T 0169/83 (Wall element) of 25.3.1985

European Case Law Identifier: ECLI:EP:BA:1985:T016983.19850325
Date of decision: 25 March 1985
Case number: T 0169/83
Application number: 78100878.4
IPC class: B62D 27/06
Language of proceedings: DE
Distribution:
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Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: DE | EN | FR
Versions: OJ
Title of application: -
Applicant name: Vereinigte Metallwerke
Opponent name: -
Board: 3.2.01
Headnote: The European Patent Convention does not exclude the possibility that in the course of opposition proceedings followed by an appeal the claims of a European Patent which in accordance with Article 123(3) do not extend the protection conferred may be limited by the fact that specific features referred to in the claims are clearly shown in the drawings originally filed and are clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art and so relatable by him to the content of the description as a whole as to be manifestly part of the invention.
Relevant legal provisions:
European Patent Convention 1973 Art 52(1)
European Patent Convention 1973 Art 56
European Patent Convention 1973 Art 69
European Patent Convention 1973 Art 78
European Patent Convention 1973 Art 83
European Patent Convention 1973 Art 84
European Patent Convention 1973 Art 88(4)
European Patent Convention 1973 Art 123(2)
European Patent Convention 1973 Art 123(3)
European Patent Convention 1973 Art 138(2)
European Patent Convention 1973 Art 164(1)
European Patent Convention 1973 R 27
European Patent Convention 1973 R 29
European Patent Convention 1973 R 32(2)(i)
European Patent Convention 1973 R 43
European Patent Convention 1973 R 51(2)
European Patent Convention 1973 R 51(4)
Paris Convention Art 4h
Keywords: Inclusion in the claims of features contained in the drawings
Extension of protection
Catchwords:

-

Cited decisions:
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Citing decisions:
T 0434/87
T 0241/88
T 0302/88
T 0451/88
T 0465/88
T 0523/88
T 0049/89
T 0278/89
T 0308/89
T 0443/89
T 0718/89
T 0166/90
T 0261/90
T 0308/90
T 0352/90
T 0372/90
T 0517/90
T 0527/90
T 0551/90
T 0631/90
T 0058/91
T 0116/91
T 0756/91
T 0038/92
T 0097/92
T 0269/92
T 0398/92
T 0191/93
T 0560/93
T 0739/93
T 0781/93
T 0818/93
T 0883/93
T 0964/93
T 1019/93
T 0111/94
T 0323/94
T 0596/94
T 0717/94
T 0815/94
T 0144/96
T 0247/96
T 0259/96
T 0269/96
T 0718/96
T 0987/96
T 0151/97
T 0488/97
T 0591/97
T 0665/97
T 1110/97
T 0035/98
T 1047/98
T 1135/98
T 0109/99
T 0264/99
T 0360/99
T 0536/99
T 0553/99
T 0568/99
T 0781/99
T 0162/00
T 0398/00
T 0422/00
T 0677/00
T 1169/00
T 0607/01
T 0671/01
T 0901/01
T 0350/02
T 0367/02
T 0908/02
T 0047/03
T 0513/03
T 0735/03
T 0553/04
T 0832/04
T 1214/04
T 1120/05
T 1134/05
T 0317/06
T 0926/06
T 1039/06
T 1510/06
T 1511/06
T 1512/06
T 1513/06
T 0559/07
T 0659/07
T 0742/07
T 1011/07
T 1443/08
T 0150/09
T 0761/09
T 2096/09
T 2457/10
T 0614/12
T 1148/12
T 1434/13
T 1700/13
T 0980/14
T 1306/14
T 1787/14
T 0314/15
T 1943/15
T 2065/15
T 0891/16
T 2704/18

Summary of Facts and Submissions

I. European patent 0 008 592 with eight claims was granted on the basis of European patent application 78 100 878.4 on 4 November 1981.

II. The patent was opposed in due time and form on 29 July 1982 by Aluminium Press- und Walzwerk M√ľnchenstein AG CH-4142 M√ľnchenstein 2 who requested revocation of the patent under Article 100(a) EPC both on grounds of lack of novelty (Article 54 EPC) and of inventive step (Article 56 EPC). The opponents based their arguments on the state of the art as cited in the search report (US-A-3 363 383, CH-A-396 370, GB-A-1 215 523) and on three newly cited prior publications (DE-C-876 124, DE-U-7 205 855, DE-A-2 700 626). By a decision made known at oral proceedings on 19 May 1983 and communicated formally on 8 August 1983 together with a statement of reasons the Opposition Division revoked the European Patent in accordance with Article 102(1) EPC on grounds of lack of inventive step having regard to DK-A-102 841 and GB-A-1 215 523 in conjunction with DE-C-878 124.

