T 1079/16 () of 15.5.2019

Summary of Facts and Submissions

I. The appeal of the proprietor is directed against the decision of the Opposition Division to revoke European Patent No. 1 864 939.

II. The Opposition Division held that the subject-matter of claim 1 of the main request and of the auxiliary requests 1 to 5 did not meet the requirements of Articles 100 (c) and 123(2) EPC.

III. The appellant (proprietor) requested to set aside the contested decision and to maintain the patent according to the main request of the contested decision, or, in the alternative, to maintain the patent according to the auxiliary requests 1 to 5 of the contested decision, or on the basis of the auxiliary requests 6 to 8 filed with the statement of grounds of appeal.

The respondent (opponent 3) requested to dismiss the appeal.

The other respondents (opponents 1 and 2) did not file any reply to the appeal of the patent proprietor.

IV. In its communication of 15 March 2019 in preparation for the oral proceedings scheduled to take place on 8 May 2019, the Board expressed its preliminary view of the case. In particular, the Board indicated that the subject-matter of claim 1 according to the appellant's main request and to the auxiliary requests 1 to 7 represented an intermediate generalisation of the content of the application as originally filed contrary to the requirements of Article 123(2) EPC. Further, the Board pointed out its intention to remit the case to the Opposition Division for further prosecution regarding auxiliary request 8 in order to deal with novelty and inventive step.

V. With letters of 29 March 2019 and of 5 April 2019, respectively, opponent 1 and the patent proprietor informed that they would not attend the oral proceedings.

Following a communication of the Board dated 10 April 2019, in which the parties were informed that the Board intended to issue a decision rejecting the main and auxiliary requests 1 to 7 for the reasons given in the previous communication, and to remit the case to the first instance for further prosecution in respect of auxiliary request 8, opponent 3 withdrew the request for oral proceedings with letter of 25 April 2019.

Opponent 2 did not file any submission in the appeal proceedings.

The scheduled oral proceedings were then cancelled.

VI. Claim 1 according to the main request reads as follows (differences with respect to claim 1 as filed in bold and with respect to claim 1 as granted [deleted: struck through] added by the Board):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification and inspection data on said RFID tag[24,34,46,58,68,72,];

accessing said identification and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification and inspection data on said portable computer device by entering data on [deleted: at least] one of said templates, updating said identification and inspection data on said RFID tag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72], a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and information on the application of said material lifting device."

Claim 1 of the auxiliary request 1 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification and inspection data on said RFID tag[24,34,46,58,68,72,];

accessing said identification and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates consisting of a template to select from various lifting devices, an inspection template and a blank template and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification and inspection data on said portable computer device by entering data on [deleted: one of said] the inspection or blank templates, updating said identification and inspection data on said RFID tag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72] and accordingly a material lifting device, a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and information on the application of said material lifting device,

said identification and inspection data is entered on the blank template if the unique alphanumeric data does not match that in the memory of the portable computer device, and

said identification and inspection date is entered on the inspection template if the unique alphanumeric identification data matches that in the memory of the portable computer device."

Claim 1 of the auxiliary request 2 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification and inspection data on said RFID tag[24,34,46,58,68,72,];

accessing said identification and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates and an RFID reader, wherein said memory stores data regarding inspection and personnel training;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification and said inspection data on said portable computer device by entering data on one of said templates, updating said identification and said inspection data on said RFID tag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

said identification and said inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72], a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and information on the application of said material lifting device including training information and product warning information."

Claim 1 of the auxiliary request 3 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification data and inspection data on said RFID tag [24,34,46,58,68,72,];

accessing said identification data and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification data and inspection data on said portable computer device by entering data on one of said templates, updating said identification and inspection data on said RFID lag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

characterised in that said identification data on said RFID tag is compared against a database, wherein said database includes information on application of said material lifting device;

wherein forms of templates are accessed on said portable computer device, wherein said templates include an identification template, an inspection template with criteria on applicable inspection methods, visual acceptance criteria, industry and government standards, and a template on training information on use of said material lifting device;

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72], a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and references to information on the application of said material lifting device including training information, product warning information, and applicable industry and government standards."

