T 0657/14 () of 24.10.2019

Summary of Facts and Submissions

I. The appeal by the patent proprietor is against the decision of the opposition division posted on 17 January 2014 revoking European patent No. 1 685 163.

II. During the opposition proceedings, the opponent had raised the grounds for opposition according to Article 100(b) and (c) EPC as well as Article 100(a) EPC in combination with Article 54 or Article 56 EPC (lack of novelty and lack of inventive step).

III. The board issued a summons to oral proceedings. In a communication under Article 15(1) RPBA, the board gave its provisional opinion.

IV. With a letter dated 11 October 2019, the appellant filed amended claims according to auxiliary requests 3 to 17.

V. By letter dated 18 October 2019, the respondent (opponent) informed the board that it would not be attending the oral proceedings.

VI. Oral proceedings were held before the board on 24 October 2019 in the absence of the respondent.

VII. The appellant (patent proprietor) requested that the decision under appeal be set aside and that the patent be maintained in amended version on the basis of the claims of the main request submitted at the oral proceedings before the board or of one of the auxiliary requests 1 to 13 filed as auxiliary requests 5 to 17 with letter dated 11 October 2019.

VIII. The respondent (opponent) requested in writing that the appeal be dismissed.

IX. Independent claims 1 and 10 according to the main request are worded as follows:

"1. A process of making crumb and powder rubber by chilling a stream of screened granulated rubber particles with a stream of a cryogenic liquid spray and a stream of cooling gas comprising

(a) granulating an initial charge of used rubber particles after removal of any tramp metal;

(b) removing ferrous metal from said granulated rubber particles produced in step (a);

(c) concurrently screening and removing fiber from said granulated rubber particles produced in step (b);

(d) chilling said screened granulated rubber particles having a predetermined particle size range produced in step (c) with the stream of a cryogenic liquid spray and the stream of recycled cold vaporized nitrogen gas flowing concurrently and in the same direction with the screened granulated rubber particles wherein the final chilled temperature of the particles is controlled,

- wherein said chilling is effected by means of chilling means comprising a cylindrical shaped vessel (13) into which said rubber particles are introduced at an inlet end of the vessel (13), to provide a stream of rubber particles to be chilled, and into which liquid nitrogen is fed via a spray nozzle at a controlled volumetric rate for providing said stream of cryogenic liquid spray and for time controlled contact of said rubber particles with said cryogenic fluid, wherein said liquid nitrogen is introduced at approximately the midpoint between the inlet end and an outlet end of the vessel (13),

- wherein cold vaporized nitrogen, which results from the chilling of said rubber particles, is fed into the inlet end of the vessel (13) concurrently with said rubber particles for providing said stream of recycled cold vaporized nitrogen gas and therewith precooling said rubber particles before the rubber particles are chilled by means of the liquid nitrogen fed into the vessel (13),

and wherein the ferrous metal and fiber are removed from the screened granulated rubber particles subsequent to step (c) but prior to step (d);

(e) grinding said stream of chilled rubber particles using a grinding means (20) providing for varying impact surface speed wherein said particle size distribution of said ground rubber particles is controlled;

wherein said grinding means (20) includes an outer inverted cone (22) having a serrated inside surface (23) and acting as a rebound surface, and includes an impact surface (24) in the form of an inverted conical-shape surface (24) provided with a multiplicity of knife edges (25), wherein the outer inverted cone (22) can be raised and lowered for controlling the rubber particle size distribution, wherein the impact surface (24) is rotatable by a rotor (27) and the cooled rubber particles enter at a top of the grinding means and fall between said knifes [sic] (25) of rotating impact surface (24) and serrated inside surface (23); and

(f) drying said ground rubber particles using drying means (35) for raising the temperature of the rubber particles to ambient temperature,

(g) removing ferrous metal and fiber from the dried rubber particles using ferrous metal and fiber removing means (50),

(h) effecting a further fiber separation using further fiber removal means (60), and

(i) screening said ground rubber particles into desired crumb and/or powder rubber particle size ranges."

"10. An apparatus for making crumb and powder rubber comprising granulating means, metal and fiber removing means, chilling means, grinding means and screening means,

A1) granulating means (3) for granulating an initial charge of used rubber particles;

B) ferrous metal removing means (4) provided with means for fiber removal for removing ferrous metal and fiber from said granulated rubber particles;

C) primary screening means (6) provided with fiber removal means for screening said granulated rubber particles;

D) chilling means (12) for cooling a stream of said screened rubber particles having a predetermined particle size range provided with means for introducing said used rubber particles, a cryogenic liquid spray and a stream of recycled cold vaporized nitrogen gas, whereby said rubber particles are cooled to a predetermined temperature,

- wherein said chilling means (12) comprise a cylindrical shaped vessel (13), into which said rubber particles can be introduced at an inlet end, to provide a stream of rubber particles to be chilled, and which is provided with means for feeding and controlled introduction of liquid nitrogen as cryogenic fluid via a spray nozzle to provide said cryogenic liquid spray and for time controlled contact of said rubber particles with said cryogenic fluid, wherein said spray nozzle is located such that said liquid nitrogen is introduced at approximately the midpoint between the inlet end and an outlet end of the vessel (13);