III. The patentees entered appeal against this decision and paid the appropriate fee on 30 September 1983, and on 8 December 1983 filed a written document setting out in essence the following arguments: The citations did not detract from the novelty of the invention and the closest prior art to be used in assessing inventive step was the wall structure disclosed in DE-C-878 124 which comprised outwardly exposed cladding sheets or panels and a sectional frame member forming part of the outer panel surface whilst at the same time serving as a connecting member. The flexible strip of metal acting with elastic force to hold the folded portions of the panels could become deformed by tensile and tractional stresses, thereby impairing fastening reliability. Moreover, it was impossible to obtain a smooth transition from the sectional members to the panels. No teaching permitting these disadvantages to be obviated was either shown in the embodiments described in DK-A-102 841 and GB-A-1 215 523 or derivable therefrom because the clamping means disclosed only held the flat edges of the inner panels by frictional engagement and projected out of their plane, thus constituting neither a fastening able to resist traction nor a smooth wall surface. A transition from the closest prior art as represented by DE-C-876 124 in conjunction with the teaching of DK-A-102 841 to the subject-matter of claim 1 therefore required inventive step.

IV. The request contained in the notice of appeal that the decision be retracted and the patent upheld on the basis of a new set of claims more clearly delimited in relation to DE-C-876 124 was changed by the patentees during oral proceedings on 25 October 1984 to a request that the patent be upheld with an altered scope with the documents submitted at the hearing and with Figure 1 of the drawings as filed on 8 December 1983, to which reference numerals had been added. The patentees requested in the alternative that the patent be upheld on the basis of the documents on which it was granted. Claim 1 as set out in the main request read as follows: A wall or roofing element, particularly for vehicle bodywork, having a sectional frame member (1) with approximately V-shaped recesses (5) by means of which it can receive and positively engage with the correspondingly folded edges (4) of panels (3), a self-locking metal clamping bar (2) composed of a straight bridging portion (8) and lateral clamping members which extend over and positively engage with the folded edges (4) of the panels inserted in the recesses (5), as also with snap devices which lock the clamping bar in the sectional member, characterised in that (a) the side walls (1') and web (1") of the sectional member form a U-shape, (b) the recesses (5) are provided at the ends of the side walls (1'), (c) the clamping bar (2) is likewise of U-shaped cross-section with legs (8') extending from the bridging portion (8) into the U-shaped sectional member, (d) the ends of the legs (8') hook elastically behind lugs (7') protuding from the side walls (1') of the sectional member, (e) the bridging portion (8) acting as a tie member has extensions (8") which project laterally beyond the legs (8') and whose ends are shaped as clamping members, and (f) the bridging portion (8) and extensions (8") form a smooth plane surface with the panels (3) being connected.

Claim 1 as contained in the alternative application reads as follows:

"Wall or roof element, especially of vehicle superstructure comprising U-shaped skeleton profiles (1), into which the edged rims (4) of lining sheet metal (3) are fixed by means of catching, self-locking metallic clamping ledges (2), characterised in that the clamping ledges (2) have an about U-shaped cross-section, that their web (8) operating as tie-band protrudes laterally beyond the legs of the ledge, that these protrusions tightly overlap the rims (4) of the edged lining sheet metals (3), that web and protrusions form a smooth plane with the lining sheet metals (3) to be connected and that their leg ends hook resiliently behind noses protruding in the skeleton profile (1)." (Patentee's own translation).

