T 2235/21 - Visible in D5 but inventive

Key points

• D5 is a patent document with in Figure 1 a turbine wheel. 
• "D5 is a patent document and the representation of the turbine wheel in figure 1 is indeed of a schematic nature with the purpose to illustrate the general construction of the water turbine and the general spatial and functional relationships of its component parts. In the present case, the opposition division has assessed that the ratio of length may be below 17%, but [that D5] has not associated these relative dimensions with a technical effect so that no technical teaching could be derived therefrom. Established case law relied upon in the decision and also quoted by the respondent indeed requires that for features shown solely in the drawings, in the absence of any other description the skilled person should be able to derive a technical teaching from them (see CLBA, I.C.4.6, 10th edition, 2022, see also decision T 1200/05 where the presence of a technical feature was derived solely from the drawings)."
• "The appellant relies on the fact that the skilled person would have been able to reproduce the turbine wheel depicted in figure 1 of D5. However lacking any indication why the band has certain height, and one of the varying diameters of the band has a certain length, the appellant has not submitted reasons why the skilled person would have recognised any significance in providing the relationship between these dimensions being below 17% rather than above. Without any indication, the skilled person reproducing the turbine shown would have reproduced the essential feature explained in lines 3 to 8 of page 2 to set the discharging portion in front of a vertical plane. Whether the skilled person would in addition have attempted and managed to reproduce the complex shape of the bucket at its interface within the band does not appear to meet the strict requirement of direct and unambiguous recognition of a technical teaching in relation to the length of the band to the diameter. Thus, the Board tends to agree with the decision's findings that D5 on the sole basis of figure 1 does not show a direct and unambiguous disclosure." 
• The patent as granted is considered to be novel and inventive.  No inventive step attack from D5 is discussed in the decision. 
•  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t212235eu1

3. Main request - Novelty

3.1 In its communication in preparation to the oral proceedings, see section 3, the Board gave the following provisional opinion on novelty with respect to D5:

"D5 discloses a water turbine runner comprising a band d; a crown; and runner blades. It appears undisputed that a junction between the leading edge of the runner blade and the band foreruns a junction between the leading edge with the crown in a rotational direction, page 2, lines 3-16; figure 1.

The appellant however contests the decision's finding that D5 does not disclose a technical teaching with respect to the band length ratio L/D derivable from figure 1 which however appears not greater than 17% as defined in the characterising portion of claims 1 and 4.

D5 is a patent document and the representation of the turbine wheel in figure 1 is indeed of a schematic nature with the purpose to illustrate the general construction of the water turbine and the general spatial and functional relationships of its component parts. In the present case, the opposition division has assessed that the ratio of length may be below 17%, but has not associated these relative dimensions with a technical effect so that no technical teaching could be derived therefrom. Established case law relied upon in the decision and also quoted by the respondent indeed requires that for features shown solely in the drawings, in the absence of any other description the skilled person should be able to derive a technical teaching from them (see CLBA, I.C.4.6, 10th edition, 2022, see also decision T 1200/05 where the presence of a technical feature was derived solely from the drawings).

The appellant relies on the fact that the skilled person would have been able to reproduce the turbine wheel depicted in figure 1 of D5. However lacking any indication why the band has certain height, and one of the varying diameters of the band has a certain length, the appellant has not submitted reasons why the skilled person would have recognised any significance in providing the relationship between these dimensions being below 17% rather than above. Without any indication, the skilled person reproducing the turbine shown would have reproduced the essential feature explained in lines 3 to 8 of page 2 to set the discharging portion in front of a vertical plane. Whether the skilled person would in addition have attempted and managed to reproduce the complex shape of the bucket at its interface within the band does not appear to meet the strict requirement of direct and unambiguous recognition of a technical teaching in relation to the length of the band to the diameter.

Thus, the Board tends to agree with the decision's findings that D5 on the sole basis of figure 1 does not show a direct and unambiguous disclosure."

3.1.1 At the oral proceedings, the appellant apart from relying on their written submissions merely clarified that D5 is a US patent, thus meeting the US patent law best mode requirement. The disclosed embodiment is explained to be as the best mode and thus implies a carefully drafted scaled drawing. This observation not supported by further evidence cannot alter the above observation by the Board that the drawing in D5 is a patent drawing, therefore of a schematic nature. Thus, the Board sees no reason to change its provisional view regarding novelty of granted claims 1 and 4 over D5.