T 1714/10 () of 6.6.2012

Summary of Facts and Submissions

I. On 16 March 2010 the appellant (applicant) filed a notice of appeal against the examining division's decision posted on 21 January 2010 refusing the European patent application No. 04 292 391.2. The appeal fee was paid at the same time and the statement of grounds was received on 10 May 2010.

II. The examining division held that claim 1 then on file did not comply with the requirements of Article 84 EPC. Additionally, the examining division pointed out for information that the subject-matter of claim 1 was not novel with respect to

D1: DE-U-295 09 487.

III. The appellant requests that the decision under appeal be set aside and that the case be remitted to the examining division for further prosecution on the basis of the request submitted during the oral proceedings.

IV. Claim 1 reads as follows:

"A self drilling anchor for use in a friable material (1) and a substrate (2) adjacent the friable material (1), the substrate (2) having a hardness greater than the hardness of the friable material, comprising: a thin-walled, elongate body (12) having an axis (6), an exterior thread (19, 21, 23), an axial bore (8) adapted to receive a fastener, a proximal end (14) having torque transmitting surfaces (15), a drilling end (16), opposite the proximal end, a proximal portion (18) adjacent the proximal end (14), a distal portion (22) adjacent the drilling end (16); an intermediate portion (20) between the proximal portion (18) and the distal portion (22), wherein the thread height of the exterior thread (19) on the proximal portion (18) is greater than the thread height of the exterior thread (23) on the distal portion (22) and the thread height of the exterior thread (21) on the intermediate portion (20) is less than the thread height of the exterior thread (19) on the proximal portion (18) and a strengthening member (44) disposed on said body, said threaded exterior (19) of said proximal portion (18) having a root (26), a crest diameter DC, and a thread height DH; said threaded exterior (21) of said intermediate portion (20) having a root (28), a crest diameter MC and a thread height MH; said threaded exterior (23) of said distal portion (22) having a root (30), a crest diameter TC, and a thread height TH; characterized in that said crest diameter MC of said threaded exterior (21) of said intermediate portion (20) being substantially smaller than said crest diameter DC of said proximal portion (18), and a thread height MH substantially smaller than said thread height of said proximal portion (18) and that root (30) of said distal portion (22) is tapering toward said drilling end (16), said crest diameter TC of said distal portion (22) being substantially smaller than said crest diameter of said proximal portion, said thread height TH of said distal portion (22) being substantially smaller than said thread height of said proximal portion (18) and said root (28) of said intermediate portion (20) tapering toward said distal portion (22)."

Reasons for the Decision

1. The appeal is admissible.

2. Clarity

The objections with regard to Article 84 EPC (1973) raised by the examining division have been remedied and the wording of the set of claims filed during the oral proceedings is clear. Therefore, the claims on file comply with the requirements of Article 84 EPC (1973).

3. Novelty

D1 discloses:

A self drilling anchor suitable for use in a friable material (17) and a substrate (16) adjacent the friable material, the substrate having a hardness greater than the hardness of the friable material, comprising: a thin-walled, elongate body having an axis, an exterior thread (18, 19), an axial bore (3) adapted to receive a fastener (15), a proximal end having torque transmitting surfaces, a drilling end (9), opposite the proximal end, a proximal portion adjacent the proximal end, a distal portion adjacent the drilling end (9); an intermediate portion (6) between the proximal portion and the distal portion, wherein the thread height of the exterior thread on the proximal portion is greater than the thread height of the exterior thread on the distal portion and the thread height of the exterior thread on the intermediate portion is less than the thread height of the exterior thread on the proximal portion and a strengthening member (Innenrippen 11) disposed on said body, said threaded exterior of said proximal portion having a root, a crest diameter DC, and a thread height; said threaded exterior of said intermediate portion having a root, a crest diameter and a thread height; said threaded exterior of said distal portion having a root, a crest diameter, and a thread height; said crest diameter of said threaded exterior of said intermediate portion being substantially smaller than said crest diameter DC of said proximal portion, and a thread height MH substantially smaller than said thread height of said proximal portion and that root of said distal portion being tapering toward said drilling end, said crest diameter of said distal portion being substantially smaller than said crest diameter of said proximal portion, said thread height of said distal portion being substantially smaller than said thread height of said proximal portion.

However, D1 fails to disclose the feature according to which the:

"root of said intermediate portion is tapering toward said distal portion".

Therefore, the subject matter of claim 1 is novel with respect to D1.

4. Since the present application was refused exclusively for contravention of Article 84 EPC (1973) and the present claims comply with this Article, and since the subject-matter of the present claim 1 is novel over D1, it is appropriate to remit the case to the examining division (Article 111 EPC) for examination of the other requirements of the EPC.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the request submitted during oral proceedings on 6 June 2012.