|European Case Law Identifier:||ECLI:EP:BA:1987:T016784.19870120|
|Date of decision:||20 January 1987|
|Case number:||T 0167/84|
|IPC class:||F02M 51/08|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||-|
|Headnote:||The "whole contents" of an older document within the meaning of Article 54 (3) EPC do not comprise also features which are equivalents according to the document.|
|Relevant legal provisions:||
|Keywords:||Earlier European patent application - equivalents not embraced
Disclosure of the invention
Technical problem and its solution
Award of costs
Summary of Facts and Submissions
I. European patent No. 7 724 comprising twelve claims was granted to the Respondent on 12 May 1982 in response to European patent application No. 79 301 303.8 filed on 6 June 1979 and claiming the priority of a previous application of 6 July 1978. ......
II. Oppositions were independently filed by the Appellant and by another party (Opponent II) requesting the revocation of the patent. ......
III. After considering the Grounds for Opposition, the Opposition Division rejected the oppositions at the conclusion of the oral proceedings of 9 February 1984. ...
IV. On 13 July 1984, the Appellant lodged an appeal against the decision, requesting that the decision under appeal should be set aside and that the patent should be revoked in its entirety. ......
V. In his Statement and during the oral proceedings which took place on 20 January 1987, the Appellant maintained the following objections to the patent: a) The subject-matter of Claim 1 lacked novelty having regard to DE-A-2 147 710 and, alternatively, in conformity with Article 54(3) EPC, the earlier European patent application No. 79 301 297.2 (publication number 6769). In respect of this application, the Appellant argued that the disclosure of an earlier European application also embraced equivalents which were not explicitly disclosed. He referred to Part C IV, 7.4 of the "Guidelines" which he contended supported his interpretation, rather than Part C IV, 7.2 cited by the Board, as did the EPC itself which was not so restrictive as the "Guidelines".
Reasons for the Decision
6. ... EP-A-6 769 which is to be taken into consideration with regard to Article 54 EPC also does not take away the novelty ...... . The Appellant conceded that the whole content of this document including any features implicit to a person skilled in the art failed to disclose ....... completely the features mentioned in Claim 1. He is, however, of the opinion that the "whole contents" of an older document within the meaning of Article 54(3) EPC comprise also features which are equivalents to the features according to the document. In support of his view he refers to the EPC and Part C, Chapter IV, point 7.4 of the "Guidelines". The Board cannot agree with this point of view on the following grounds: In order to mitigate the harsh effects of the "whole contents approach", its application is confined to novelty (cf. Article 56 EPC, second sentence). Further, in order to reduce the risk of "self collision" it has always been considered justified to adopt a strict approach to novelty. For this reason, Part C, Chapter IV, point 7.2 of the Guidelines expressly states that "when considering novelty, it is not correct to interpret the teaching of a document as embracing well-known equivalents which are not disclosed in the document; this is a matter of obviousness". This approach has been consistently followed in the practice of the European Patent Office and the Appellant completely failed to satisfy the Board that it is wrong on any ground. ...
11. Concerning the Respondent's request for an award of his costs incurred by reason of the oral proceedings, the Board considers that, for reasons of equity, such an award should be made (Article 104(1) and Rule 63 EPC). The oral proceedings were held at the request of the Appellant, not at the request of the Respondent, and the Appellant failed to succeed on any point. No new point was introduced at the oral proceedings by the Appellant and the case could have been decided without oral proceedings. Furthermore, the Respondent's representative was required to travel a considerable distance to attend the oral proceedings.
For these reasons, it is decided that:
1. The appeal is dismissed. ...