T 2044/11 - Industrially applicable

Key points

• The Board "Accordingly, there is no difficulty in carrying out the invention, which, as a consequence, is also industrially applicable." 
• I seriously doubt if the requirement of sufficient disclosure under Article 83 EPC is or should be the same as the requirement of industrial application under Article 57 EPC.

T 2044/11 - link

Summary of Facts and Submissions

I. By its decision posted on 7 July 2011 the opposition division revoked European patent No. 9 282 34.

The opposition division found that the claimed invention was sufficiently disclosed and industrially applicable but that the subject-matter of claim 1 lacked an inventive step in view of the combination of E1 and E3.

II. The appellant (patent proprietor) lodged an appeal against that decision in the prescribed form and within the prescribed time limit. [...]

IV. The main request differs from the patent as granted solely by the deletion of a dependent claim. Its independent claim 1 reads as follows:

"Method of making superplastically formed, diffusion bonded structure using at least two sheets (10, 12) of superplastic and diffusion bondable metal alloys, comprising the steps of:
(a) cleaning the metal sheets (10, 12);
(b) aligning the sheets (10, 12) to provide intimate contact between the sheets (10, 12) at selected locations;
(c) welding the sheets (10, 12) to form a pack (30) to make a gas-tight seal while providing forming gas inlets (54) into a cavity between the sheets (10, 12);
(d) positioning a template (52) having a desired compression diffusion bonding pattern corresponding to the locations of intimate contact between the sheets (10, 12) on the exterior of the pack (30) in a press between opposed dies (58, 60);
(e) optionally, providing holes within the template (52) between compression pad ups for the alloys to form into, thereby establishing a part definition;
(f) purging the cavity of contaminants by evacuating the cavity or by introducing an inert gas to the cavity;
(g) heating the pack (30) to a diffusion bonding temperature for the alloy;
(h) pressing the sheets (10, 12) together through the template (52) to bring the sheets (10, 12) into intimate contact at the locations to form diffusion bonds (44) while applying gas pressure to the cavity to inflate the pack (30) to prevent diffusion bonding in areas of the pack (30) that register with the holes in the template (52),

characterized by the further step of using a titanium spacer (56) between the pack (30) and opposed dies (58, 60) to null deformities between the dies (58, 60) and to ensure sufficient diffusion bonding pressure through the template (52)."

VI. The arguments of the respondents can be summarised as follows:

Article 100(b) EPC and industrial applicability (Articles 100(a) EPC and 57 EPC)

Reference was made to the submissions in the written procedure. In writing it was argued that the patent did not provide any indication as to how the titanium spacer could null deformities between the dies. At most said deformities could be reduced by the presence of a spacer. Moreover, in the patent it was not clear how this could be obtained while at the same time ensuring sufficient diffusion bonding pressure through the template and there was no information as to how to position the peaks of the dies and the template. For these reasons the claimed invention was not sufficiently disclosed and, since it was impossible to put it into practice, not industrially applicable.

Request to disregard the arguments in the letter of 4 March 2016 or to remit the case for further prosecution

In the letter of 4 March 2016 the appellant submitted for the first time that the method of claim 1 was distinguished from the closest prior art not only by its characterising features but also by some of the features of the preamble. This belated submission should be disregarded, because otherwise the Board would be confronted with an issue that had not been considered by the opposition division.

Should the Board nevertheless decide to consider these submissions it was requested that the case be remitted to the opposition division for further prosecution in order to have the benefit of two instances on this matter.[...]

Reasons for the Decision

1. Article 100(b) EPC and industrial applicability

The wording "to null deformities between the dies (58, 60) and to ensure sufficient diffusion bonding pressure through the template (52)" relates to the result to be achieved by the use of a Ti spacer. However, since this wording does not define the amount of reduction of the deformities or the pressure to be ensured, it merely brings out a result that would be achieved under normal diffusion bonding conditions by the use of a titanium spacer. Therefore, since the person skilled in the art would have no difficulty in choosing a Ti spacer to be used in the claimed method, this feature is sufficiently disclosed.

As to the positioning of the peaks of the dies and the template, the claim does not recite any limitation in this respect, so that any position is in accordance with the claim. Accordingly, also this aspect of the claimed invention is sufficiently disclosed.

Therefore, the patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Accordingly, there is no difficulty in carrying out the invention, which, as a consequence, is also industrially applicable.

2. Request to disregard the arguments in the letter of 4 March 2016 or to remit the case for further prosecution

2.1 It is true that the argument that the method of claim 1 is distinguished from the closest prior art not only by its characterising features but also by some of the features of the preamble was not submitted in the statement of grounds of appeal, contrary to Article 12(2) RPBA, but for the first time (in opposition and appeal) in the letter of 4 March 2016.

However, in order to examine inventive step it is normally necessary to analyse which features of the claimed subject-matter are disclosed by the closest prior art. Indeed, the Board, in the communication of 15 September 2015, point 4, had explicitly pointed out that also some features of the preamble of claim 1 were to be considered.

Moreover, this new line of argument was submitted two months in advance of the oral proceedings, so that the respondent had undisputedly enough time to react and no delay in the proceedings was caused by this belated submission.

Therefore, the Board decided to admit the arguments in respect of the features in the preamble of claim 1 into the proceedings.

2.2 The respondent had requested that in this event the case should be remitted to the opposition division for further prosecution in order to have the benefit of two instances on this matter.

However, even without taking into account the fact that a remittal for further prosecution would almost certainly lead to a final decision on the case being taken after the expiry of the term of the patent (whose date of filing is 11 August 1997), the Board sees no reason for such a remittal.

Not only there is no absolute right to have an issue decided by two instances but, in the present case, the issue whether the features of the preamble of claim 1 are disclosed in E1 has already been considered and decided upon, albeit in the light of different arguments, by the opposition division (see appealed decision, point 4.1, first sentence).

Therefore, the Board decided not to remit the case to the opposition division for further prosecution.