V. The opponents requested that revocation of the patent be confirmed and the appeal rejected, countering the patentees' request with the argument that Claim 1 in its new form was unacceptable even on formal grounds since it went beyond the original disclosure and extended the scope of the claim of the patent as granted (Article 123(2) and (3)). In addition, it contained features that had not been disclosed (Article 83) and were not supported by the description (Article 84). Moreover, the substance of the claim was obvious from DE-C-878 124 and DK-A-102 841. It was known from the teaching of DE-C-878 124 for panels with folded edges used as wall and roofing elements to extend beyond and positively engage in V-shaped recesses in a sectional member in which the edges of the panels were inserted, with the assistance of a clamping means serving as a tie member and in the form of a spring, both ends of which were bent, so that the clamping means formed a smooth plane surface with the panel edges, and to make the clamping spring in the form of a snap member engageable in the sectional member. On the other hand, the sectional member in DK-A-102 841 was U-shaped with a web and side walls and also had U-shaped longitudinal clamping means the legs of which engaged elastically in recesses in the side walls so as to hold the panels in position in a manner resistant to traction. If this teaching was combined with that of DE-C-878 124 the result was inevitably the subject-matter of the application, which consequently involved no inventive step.

VI. After the members of the Board had consulted together during the oral proceedings, the Chairman informed the parties that the Board intended to uphold the European patent on the basis of the documents relating to the patentee's main request and that the period laid down in Rule 58(4) EPC would begin with the date of the oral proceedings.

VII. The opponents filed their comments on the outcome of the oral proceedings in a document received on 31 October 1984. This made the following main points: (a) In order to make Claim 1 more specific the patentees had arbitrarily taken a number of features only shown in the drawing and made them into essential features of the invention. This constituted an infringement of Article 83 EPC which requires that the invention must be disclosed in a manner sufficiently clear and complete to enable a person skilled in the art to recognise the features essential for carrying out the invention. It was not sufficient for this purpose to disclose features solely in the drawings, because a person skilled in the art could not be expected to work out which features shown in the drawings were actually to be regarded as inventive. To expect him to do so would give rise to considerable uncertainty in law. (b) Accepting such features would enable an applicant to derive a multiplicity of different inventions from a single application and, by exercising the right to file divisional applications, to obtain a whole series of patents. (c) Including features disclosed only in the drawings offended against the principle of priority, which required that the filing date be postponed. (d) Including such features was not in accord with the request for grant, which asked that a patent be given on the basis of the invention as claimed in the claims. (e) Taking account in opposition proceedings of features only shown in the drawings, failed to allow for the caesura effect of the grant of a patent since under Rule 51(4) the patentees had finally decided on the patent subject-matter. The latter, therefore, could not now be replaced by another subject-matter by recourse to features subsequently designated essential to the invention as already mentioned. (f) Inclusion of such features was also contrary to Rule 29, which required that the subject-matter of the application be defined in the claims filed with the application, not in the drawing. (g) Inclusion in the claims of features only shown in the drawings was contrary to the established case law of at least one Member State which stipulated the permissible manner of disclosing an invention. To allow this practice would therefore result from the outset in patents being granted that were revocable in the country concerned, which was undesirable. (h) The opponents also made the patentees' compliance with the stipulations referred to in paragraph (g) a subject of proceedings by referring only to the relevant national decisions.

VIII. The wording of the claims of the patent as granted and of the description is contained in European patent 0 008 592.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Claim 1 in its new version of 25 October 1984 lists features which, contrary to the opponents' opinion, though not immediately obvious to a person skilled in the art, are nonetheless indirectly derivable from the combination of facts given in the description.

2.1 ... All the features of the preamble to the claim are consequently derivable from the facts given. Furthermore, Claim 1 is duly delimited with regard to DE-C-878 124 referred to by the opponents as the closest prior art. The preamble to the claim contains all those features which in combination are part of the state of the art (Rule 29(1)(a)).

2.2 ...

2.3 In addition Claim 1 does, as the opponents maintain in their objections, contain a series of features which are only derivable from the drawings and relate to the specific cross-sectional shapes of both sectional members, namely the fact that the sectional frame member has side walls and is U-shaped (feature (a)), the fact that the recesses are provided at the ends of the side walls (feature (b)), the fact that the clamping bar has legs and is U-shaped, as also that the legs extend into the sectional frame member (feature (c)), the fact that lugs protrude at the ends of the legs (feature (d)), and the fact that the ends of the protections are shaped as clamping members (feature (e)). Nor does the Board have any objection to the mention of the U-shaped sectional frame member being moved from the preamble of the claim in the patent as granted to the characterising portion of Claim 1 in its present form since, as explained in paragraph 7, this does not form part of the closest art and is undoubtedly novel. Moreover, the ambit of protection is in no way altered by the change.