Claim 1 of the auxiliary request 4 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification data and inspection data on said RFID tag [24,34,46,58,68,72,];

accessing said identification data and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification data and inspection data on said portable computer device by entering data on one of said templates, updating said identification and inspection data on said RFID tag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

characterised in that said identification data on said RFID tag is searched against a database held in the memory of the portable computer device, wherein said database includes various inspection forms, training information, product warning information, ordering information for parts and supplies, and assembly information and industry specification;

wherein an inspection screen or template will be presented on a display means of the portable computer device displaying various information including the name of the distributor, the serial number of the lifting product and particular information about the product including the grade, construction type, any defects and other pertinent information;

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72), a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and references to information on the application of said material lifting device including training information on use, product warning information, and applicable industry and government regulations."

Claim 1 of the auxiliary request 5 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification data and inspection data on said RFID tag [24,34,46,58,68,72,];

accessing said identification data and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification data and inspection data on said portable computer device by entering data on one of said templates, updating said identification and inspection data on said RFID lag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

characterised in that said identification data on said RFID tag is compared against a database, wherein said database includes information on application of said material lifting device;

wherein forms of templates are accessed on said portable computer device, wherein said templates include inspection forms, training information, product warning information, ordering information for parts and supplies, and/or assembly information and industry specification;

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72], a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and references to information on the application of said material lifting device including training information and product warning information."

Claim 1 of the auxiliary request 6 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification and inspection data on said RFID tag[24,34,46,58,68,72,];

accessing said identification and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a blank template without prepopulated information, an inspection template including all of the data or information which has been compiled to date [deleted: plurality of templates] and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification and inspection data on said portable computer device by entering data on the template presented to the user on the display [deleted: one of said templates], updating said identification and inspection data on said RFID tag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72], a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and information on the application of said material lifting device."

Claim 1 of the auxiliary request 7 reads as follows (differences with respect to claim 1 of the main request highlighted):

"A method of identifying, inspecting and training regarding a material lifting device [20,22,30,38,50,60,70] which method comprises:

attaching an RFID tag to a material lifting device;

installing identification and inspection data on said RFID tag[24,34,46,58,68,72,];

accessing said identification and inspection data on said RFID tag with a portable computer device having a central processing unit, a memory, a display, a plurality of templates consisting of a template to select from various lifting devices, an inspection template including all of the data or information which has been compiled to date and a blank template without prepopulated information and an RFID reader;

periodically inspecting said material lifting device to obtain inspection data about said material lifting device; and

updating said identification and inspection data on said portable computer device by entering data on [deleted: one of said templates] the inspection or blank templates, updating said identification and inspection data on said RFID tag characterised in that the material lifting device [20,22,30,38,50,60,70] is in the form of a lifting block, wire rope sling, chain sling, master link assembly, hook, or plate clamp; and

said identification and inspection data includes a unique alphanumeric identification of said RFID tag [24,34,46,58,68,72], a material lifting device product type, a material lifting device manufacture date, a status indicator of said material lifting device and information on the application of said material lifting device,

said identification and inspection data is entered on the blank template if a serial number of the material lifting device does not match that in the memory of the portable computed device, and

said identification and inspection data is entered on the inspection template if the serial number of the material lifting device matches that in the memory of the portable computer device."

The sole claim of auxiliary request 8 is identical to granted claim 4.

Reasons for the Decision

1. Inadmissible extension

1.1 The subject-matter of claim 1 of the main request extends beyond the content of the application as originally filed (Article 123(2) EPC).

1.2 The inadmissible extension is linked with the features relating to the "templates" in independent method claim 1.

According to the application as filed (see paragraphs [0019], [0020] and [0033] to [0039] of the A-publication of the application as filed) the feature "template" is disclosed in combination with the procedure disclosed in paragraph [0019] or that of the flow chart in figure 7 according to "mode 3" (see paragraphs [0033] to [0039] of the A-publication), which relates to the inspecting procedure with a portable computer device.

