T 1886/21 - Formed; permits other elements

Key points

• "the appellant-opponent 1 has argued that the patent does not [sufficiently] disclose [under Art.100(b) EPC] an embodiment of the invention that implements the secondary drive mechanism in the way required by the penultimate claim feature, namely it being: formed by a stationary secondary guide track associated with the periphery of the rotatable carousel, and a follower wheel being kept in a lifted position by the secondary guide track"
•  "Before looking in detail at the embodiments, the Board notes that the usual meaning of the word form (see Oxford English dictionary on-line (OED)) is: To construct, frame; to make, bring into existence, produce. Const. from, of, out of (the material or elements). Thus the word form and its cognate formed used in this claim feature define elements of which the secondary drive mechanism is made or constructed but implies no exclusivity to those elements. In other words, contrary to how the appellant-opponent 1 has argued, the claim does not exclude that the secondary drive mechanism comprises more elements than a stationary secondary guide track and a follower wheel."
• " Bearing in mind that the claim does not require the secondary drive mechanism to be exclusively comprised of a secondary guide track and a follower wheel, the fact that the embodiment also includes a torsion spring does not mean that the skilled person cannot carry out the invention as the appellant-opponent has suggested. "
• "For these reasons, the Board considers that the invention according to claim 1 is sufficiently disclosed, Article 83 EPC. "

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/t211886eu1

5. Auxiliary request 5, claim 1, clarity and sufficiency of disclosure

5.1 Claim 1 is a combination of granted claims, including the associated reference signs. Therefore, any lack of clarity in the present claim attributable to inconsistent reference signs was present in the granted claim set. In such cases, as already noted in its communication and left uncommented by appellant opponent 1 and party as of right opponent 2, the Board does not have the power to consider the issue of clarity (see G3/14, point 85). Therefore, the argument of the appellant-opponent 1 that claim 1 lacks clarity is moot.

5.2 Insufficiency of disclosure

5.2.1 In accordance with established jurisprudence (see for example CLBA II.C.5.2) in order for an invention to be sufficiently disclosed, the patent must disclose at least one way of carrying out the invention. The Board considers that this requirement is fulfilled in the present case.

5.2.2 It is not disputed that the embodiments of the invention disclose a device for making a preparatory incision in an animal extremity part with an elongate guide member, cutting knife a conveyor, a primary drive mechanism and and a knife adjustment drive mechanism as claimed. Nor is it disputed that embodiments disclose a secondary drive mechanism for moving the knife between first and second positions as such, for example when the knife stabs into the meat (see figures 1 to 15). However, the appellant-opponent 1 has argued that the patent does not disclose an embodiment of the invention that implements the secondary drive mechanism in the way required by the penultimate claim feature, namely it being: formed by a stationary secondary guide track associated with the periphery of the rotatable carousel, and a follower wheel being kept

in a lifted position by the secondary guide track.

5.2.3 Before looking in detail at the embodiments, the Board notes that the usual meaning of the word form (see Oxford English dictionary on-line (OED)) is: To construct, frame; to make, bring into existence, produce. Const. from, of, out of (the material or elements). Thus the word form and its cognate formed used in this claim feature define elements of which the secondary drive mechanism is made or constructed but implies no exclusivity to those elements. In other words, contrary to how the appellant-opponent 1 has argued, the claim does not exclude that the secondary drive mechanism comprises more elements than a stationary secondary guide track and a follower wheel.

5.2.4 Turning now to the description (see paragraph 16 with figure 6), it is disclosed that the knife arm 45 can hold the knife in a first position for receiving the animal part (dotted lines) because the follower wheel 27 is kept in a lifted position (by an amount H) on the secondary guide track 23 shown in figure 1. In a second position (full lines), the follower wheel 27 is no longer held high and the knife is stabbed into the meat until it reaches a second position from where a longitudinal incision can be made. As explained in more detail in paragraph [0019] with figure 11, when the wheel 27 leaves the secondary guide track, a torsion spring 49, shown in figure 6, biases the knife arm 45 so that the knife is urged from the first to the second position as it stabs into the meat.

5.2.5 Bearing in mind that the claim does not require the secondary drive mechanism to be exclusively comprised of a secondary guide track and a follower wheel, the fact that the embodiment also includes a torsion spring does not mean that the skilled person cannot carry out the invention as the appellant-opponent has suggested.

5.2.6 Moreover, the claim defines that the secondary drive mechanism is for moving the knife between the first and second positions, which implies no particular direction to the movement, rather than in the direction from the first to the second position as the appellant-opponent 1 reads it. Whether or not moving the knife from the first to the second position can be considered to be exclusively carried out by the action of the torsion spring, as best seen in figure 11, once the cutting unit 21 has passed around the back of the stationary drum 17, it meets a ramp at the front end of the stationary guide track 23, along which it then rises. As the wheel is raised the knife arm 45 is forced out of the second position - against the action of the torsion spring - until when the wheel has reached the end of the ramp where it is held high and the knife reaches the first position where it remains as long as the wheel 27 is held in its raised position (cf. figure 6). Thus moving the knife from the second back to the first position is achieved in the embodiment by the secondary guide track 23 raising the wheel 27 and not by the action of a spring. Therefore, contrary to how the appellant-opponent 1 has argued, the embodiment discloses how the follower wheel 27 being held high on the secondary stationary guide track 23 moves the knife between its first and second positions.

5.2.7 For these reasons, the Board considers that the invention according to claim 1 is sufficiently disclosed, Article 83 EPC.

6. As the respondent proprietor no longer pursues maintenance of the patent in the amended form upheld in the decision under appeal, that decision must be set aside. Furthermore, in view of the above, the Board finds the claims of auxiliary request 5 to meet the requirements of the EPC. Moreover, neither the Board nor the parties saw any need for the description to be adapted. Pursuant to Article 101(3)(a) EPC, the patent can therefore be maintained as amended according to auxiliary request 5.