2.4 The amendments to Claims 2 to 7 either find support in column 3 of the description or provide clarification - as in the case of the obvious erroneously designated rib 16 in Claim 2 which has now been referred to in the description as a leg.

2.5 Since the Board concludes in paragraph 4 that features shown only in the drawings may be included in the claims for greater precision there are no formal objections to the latter's wording. Any such objections were obviated by the amended description filed on 25 October 1984; Article 84 has thus been complied with, as have Rule 29 and Article 123(2) and (3).

2.6 The patentees filed a new Figure 1 without at all modifying the substance of the drawings, the only difference being the addition of a number of reference numerals to parts of the sectional frame element originally shown. The information content was thus not changed in any way; all that was done was to make a number of purely formal additions for the sake of clarity. Since these were also added to the description in its present form and to the claims the drawings comply with Rule 32(2)(i) and the Board has no objections in their regard.

3. In view of the arguments advanced by the opponents (appellants) regarding the permissibility of features shown only in the drawings being included in the claims it would seem advisable for the Board to comment on certain aspects of interpretation of Articles 83, 84, 123(2) and 123(3), as also of Rules 27 and 29.

3.1 In construing Article 83 it is important to bear in mind that justification for patent protection is based on the fact that in making his invention generally available through publication an inventor enables the public at large to benefit from it in the sense that knowledge is increased and specialists in the field are stimulated to make further technical advances. The inventor, therefore, helps to enrich technology and his just reward for so doing under patent law takes the form of sole rights to his invention for a limited period. However this presupposes compliance with the requirements for patentability laid down in Articles 52 to 57 of the European Patent Convention. To ensure that the public's rightful claim to full disclosure of the invention is satisfied Article 83 of the Convention provides that the application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art. Sufficiency of disclosure is therefore of eminent importance for the theory of just reward. It follows that insufficiency of disclosure is also a ground for opposition or revocation (Articles 100 and 138).

3.2 Since under Article 78 a European application must, where reference is made to them in the description or claims, contain drawings in addition to a request for grant, description, claims and abstract, there is no doubt that where drawings exist they are to be regarded as an integral part of the documents disclosing the invention. The Convention and its Implementing Regulations (Article 78(3)) must be studied to determine whether they contain any provisions or indications as to whether the fact that the filing of drawings is made a requirement only in certain cases may be used to conclude that drawings where they exist should be accorded some kind of secondary ranking in the disclosure.

3.2.1 One argument against such subordinacy, however, is the fact that Rule 43(1) provides that where drawings are not provided the application is to be redated or the references to the drawings are deemed to be deleted. It is therefore accepted that drawings can convey to a person skilled in the art matters that go beyond what is disclosed in the description. Only then do the legal consequences threatened by Rule 43 make any sense.

3.2.2 It is worth noting that the only element of the application to which the Convention gives a ranking is the abstract when it states that the latter is to serve merely as technical information and may not be taken into account for any other purpose (Article 85). This makes it logical to assume that the drafters of the Convention would have devoted a similar clause to the rank of drawings had this been their intention. The absence of such a clause at least reflects the drafters' intention not to create a hierarchy for the other elements of the application listed in Article 78(1)(a) to (d).

3.2.3 Neither the wording nor the meaning of either Article 69 or Article 84 argues against this construction. Article 69 is concerned with the extent of the protection as being determined by the claims and stipulates that both description and drawings are to be used to interpret them, thereby putting both elements on the same footing. The same applies to the Protocol on the Interpretation of Article 69 which Article 164(1) makes an integral part of the Convention.

3.2.4 Article 84 contains the supplementary provision that claims must define the matter for which protection is sought - hence the features serving to solve a technical problem - and that they must be clear and concise, which is logical given the function of claims specified in Article 69. The fact that they must also be supported by the description is designed to check a speculative formulating of claims taking them beyond the scope of the description, but no answer is given to the question of whether features shown only in the drawing may be included in the description in order to give support to the claims. Thus Article 84 does not help clarify the question of whether the disclosure of such features in the drawings is admissible nor, consequently, that of a possible subordinate ranking.

3.2.5 The drawings are not treated differently from either the claims or the description as regards amendments made to the application or to the patent itself as governed by Article 123.

