1 are movable between

- a position wherein two strands are located outside

of the trajectory of the cutting means in a position wherein said strands cannot be cut

(see Figure 2 above, reference numerals 65, 66) and

- a position wherein the strands are located within

the trajectory of the cutting means in a position wherein said strands can be cut.

2.2 The opponent argues that the rotation shafts (41, 47) of E1 can be considered drums according to claim 1 of the patent, in view of the common general knowledge that any rotating cylindrical element is a drum.

This argument is not convincing.

2.3 The wording of a claim needs to be interpreted in a way which is technically sensible in the technical field concerned, see Case Law of the Boards of Appeal, 10th edition, 2022, II.A.6.1.

Although a drum is usually a rotating cylindrical element, as argued by the opponent, it cannot be concluded that every rotating cylindrical element is a drum. For example, a disc is a cylindrical element of relatively low height. However, a disc is not usually referred to as a drum.

2.4 Furthermore, the patent refers to a shaft moving the guide (see claim 11, paragraphs [0019] and [0022]). Hence, in the context of the patent the term "shaft" is not used synonymously with the term "drum". The patent further confirms that not all cylindrical elements are drums in paragraph [0021], since that refers to rods (12d, 14d). The use of terms such as "shaft", "drum" and "rod" in the patent is therefore not arbitrary, contrary to the opponent's argument.

It follows that neither the common general knowledge nor the disclosure in the patent provides support for considering shafts and drums as synonyms in the context of the patent.

2.5 In view of the above, the Board concludes that the shear shafts (41, 47) of E1 cannot be considered drums (in the meaning of claim 1) on which the cutting means are mounted.

The subject-matter of claim 1 as granted is therefore novel over E1.

3. Main request - claim 12 - novelty over E1

3.1 E1 discloses a method of cutting two strands of long rolled products into finished segments by the flying shear illustrated in Figure 1. It is undisputed that, according to E1, two strands are continuously moved forward and are guided into the shear within the trajectory of cutting means able to cut said two strands.

3.2 However, the patent proprietor argues that in the cutting method of E1 the two strands are not guided simultaneously inside and outside the trajectory of the cutting means as a result of the use of a specific mechanical transmission system, as shown in Figures 5 and 6 of E1.

This argument is not convincing.

3.3 In view of the wording of claim 12, it is not relevant whether the movement of the outlet guide exactly mirrors the movement of the inlet guide. In order to obtain a simultaneous movement of the strands within and outside the trajectory of the cutting means, a movement of the inlet guide and an in some way adapted movement of the outlet guide are sufficient. This is the case in E1, as explained below.

The transmission system of E1 comprises several gears with teeth (Figure 6, column 3, line 63 to column 4, line 72).

FORMULA/TABLE/GRAPHIC

The first connecting rod 110 and the second connecting rod 111 are mounted on the same crank shaft 104 and therefore move simultaneously. The connecting rod 110 imparts lateral movement to the downstream carrier 33 and the inlets 30 of the pipes 28 of the outlet guide (second guide 14, in the meaning of claim 1 of the patent).

A further connecting rod 121 in the mechanism of E1 manipulates the outlet end of the pipes 28 of the outlet guide (column 4, lines 60 to 64), in order to direct the cut strands alternately to two coilers, see column 4, lines 58 to 72.

For the movement in and out of the trajectory of the cutting means, the inlet guide is important.

The mechanism of E1 uses a single connecting rod 111 to manipulate pipes 21 of the inlet guide. The connecting rod 111 imparts lateral movement to the clevis element 25 and the pipes 21 of inlet guide (first guide 12, in the meaning of claim 1 of the patent), see Figures 5 and 6 of E1. Hence, the connecting rod 111 achieves a parallel movement of the pipes 21, since the pipes 21 are fixed by clevis element 25 to the connecting rod 111.

It follows that the two strands are guided simultaneously both within and outside the trajectory of the cutting means by the movement of the connecting rod 111.

Therefore, the subject-matter of claim 12 as granted lacks novelty over E1.

4. Admittance of main request A and auxiliary request 1A

4.1 As the main request A and auxiliary request 1A were filed after notification of the summons to attend oral proceedings before the Board, Article 13(2) RPBA 2020 applies.

The main request A and auxiliary request 1A correspond to the main request and auxiliary request 1, except that the method claims have been deleted.

4.2 Any part of a party's appeal case which is not directed to the requests, facts, objections, arguments and evidence contained in the statement of grounds of appeal or the reply constitutes an amendment to a party's appeal case within the meaning of Article 13(1) and (2) RPBA 2020. This includes the filing of an amended claim request (see J 14/19, Reasons 1.4 and 1.5).