C1) wherein second ferrous metal and fiber removal means (30) and third fiber removal means (32) for removing fiber from said rubber particles exiting said second ferrous metal and fiber removal means (30) are disposed upstream of said chilling means (12);

E) grinding means (20) for grinding said cooled rubber particles at said predetermined temperature to a predetermined particle size range; and

F) drying means (35) for raising the temperature of the rubber particles to ambient temperature,

G) final ferrous metal and fourth fiber removing means (50) disposed downstream of said drying means (35) for removing ferrous metal and fiber from the dried rubber particles,

H) fifth fiber removal means (60) disposed downstream of said final ferrous metal and fourth fiber removal means (50) for effecting a further fiber separation, and

I) screening means for separating said ground rubber particles into desired crumb and/or powder rubber particle size ranges,

wherein the means for introducing the cryogenic liquid spray and the means for introducing the cold vaporized nitrogen gas are located such that a stream of cryogenic liquid spray and a stream of recycled cold vaporized nitrogen gas can flow concurrently and in the same direction with said stream of rubber particles,

- wherein said chilling means (12) is provided with conduit means for recycling of cold vaporized nitrogen gas, resulting from cooling of said rubber particles, by feeding the cold vaporized nitrogen gas into the inlet end of the vessel (13) concurrently with said rubber particles, so that said stream of recycled cold vaporized nitrogen gas is provided and flows concurrently with said rubber particles for precooling the rubber particles before the rubber particles are chilled by means of the liquid nitrogen fed into the vessel (13)."

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

Admissibility of main request

The amended claims of the main request submitted at the oral proceedings before the board constituted a reaction to new issues raised in the board's communication. The main request should therefore be admitted into the appeal proceedings.

Added subject-matter

Method claim 1 was essentially based on granted claim 1 and the preferred embodiment on pages 4 to 14 of the published application, in particular page 8, third paragraph, and page 9, line 13, to page 10, line 22, as well as Figures 2 and 3. Independent apparatus claim 10 was based on claim 14 as granted and included essentially the same additional limitations as amended method claim 1 except for the grinding means.

Regarding the possible limitation to "immediately downstream" in steps (g) and (h) of claim 1, the omission of which the opposition division had considered to be contrary to the provisions of Article 123(2) EPC (see contested decision, point 6 of the reasons), the appellant submits that this omission satisfied the essentiality test, that the feature in question was not inextricably linked to the other claim features and that it was obvious that the processing result would not depend on whether the fibre removal of step (g) was downstream or immediately downstream of the drying means. The same was true for the further fibre separation of step (h). Steps (g) and (h) of claim 1 according to the main request were therefore in compliance with the requirements of Article 123(2) EPC.

Remittal of the case

The issue of patentability should be assessed by two instances. The case should therefore be remitted to the opposition division for the consideration of novelty and inventive step.

XI. The respondent's arguments presented in writing were essentially as follows:

Admissibility of the main request

The present main request and the present numerous auxiliary requests were only filed at the final stage of the appeal proceedings. This late filing limited the respondent's chances for a proper reaction and constituted an abuse of proceedings.

Added subject-matter

The amendments contained in the claims of the main request were contrary to the requirements of Article 123(2) EPC. Some of the features of the granted claims had been limited by the inclusion of further features from the detailed description of the embodiment of the invention. However, already the claims as granted were based on a combination of original claims which were not depending on each other, which also applied to the amended claims of the requests presently on file. Additionally, if the appellant wanted to further restrict the claims with features taken from a detailed embodiment, all essential features of that embodiment had to be included in the independent claim, which was here not the case.

Remittal of the case

A remittal of the case to the opposition division was not necessary. In view of the fact that such a remittal would cause a further prolongation of the proceedings, it was preferred that the board decided itself on the issues of novelty and inventive step.

Reasons for the Decision

1. Admissibility of the main request

1.1 In reply to the appeal, the respondent stated in general terms that the amendments contained in all requests constituted an unallowable generalisation of the detailed embodiment in the application as filed. In the communication dated 8 October 2019, the rapporteur provided a detailed assessment of the issue of added subject-matter regarding the claims of the main request filed by letter dated 19 May 2014. In this context, new questions were raised regarding feature (e) of claim 1, features G) and H) of claim 10, as well as the last feature of claim 10. During the discussions at the oral proceedings, further issues became apparent in claims 1, 10, 14 and 18 to 20.

1.2 The board is satisfied that the amended claims of the main request submitted during the oral proceedings constitute an immediate and appropriate response to the above objections of added subject-matter, which the appellant became aware of only at the final stage of the appeal proceedings. Moreover, it is noted that these claim amendments do not substantially alter the appellant's line of arguments pursued since the outset of the appeal proceedings. Consequently, the other party and the board could be expected to deal with them without adjournment of the oral proceedings.