3.2.6 Article 138(2), which deals with the limitation of a European patent in national revocation suits, lays down that in certain circumstances the limitation may be effected by amendment of claims, description or drawings. Here again, the Convention does not discriminate to the detriment of the ranking of the drawings.

3.3 Rule 27(1)(e) of the Implementing Regulations, which concerns the content of the description, mentions that the figures in the drawings, if any, should be briefly described. This wording merely indicates the need for the numbered figures to be listed with a short statement of the view and object shown so as to link the description with the attached drawings. The fact that drawings are not absolutely necessary accords with the wording of Article 78(1) (d) which requires that drawings are to be provided when referred to in the description. No indication of ranking is given here.

3.3.1 Rule 27(1)(f) requires that at least one way of carrying out the invention claimed be described in detail and that where appropriate this be done using examples and referring to the drawings, if any. This rule, therefore, at least does not demand that all details of the object shown in the drawings be referred to in the description, so that here again there is no indication of the ranking to be given to drawings. Nor is there any in Rule 32, which merely deals with formal requirements applying to them.

3.3.2 Even Rule 33, which prescribes the form and content of the abstract to be used only for information purposes, mentions the drawings alongside the description and claims as of equal importance. Again, when dealing with the admissibility of amendments required by the Office (Rule 51(2) or made by the applicant of his own volition (Rules 86 and 88), no distinction of rank can be found between the description, the drawings and the claims. The same applies in the case of Rule 87.

3.3.3 Since, moreover, the history of the various articles of the Convention and of individual implementing regulations gives no indication that drawings were regarded as being of any greater or lesser importance than other elements of the description, the Board finds that they must be considered as ranking equally with the other elements of the application required by Article 83.

3.4 The public interest is therefore served under Article 83 if a person skilled in the art can obtain from the application as a whole the information needed to carry out the invention. This information must not necessarily emerge from the text of the description and claims, since to a person skilled in the art wishing to reproduce the invention it is a matter of indifference whether it is disclosed by the written texts alone or in addition by such drawings as are provided.

3.5 Article 83, therefore, is in no way contravened if features originally only disclosed in the drawings are taken from them and included in the claims and, to satisfy Article 84, in the description as well in order to give the latter support. Obviously these features must be clearly, unmistakably and fully derivable from the drawings as regards structure and function by a person skilled in the art and must in no way contradict the other parts of the disclosure or be the subject of any waiver.

3.6 The opponents did not attempt to argue that the structure or function of the features of the sectional frame member and the clamping bar as shown in the drawings alone had not already been disclosed in them in the manner referred to in paragraph 3.5, but simply that the features newly included in the claim did not emerge from the description and claims. It is therefore safe to assume that no features have been included in the description or claims other than those derivable directly and clearly from the drawings. Nor have the opponents offered evidence of any waiver by the patentees or of contradiction with what is disclosed by the other elements of the application. The Board therefore regards the inclusion in the description and claims of the features listed in point 2.3 as admissible in the present case subject to the requirements of Article 123(2) and (3) being fulfilled.

3.7 In order to judge whether the latter provisions have been infringed in the present case it is therefore necessary to consider in detail the extent to which the subject-matter of the invention may have been altered from that disclosed in the original application documents, whether by addition, substitution or omission of facts, so as to provide the person skilled in the art with new information not immediately derivable from the original description, claims and drawings. The opponents have not claimed that the features of the sectional frame element and clamping bar shown only in the drawings were not already clearly and unmistakably present in their entirety in the original drawings. As the Board has already pointed out, no amendments were made to the drawings beyond the addition of reference numerals to identify individual parts already shown. It must, therefore, logically be concluded that the content of the drawings does not go beyond that of the version originally filed. The same is true of the features taken from the drawings and in similarly permissible manner included in the description to give support to the claims, which also cannot be regarded as going beyond those contained in the original version of the application. The provisions of Article 123(2) have therefore not been infringed. As the opponents themselves stated in their communication of 29 October 1984 the features taken from the drawings were used to add detail to a number of features in the characterising clause of Claim 1, so that they are contradicting themselves when they say elsewhere that the addition of these claims extended or altered the scope of protection. Having considered each of the features included in Claim 1 the Board must in any event conclude that these only concern non-quantitative constructional features of the sectional frame members already claimed in the patent as granted and in no way modify the ambit of protection. Nor has there been any substitution of features. There has, consequently, been no infringement of Article 123(3) as the criterion for admissibility of amendments to claims.