4.3 In view of the above, and contrary to the patent proprietor's assertion, the deletion of one or more claims from a claim request also constitutes an amendment of the appeal case within the meaning of Article 13(1) and (2) RPBA 2020.

4.4 As stated above, when exercising its discretion under Article 13(2) RPBA 2020, the Board may also rely on criteria as set out in Article 13(1) RPBA 2020 (see T 172/17, Reasons 5.4).

4.5 In the case at hand, the Board had indicated in its communication under Article 15(1) RPBA 2020

- that the system of claim 1 of the main request was

novel,

- that the system of claim 1 of auxiliary request 1

was not obvious when starting from E1,

- that the method of claim 12 of the main request was

not novel, and

- that the method of claim 11 of auxiliary request 1

was obvious in view of the teaching in E1.

In response, the patent proprietor filed the main request A and auxiliary request 1A. Both requests correspond to requests underlying the contested decision, with the sole difference that the method claims - i.e. the only claims which the Board considered unallowable - have been deleted. The amendment in both requests thus directly addresses the objection of lack of novelty and lack of inventive step which the Board had considered valid. Moreover, it is immediately apparent why both requests overcome those objections. The amendment is also strictly limited to overcoming those objections. It does not shift the discussion or give rise to any new objections. Furthermore, the amendment does not involve any additional burden for the other party. It could also be expected, as the request that the opposition division had found to comply with the EPC does not contain any method claims either. Overall, although the patent proprietor amended its appeal case in response to the Board's preliminary opinion, it did so in a manner which clearly served procedural economy.

4.6 The Board considers the above circumstances to be exceptional under Article 13(2) RPBA 2020. It therefore exercises its discretion under that provision in taking the main request A and auxiliary request 1A into account in the appeal proceedings.

5. Main request A - inventive step

5.1 Both parties agree that E1 is the closest prior art, since it shows a system for cutting at least two strands of long rolled products according to the preamble of claim 1.

Claim 1 of main request A corresponds to claim 1 of the main request. As indicated above in point 2, the subject-matter of claim 1 differs from E1 in that the cutting means are mounted on a drum.

5.2 In line with the arguments of both parties, the objective technical problem can be seen as the provision of an alternative.

5.3 The patent proprietor argues that E1 does not provide a hint or incentive to arrange the cutting means on a drum. In its view, the use of drums in the shear according to E1 is not obvious, because it would require a redesign of the system of E1, given that drums need more space than shafts.

This argument is not convincing.

5.4 It is known in the art that driving means can be in the form of a rotating shaft or a rotating drum. Although "drum" and "shaft" are not synonymous terms, it is undisputed that both alternatives are part of the common general knowledge in the field concerned.

Equivalent mechanical parts are used by the skilled person as alternatives in the course of routine modifications to systems. A particular incentive is thus not required. Moreover, no reason can be seen why the skilled person would not replace the shaft in the flying shear of E1 by a known functional alternative, such as a small drum, when aiming to find a simple alternative.

Furthermore, the term "drum" according to claim 1 does not imply a minimum dimension or weight. Small drums that have the same dimension as the holding part on the shaft of the cutting means of E1 could be used, instead of the shaft as such, without any technical problems. Nor is the skilled person prevented from using relatively small drums by an allegedly required redesign of the shear of E1, since this does not appear to be necessary when using small drums, contrary to the argument made by the patent proprietor.

Therefore the Board concludes that the subject-matter of claim 1 of the main request A is obvious in view of E1 and consequently does not fulfil the requirements of Article 56 EPC.

6. Auxiliary request 1 - claim 11

6.1 With the summons to oral proceedings, the Board sent a communication pursuant to Article 15(1) RPBA 2020 informing the parties of its opinion, namely that the subject-matter of method claim 11 of this request does not involve an inventive step. The reasons for this are given below.

6.2 Claim 11 does not specify that the shear comprises drums. Furthermore, it merely requires that "the guiding steps comprises rotating simultaneously said two strands".

The Board is in agreement with the arguments of the opposition division in point II.3.3.2 of the decision, according to which it is obvious to keep the inlet ends of the guides 21 of E1 stable at one position, since this is common practice in the art, as shown for example in E6 (Figure 6: turning point 38) and E9 (Figure 1: turning point 10).