These procedures have been generalized in amended claim 1 according to the main request. The opinion of the Opposition Division in its decision is therefore shared (see point 2.2 of the contested decision).

1.3 The appellant (proprietor) alleges that it is clear from paragraph [0036] as filed that there are not only two templates - a blank template without pre-populated information and a template which includes all of the data compiled to date - but a plurality of templates each including all of the data or information which has been compiled for one specific serial number. Hence, a template is present for each serial number. Consequently, a general plurality of templates is disclosed in the application as originally filed.

The Board does not share this view and follows that of the respondent (opponent 3). According to the description of the application as filed (see in particular paragraphs [0019], [0036] and [0037], as well as figure 8) a template is a screen presented on a monitor or display which is preprogrammed and preformatted with a fixed layout and fields which might include information already stored in the memory of the portable computer device or might be empty if that information has not been stored yet. These fields show or allow the collection of data such as name of the distributor, serial number, grade, construction type... Accordingly, the fact that a specific screen layout, i.e. a template, which includes among other fields a serial number entry, displays a specific serial number within that field after reading and identifying the RFID tag attached to the material lifting device, does not make it a different template in comparison to a screen display having the same layout and presenting a different serial number with its corresponding associated data in the fields of the same screen layout (in case another material lifting device has been identified by another RFID tag attached to it).

Further, the disclosure of the invention regarding the method claimed when referring to templates is presented in figure 7 in combination with paragraphs [0031] to [0039] which does not generally refer to a plurality of templates at any stage of the method but which includes specific templates displayed at the different procedural steps of the method according to the invention. In this regard and contrary to the appellant's allegations it is directly and unambiguously disclosed in the application as originally filed that the method according to the invention for inspection with a portable computer including templates also comprises the following sequential steps (see paragraphs [0033] to [0039] and figure 7):

- provide the inspector or user initially with a choice in the form of a template to select from various lifting products;

- search for the serial number of the read RFID tag in the database of the memory of the computer;

- provide the inspector with a template selection if no match for the serial number is found, display a blank template of the selected template, and update inspection data in the template;

- display an inspection template which includes all the data compiled to date if a match for the serial number of the RFID tag is found, and update inspection data in the template;

- save all the changes entered in the template to the memory of the portable computer device once the inspection has been complete;

- send and update the updated information to the RFID tag.

These steps have been omitted in the amended claim 1 of the main request such that its subject-matter contemplates as further technical information different ways to proceed with templates when performing the inspection process within the method claimed. Consequently, the content of the application as filed has been generalized in claim 1 and the amended patent contravenes the requirements of Article 123(2) EPC.

1.4 For the same reasons as presented above none of the auxiliary requests 1 to 7 meets the requirements of Article 123(2) EPC because none of the claims 1 of these requests include the steps mentioned under point 1.3. Their subject-matter represents thus an unallowable intermediate generalization of the specific method disclosed in the application as originally filed.

2. Remittal to the Opposition Division for further prosecution

2.1 Auxiliary request 8 comprises only a single claim which corresponds to granted claim 4 and is directed to a system.

2.2 The decision under appeal is based only on objections under Articles 123(2) and 84 EPC for the subject-matter of the independent method claim for the main request and the auxiliary requests 1 to 5. Taking into account that no objections under these articles have been raised against the independent system claim, that no decision was taken during the opposition proceedings on the issue of novelty and inventive step of its subject-matter and that the respondent (opponent 3) requests a remittal in order to discuss these issues before the Opposition Division, the Board considers it as appropriate to exercise its discretion under Article 111(1) EPC to remit the case for further prosecution to the department of first instance in order to discuss novelty and inventive step of the subject-matter of claim 1 of auxiliary request 8.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside

2. The case is remitted to the Opposition Division for further prosecution.