4.1 In point VII(a) the opponents stated that Article 83 should be construed as meaning that a person skilled in the art should be able to recognise which features are essential to the invention - a requirement which would exclude features disclosed solely in the drawings. The Board cannot agree with such a construction. An applicant cannot be expected at the early stage of filing an application particularly to stress all those features to which he might have to refer in the course of the examination or opposition proceedings in order the better to delimit his invention in relation to a cited and allegedly closer prior art. Rule 27, which prescribes the content of the description, merely lays down that apart from making clear the technical problem addressed and the solution proposed, it should describe at least one way of carrying out the invention. It is not, however, possible to derive from Rule 27 as such the need to make a definite final selection from among any other features disclosed but initially not covered by a claim. Rule 29, which is concerned with the claims as a further written means of disclosure only requires initially that the claims should provisionally state those features which in the light of the state of the art as known to the applicant at the date of filing are to be regarded as inventive but which may be modified or added to in the course of examining procedure. This in no way contradicts the request for grant under Rule 26 (cf. VII(d)). ... While it is incontestable that the legal uncertainty created by allowing features to be taken from the description and drawings increases with the number of features available for selection, where features are taken from the drawings a slightly greater degree of legal uncertainty will have to be tolerated in fairness to applicants and with due regard for the public interest, although it must be kept within reasonable bounds. In the Board's view this is so in the present case since compared with the overall number of features those involved were few and, moreover, non-quantitative constructional features of elements already claimed.

4.2 The Board cannot see any infringement of the principle of priority (cf. VII(c)) since only if facts not derivable from the application as a whole were to be added would the application have to be redated. Attention is drawn in this connection to Article 88(4), which prohibits refusal of a claimed priority date where certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application provided that the documents of the previous application specifically disclose such elements. No distinction is therefore made here as to whether the disclosure is made in the description or in the drawings. For these reasons the European Patent Office is unable to reject claims supported by features contained in the priority documents but shown only in the drawings. It would constitute a disregard for equality before the law were a European first applicant to receive worse treatment than a subsequent applicant in national procedure, which in the matter of priority claimed for features of an invention not contained in the claims of the priority document is guided by Article 4H of the Paris Convention and thus also permits them to be included in the claims as long as they are clearly disclosed in the documents of the first application as a whole.

4.3 The above arguments also serve to refute the statement made in VII(b) that allowing such features opens up the possibility of an unacceptable number of divisional applications being filed.

4.4 In deciding the question of whether the inclusion of features from drawings in the present case disregarded the caesura effect of the patent grant (cf. VII(e)) it is only necessary to consider whether the amendments made contradict the legal principles of Article 123(2) and (3). These state in essence that the subject-matter of a European patent may not be amended so as to extend beyond the content of the application as filed and that the ambit of protection as determined by the claims (Article 69) may not be extended in the course of opposition proceedings. The Convention thus leaves open a possibility for amendments to be made as necessary, even to a granted patent during that part of the procedure following the decision to grant. As long, therefore, as the conditions of Article 123(2) and (3) have been observed - which is the present case (see 3.7 above) - the opponents' objection that the caesura effect has been disregarded cannot be accepted, since in view of the provisions of Article 123 the agreement to the text of the patent as granted given in accordance with Rule 51(4) can in no way be regarded as final.

4.5 The objection raised in VII(f) is irrelevant because Rule 29 merely requires that the claims define the matter for which protection is sought in terms of the technical features of the invention (see paras. (1) and (3)). Since Rule 29 takes on an increasingly important role as application or opposition proceedings progress it is permissible to work out the features essential to the invention from the disclosure in the course of application proceedings and to include them in the claims.

4.6 The opponents then point out (cf. VII(g)) that allowing features shown only in the original drawings to be included in the claims and hence made essential to the invention constitutes a divergence from established case law in at least one EPC Member State. This, however, cannot on its own be accepted as a sound reason for an EPO Board to allow itself to be guided by case law evolved in the light of national circumstances, particularly since most of the other Member States of the European Patent Convention do not know a restrictive practice of this kind.