For these reasons, the board, exercising its discretion under Article 13(1) and (3) RPBA, decided to admit the appellant's main request into the appeal proceedings.

1.3 For the sake of completeness, the board observes that the respondent had been duly summoned but decided not appear at the oral proceedings. According the Article 15(3) RPBA, the board is not obliged under these circumstances to delay any step in the proceedings, including its decision, and the respondent may be treated as relying only on its written case. Moreover, there is no general prohibition for the appellant on amending requests during the respondent's absence from the oral proceedings. Rather, an absent respondent-opponent must expect such reactions of the appellant-proprietor within the legal and factual framework of the case established prior to oral proceedings, and the possibility of decisions taking account of, and being based on, such reactions.

Hence, admitting and deciding on the present main request did not violate the absent respondent's right to be heard enshrined in Article 113(1) EPC 1973.

2. Added subject-matter

2.1 It is disputed between the parties whether the introduction of features taken from the detailed embodiment of the description as filed into the claims unduly generalises the original disclosure and leads to a combination of features which was not disclosed in the application as filed. Such a situation, where the subject-matter of the amended claim lies between an originally broad disclosure (typically in the original claims) and a more limited specific disclosure in the description, is often referred to as an intermediate generalisation. According to the case law of the boards of appeal (see for example decisions T 2311/10 and

T 1852/13), in particular in the case of an intermediate generalisation, the essentiality or three-point test is not considered to be the key criterion for deciding on whether, for the person skilled in the art, the subject-matter of the amended claim goes beyond the disclosure of the application as filed. Rather, the general question to be answered is what the skilled person can derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed (see also G 2/10, OJ EPO 2012, 376, Reasons 4.3).

2.2 Claim 1 according to the main request is based on claims 1, 3, 4, 6, 8 and 11 to 13, and page 8, paragraph 3, page 9, third and fourth paragraphs, as well as page 11, third and fifth paragraphs, of the application as filed, published as WO 2005/049656. In view of the general statement in the first paragraph of page 3 of the published application, the limitation to used vehicle tires of original claim 2 is not inextricably linked to the other features of claim 1. Moreover, it is specifically observed that feature e) contains all structural features of the grinding means originally disclosed in the third and fourth paragraphs of page 9 of the published application. More particularly, it defines that the "impact surface" and the "inverted conical-shape surface" relate to one and the same element (see page 9, lines 16 to 18 of the published application) and that this surface rotates (see page 9, lines 18 to 19 of the published application).

Regarding the controversial issue of whether or not a limitation to "immediately downstream" is required in steps (g) and (h) of claim 1 (see contested decision, point 6 of the reasons), reference is made to claims 35 and 37 of the published application, which provide an unambiguous basis for the more general wording of these steps without the specific limitation to "immediately downstream".

2.3 Independent claim 10 according to the main request is based on claims 17, 19, 21, 22, 32, 35 and 37, and page 8, paragraph 3, of the published application. Original method claim 4 directly and unambiguously discloses a second ferrous metal and fiber removal means detached from the preprocessed rubber particle hopper defined in claim 20. According to the third and fourth paragraphs of page 11 of the published application, the magnetic separator and the vibratory screen of original claim 36 are merely preferred embodiments of the final ferrous metal and fourth fiber removal means. Furthermore, the wording "second ferrous metal and fiber removal means (30)" of disputed feature C1) has its basis in claim 21 of the published application, while the reference to the "third fiber removal means (32)" and its function is originally disclosed in claim 22.

The last feature of claim 10 specifies the details of the chilling means and finds its basis on page 8, paragraph 3 of the application as published.

2.4 Finally, the dependent claims are adapted to the respective independent claim to which they relate. In this regard, the board does not have any objections under the provisions of Article 123(2) EPC.

2.5 For these reasons, the claims of the main request do not contain subject-matter which extends beyond the content of the application as filed (Article 123(2) EPC).

3. Remittal of the case

3.1 Under Article 111(1) EPC 1973, the board of appeal may either decide on the appeal or remit the case to the department which was responsible for the decision appealed. The appropriateness of remittal to the department of first instance is in the discretion of the board, which assesses each case on its merits. Even if there is no absolute right to have every issue decided upon by two instances, it has to be emphasised that it is the primary function of an appeal to give the losing party the possibility of having the correctness of the first-instance decision judicially reviewed. Further criteria which can also be taken into account when deciding on a remittal include the parties' requests, the general interest that proceedings are brought to a close within an appropriate period of time and whether or not there has been a comprehensive assessment of the undecided issues during the appeal proceedings.

3.2 In view of the fact that during the oral proceedings before the opposition division only the issue of added subject-matter was discussed and since the respondent's case on novelty and inventive step essentially relies on an alleged public prior use, which was neither examined by the opposition division nor comprehensively dealt with by the parties during the appeal proceedings, the board exercises its discretion under Article 111(1) EPC 1973 and decides to follow the appellant's request for remitting the case to the department of first instance for further prosecution.

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 for further prosecution.