T 1532/08 () of 11.12.2009

Summary of Facts and Submissions

I. The appellant lodged an appeal against the decision of the Examining Division refusing European patent application No. 00 969 613.9 for lack of novelty (Article 54 EPC).

II. Oral proceedings were held before the Board of Appeal on 11 December 2009.

III. The appellant requested that the decision under appeal be set aside and a patent be granted on the basis of claims 1 to 21 of the sole request filed during the oral proceedings.

IV. Independent claim 1 according to the sole request reads as follows:

"1. A connection piece comprising a body and at least one sealing element (2), the body and the sealing element (2) being formed as a substantially integral piece and the body being made of plastic such that it is capable of enduring, as such, mechanical strain when subjected to it, characterized in that the connection piece (1) further comprises a sealing area (3), a wall (4) of the connection piece (1) being made thinner at the sealing area (3) than the rest of the connection piece (1), the sealing element (2) thus being arranged into a recess in the sealing area (3), and the length of the sealing element (2) being greater than the height of the recess and that the sealing area (3) and the sealing element (2) are arranged only on the outside of the connection piece (1).

V. The following documents are referred to in the present decision:

D3 EP-A-0 066 825

D5 EP-A-0 743 482

VI. The arguments of the appellant in the written and oral proceedings can be summarised as follows:

The sealing unit (4) disclosed in figure 2 of document D5 has sealing lips disposed both on the inside and on the outside. The skilled person seeking a simple and reliable connection piece would not consider removing the sealing lips disposed on the inside as this would cause the sealing unit (4) to lose its function and result in a leaking socket.

The subject-matter of claim 1 of the only request is therefore based on an inventive step.

Reasons for the Decision

1. Admissibility of the amendments made to claim 1

The subject-matter of claim 1 according to the sole request corresponds to a combination of the technical features of originally filed claims 1, 12 and 23 and wherein the additional feature of originally filed claim 12 was further restricted by excluding the presence of further sealing elements on the inside of the connection piece through use of the term "only". A basis for this additional amendment is provided by the embodiment of figures 1 and 2 as set out on page 4, lines 21 to 24 of the application as filed (published version).

The additional features of claim 1 according to the sole request therefore do not extend its subject-matter beyond the content of the application as filed so that the requirement of Article 123(2) EPC is met.

2. Novelty, Article 54 EPC

The feature "the sealing area (3) and the sealing element (2) are arranged only on the outside of the connection piece (1)" of claim 1 of the sole request is not disclosed in any of the cited documents.

The subject-matter of claim 1 is therefore new (Article 54 EPC).

3. Inventive step, Article 56 EPC

Although the Board is of the opinion that the person skilled in the art is generally aware that connection pieces for insertion into the pipes or ducts to be joined will necessarily have some form of sealing element on their outside, there is no evidence to suggest that these sealing elements would be placed in a recess to minimise the clearance between the connection piece and the counter part to be attached to the connection piece (page 2, lines 11 to 18 and 30 to 32 of the description).

The problem to be solved is thus to provide a simple and reliable connection piece (page 2, lines 3 and 4). The solution is a connection piece including in combination the features of claim 1 according to the sole request.

None of the cited documents contain any incentive to provide a connection piece with the particular combination of features set out in claim 1 of the sole request.

3.1 Document D5 as closest item of prior art

Document D5 discloses a connection piece (figure 1) with socket joint 2 containing a hollow, generally cylindrical sealing unit 4 which has sealing lips 6 on the inside for sealing against the outer surface of one of the pipes 1 to be connected and further sealing lips 6 on the outside for sealing against the inside of socket 2. The skilled person would not consider removing the sealing lips 6 on the inside as this would remove the seal with respect to the pipe 1. Neither document D5 nor any of the other cited documents contain such a suggestion. In consequence, the subject-matter of claim 1 of the sole request is not rendered obvious by the connection piece disclosed in document D5.

3.2 Document D3 as closest item of prior art

Document D3 discloses a hollow, generally cylindrical connection piece (figures 1 and 2) comprising a rubber body 8 with sealing lips (16, 17) on the inside. A metal clamp 2 is tightened around the outside of the connection piece 8 to ensure that the sealing lips are pressed firmly against the outer surface of the pipes to be connected (page 3, lines 8 to 14).

The skilled person would not be motivated to consider relocating the sealing lips from on the inside to the outside of the body of the connection piece as these would then interfere with the metal clamp. Neither document D3 nor any of the other cited documents contain such a suggestion. In consequence, the subject-matter of claim 1 of the sole request is not rendered obvious by the connection piece disclosed in document D3.

3.3 The other documents cited in the examining procedure do not go beyond the disclosure of documents D3 and D5.

The subject-matter of claim 1 according to the sole request is thus based on an inventive step (Article 56 EPC).

The subject-matter of claims 2 to 21 which are appendant to independent claim 1 similarly involves an inventive step.

4. The description was amended to reflect the subject-matter now claimed and to explicitly exclude the examples of figures 3 and 4 from the scope of the invention.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent on the basis of the following documents:

(a) claims 1 to 21 filed as auxiliary request 13 during oral proceedings,

(b) description pages 2, 3 and 5 filed during oral proceedings,

pages 1, 4, 6 to 8 as originally filed,

(c) drawings pages 1/3 to 3/3 as originally filed.