4.7 The Board does not consider it acceptable to refer merely to national case law in proceedings before the European Patent Office (cf. VII(h)). The opponents should at least have quoted the rulings to which they referred and demonstrated their relevance to the present matters of dispute. Since they failed to do so the Board need not deal with this objection.

5. Although DK-A-102 841 was considered the most relevant citation in the foregoing proceedings the Board unhesitatingly concurs with the patentees and bases its considerations on DE-C-878 124. This, unlike DK-A-102 841, undoubtedly discloses a wall element the sectional member of which is provided with longitudinal grooves that are approximately V-shaped in order to receive and positively engage with the correspondingly shaped edges of the panels to be connected together. The latter are also gripped by and positively engage with lateral clamping members of a clamping means shaped to match the edges and which is able to clip in to the sectional member and so hold the panels in position. To this end the spring-acting clamping means takes the form of a strip of sheet metal bent in two places. It is therefore elastic and resilient and when subjected to tensile and torsional stresses is deformed until the bent edges of the spring disengage and release their hold on the panel edges. At the same time, the bending of the spring edges during production results in the formation of lateral rounded portions that prohibit a continuous smooth transition to the panels. The patentees regard all the above as disadvantages.

6. The aim of the invention according to the disputed patent is therefore to provide a wall element of the type made known by DE-C-878 124 in which the panels are mounted so as to resist tensile stress yet are connected to one another in such a manner as easily to be fastened and unfastened while the clamping means holding the panels in position forms a continuous smooth surface with them.

7. The wall element proposed to achieve this aim and claimed in Claim 1 was not anticipated either by the the citations in the search report or by prior publications additionally cited by the opponents, since the sectional member described in DE-C-878 124, which corresponds to the sectional frame member of the invention, has - despite the opponents' contention - a W-shaped not a U-shaped cross-section. Moreover there is no indication of any U-shaped clamping means because the free ends of the spring are bent inwards twice in opposite directions. Neither DK-A-102 841 nor GB-A-1 215 523, whose contents are identical, makes reference to panels with folded or bent edges or recesses in the roofing brackets to accommodate them, so that the novelty of the subject-matter of Claim 1 is in no way impaired by these prior publications. Since the opponents did not seek to contest novelty on the grounds of the other, remoter citations, the Board must regard the subject-matter of Claim 1 as novel (Article 54 EPC).

8. This makes it necessary to consider whether the subject-matter of Claim 1 of the disputed patent involved inventive step. ...

8.6 Finally it must be stated that not one of the prior publications cited has attempted to address the problem of devising a means of fitting panels together that is resistant to traction and gives a smooth, water-tight, form-fitting surface plane. None of them offer any suggestion as to how the considerable tensile stresses generated not just by warping or other distortion but also when the wall is mounted in place are to be coped with. There is no reference to ease of installation or dismantling of the panels for repair purposes making rivets or frictional engagement superfluous. Nor does any prior publication refer to an entirely smooth surface free from dents and bulges to which a weather-resistant coat of paint can be applied. Hence a whole series of individual steps progressing from the closest prior art to the subject-matter of the disputed patent are in no way rendered obvious by the prior publications cited by the opponents. Even less is the overall combination of features as claimed obvious to or logically derivable by a person skilled in the art from the state of the art.

8.7 The patentees are thus correct in stating that the two citations discussed cannot be linked in the manner attempted by the opponents because of the differences in sectional shapes and functions. The method adopted by the opponents is that of combining features in a manner not made possible either directly or as a result of suggestions or instructions contained in the citations but actually contradictory to their teaching. This type of feature combination must be firmly rejected as being a classic example of hindsight (ex post facto analysis).

8.8 For the reasons given a person skilled in the art cannot gain from the prior art considered any information enabling him to progress in an obvious manner to the subject-matter of Claim 1.

9. Consequently the subject-matter of Claim 1 in the form given in the main request is based on inventive step in the meaning of Article 56 EPC and is therefore patentable and allowable (Article 52(1) EPC).

10. Claims 2 to 7, which are dependent on Claim 1, relate to specific embodiments of the device as therein claimed and are therefore also allowable.

11. In view of the above there was no need to deal with the alternative request.

ORDER

For these reasons, it is decided that:

1. The decision appealed against is to be set aside.

2. The case is to be remitted to the authority of first instance with the instruction that the European patent be upheld on the basis of the following documents: ...

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