T 0305/87 (Shear) of 1.9.1989

European Case Law Identifier: ECLI:EP:BA:1989:T030587.19890901
Date of decision: 01 September 1989
Case number: T 0305/87
Application number: 81401435.3
IPC class: B23D 27/02
Language of proceedings: FR
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: GREHAL
Opponent name: Diener
Board: 3.2.02
Headnote: When the content of one single prior document (in this case, a catalogue disclosing various types of shear) is considered in isolation when contesting the novelty of a claim, the said content must not be treated as something in the nature of a reservoir from which it would be permissible to draw features pertaining to separate embodiments in order to create artificially a particular embodiment which would destroy novelty, unless the document itself suggests such a combination of features (cf. point 5.3 of the Reasons for the Decision).
Relevant legal provisions:
European Patent Convention 1973 Art 54
Keywords: Novelty
State of the art - extent of conformity
Catchwords:

-

Cited decisions:
-
Citing decisions:
T 0901/90
T 0573/92
T 0701/92
T 0739/93
T 0758/93
T 0867/93
T 0322/95
T 0732/95
T 0216/96
T 0019/97
T 0648/97
T 0989/98
T 1126/98
T 0876/00
T 0042/01
T 0166/01
T 0212/01
T 0416/01
T 1051/01
T 1261/01
T 0435/03
T 0649/06
T 1722/06
T 1844/06
T 1929/06
T 0763/07
T 2118/08
T 0414/09
T 1447/09
T 2111/09
T 0249/11
T 2475/11
T 1386/12
T 0523/14

Summary of Facts and Submissions

I. European patent No. 48 665 incorporating eight claims was granted to the respondent on 11 April 1984 on the basis of European patent application No. 81 401 435.3 filed on 15 September 1981.

II. On 8 January 1985 the appellants filed notice of opposition to the patent granted, requesting its revocation on the grounds of lack of inventive step (Article 100(a) EPC) and inadmissible extension of its subject-matter (Article 100(c) EPC). To illustrate the state of the art, the appellants cited inter alia the following documents: (1) ERDI 101 catalogue, pages 6 and 9, containing close-up pictures (Figs. 1 to 8) of the "ERDI-Knabber Nr. 3" and "Rohrschere Nr. 115" tools from the catalogue, and (2) US-A-3 772 782.

III. In an interim decision dated 9 July 1987, the Opposition Division maintained an amended version of the patent incorporating an amended main claim as follows: "Shear for cutting sheets, strips and similar articles, either metallic or not, comprising a body (1) forming a handle (3) at one end and, at its other end, an oblique support surface, counter-blades for a cutting blade (15) formed by the end of a lever (13) articulated in the body (1) and connected by a pin (12) to the end of a main lever (11) forming a second handle (31), characterized in that said counter-blades are constituted by the side edges of a slot (17) formed in the bottom of a stirrup (6), which is applied on said support surface, and in that the slot (17) is defined at the front thereof by an end or bottom surface which enables the end of the cutting blade to come into engagement therewith in order to stop the cut and separate the shaving."

IV. On 17 August 1987 the appellants filed an appeal and paid the corresponding fee. The statement of grounds was filed on 2 November 1987. In their statement the appellants cited the aforementioned state of the art to contend that the scope of the new Claim 1 was not correctly defined and that certain of the features claimed were not needed to solve the problem. They also claimed that because the "Knabber Nr. 3" and "Rohrschere Nr. 115" tools in document (1) were disclosed in one and the same catalogue their features as a whole had to be regarded as constituting a single state of the art, and that this essentially anticipated the subject-matter of Claim 1. ...

Reasons for the Decision

1. The appeal is admissible.

2. Amendments ...

3. Delimitation of Claim 1 (Rule 29(1)) ...

4. State of the art ...

5. Novelty

5.1 Of all the prior art documents cited in the search report or in the patent itself, or during the opposition and appeal proceedings, document (2) is the only one describing a tool for cutting sheets which, like the shear in the invention, incorporates a stirrup used as a cutting matrix. However, the shear which is the subject-matter of the patent under appeal differs from this known tool in that it comprises a real cutting blade connected by a pin to a main lever forming a second handle, whereas the above-mentioned tool is used not for shearing but for nibbling sheets and only comprises a cutting punch located at the end of a handle which is not linked to the main lever. The subject-matter of Claim 1 of the patent under appeal is consequently not identical in the state of the art and must therefore be regarded as new.

.5.2 In their statement of grounds the appellants maintained that the features, taken as a whole, of the "ERDI-Knabber Nr. 3" and "ERDI-Rohrschere Nr. 115" shears had to be regarded as a single state of the art because those shears were described in one and the same technical context and in one and the same document (the ERDI 101 catalogue). They argued that, when taken as a whole, this set of known features anticipated the invention. The Board was unable to share this view because in the case in question the absence of a stirrup among the elements disclosed in the catalogue was already sufficient in itself to establish the novelty of the subject-matter of patent Claim 1.

5.3 However, the Board took the opportunity to make it clear that when assessing novelty it was not enough only to consider the content of a single document: each entity described in the document also had to be examined separately. It is not permissible to combine separate items belonging to different embodiments described in one and the same document merely because they are disclosed in that one document, unless of course such combination has been specifically suggested therein (cf. Guidelines for Examination, C-IV, 7.1). In other words, when the content of a single prior art document (in this case, a catalogue disclosing various types of shear) is considered in isolation when contesting the novelty of a claim, the said content must not be treated as something in the nature of a reservoir from which it would be permissible to draw features pertaining to separate embodiments in order to create artificially a particular embodiment which would destroy novelty, unless the document itself suggests such a combination of features. In the present case, apart from the fact that it is open to question whether a catalogue can be treated as a single document rather than as a selection of documents, the "Knabber Nr. 3" and "Rohrschere Nr. 115" shears are two completely separate items from the ERDI 101 catalogue, shown on two different pages under different order numbers. They are therefore definitely two separate entities forming two independent bases for comparison which should be considered in isolation when assessing novelty, and it is not admissible to piece together artificially a more relevant state of the art from features belonging to one or both of these entities, even if they are both disclosed in one and the same document.

8. Inventive step ... 8.4 The Board considers that in the normal course of applying his knowledge and without any special prompting, the person skilled in the art would not be in a position to set in motion a train of thought that would be more akin to a posteriori analysis, in order to arrive at the invention. Consequently the subject-matter of Claim 1 involves an inventive step within the meaning of Article 56 EPC and is patentable under Article 52(1) EPC.

ORDER

For these reasons it is decided that:

1. The appeal is dismissed. ...

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