With the inlet ends kept at one position, the guiding step not only results in a movement of the two strands simultaneously, respectively within and outside the trajectory of the cutting means, but also comprises simultaneously rotating said two strands (the movement being analogous to the one shown in Figure 1 of the patent for the proximal guides 12).

6.3 This preliminary opinion by the Board was not disputed by the parties during the oral proceedings.

The Board does not therefore see any reason to deviate from this opinion, and concludes that the subject-matter of claim 11 of auxiliary request 1 is obvious and so does not fulfil the requirements of Article 56 EPC.

7. Auxiliary request 1A - inventive step

7.1 The only objection raised by the opponent to auxiliary request 1A was an inventive-step objection, starting from document E1 as the closest prior art in combination with the common general knowledge.

7.2 Following on from point 2 above, the parties do not agree on whether E1 discloses that the outlet guide (pipes 28) and the inlet guide (pipes 21) are rotatable between two positions.

7.2.1 Outlet guide, pipes 28

E1 discloses a system wherein a connecting rod 121 manipulates the outlet ends of pipes 28 of the outlet guide at half the frequency of the inlet ends 30 of the pipes 28, see gear 114, which meshes with gear 115 in the gear system of Figure 6 of E1 and column 5,

lines 16-19. In other words, while inlet ends 30 move back and forth (i.e. into the shear path and out again), the outlet ends 27 just move in one direction (either from position 1 to position 2 or vice versa). Only during the next back-and-forth movement of the inlet ends do they move back into their initial position.

Thus, the movement of the outlet guides cannot be described as a mere rotation between two positions.

Rather, it inevitably requires a translational movement as well, i.e. the outlet guide (pipes 28) disclosed in E1 are not "rotatable between said two positions" as required by claim 1.

7.2.2 Inlet guide, pipes 21

The inlet guides of E1 are not rotatable either. Their movement is manipulated by a single carrier (111) which provides a left-right movement of the pipes 21 of the inlet guide.

The argument of the opponent, that this movement in E1 is an axial and hence rotating movement, is not convincing.

Even if the term "axial" could in isolation be interpreted in a different manner, it needs to be interpreted in the context of E1. In this regard it is not possible to infer from the mechanism of E1 how the movement of the single connecting rod in the system of E1 could achieve rotation of the pipes.

Indeed, the term "axial" in the sense of E1 refers to the axis of the wire. This becomes evident from the description of Figure 4, which shows "an enlarged axial section", see column 1, lines 71-72.

Moreover, the further argument made by the opponent, that friction between the pipes of the inlet guide on the one hand and the bottom shoes 22 and top shoes 23 on the other hand inevitably leads to a rotational movement of the guide, is not convincing.

The pipes of the inlet guide are mounted between these shoes for "axial motion", see column 2, lines 68 to 72. E1 does not provide a direct and unambiguous disclosure that the shoes reduce the extent of movement on the outlet end of the inlet guide, in particular such as to provide a rotational movement of the guide between two positions. On the contrary, given the rigidity of the connection between the two pipes, and the single connecting rod, it is in fact clear to the skilled person that a rotational movement is clearly not intended in E1.

7.2.3 It follows that the subject-matter of claim 1 differs from the system of E1 in that the shear comprises drums and in that both the inlet guide and the outlet guide have to be rotatable between two positions.

7.3 The patent aims at a system for cutting to length long rolled products coming from different strands of a rolling mill simultaneously and in a simple manner while minimising the space needed to process multiple strands in a rolling mill plant, see paragraph [0011].

This general problem is already solved by the system of E1.

Starting from E1, the objective technical problem to be solved by claim 1 can be formulated as the provision of an alternative system, and this is in line with the arguments of both parties.

7.4 While the opposition division has convincingly argued that, because the strands exit the mill stands at a fixed location, the position where the strands enter the respective inlet guides would obviously be kept the same at all times (point II.3.3.2 of the decision), and even though, as argued in point 5 above, replacing the shafts by drums cannot establish an inventive step, E1 does not provide an incentive to change the movement of the outlet guides. Indeed, the translational movement of the discharge end of the outlet guides of E1 is essential to switch from one coiler to the other (see E1, column 5, lines 26-28).

Moreover, in order to provide a rotational movement between two positions for the outlet and inlet guides, simple routine workshop modifications are not sufficient. Rather, a redesign of the complete gear system of E1 would be required. In the absence of a clear pointer in E1, this is not obvious to the skilled person.

It follows that, starting from E1, the subject-matter of claim 1 is not obvious and therefore fulfils the requirements of Article 56 EPC.