T 2382/17 () of 7.5.2020

Summary of Facts and Submissions

I. European patent application No. 04740592.3 (in the following: "the application") relates to a mobile apparatus and a method for trenching a pipeline laid underwater.

II. The examining division refused the application because

- amended claim 1 of the main request before it comprised added subject-matter (Article 123(2) EPC);

- amended claim 1 of the first auxiliary request before it lacked novelty (Articles 54(1)(2) EPC 1973).

III. This decision has been appealed by the applicant (in the following "the appellant").

IV. The appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the set of claims filed as the main request with the statement of grounds of appeal (letter dated 26 September 2017), alternatively on the basis of the set of claims filed as the first to third auxiliary requests with the statement of grounds of appeal. The appellant also made a conditional request for oral proceedings.

V. With the summons to oral proceedings, the Board sent a communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA 2007) indicating its preliminary opinion of the case. In particular, the Board indicated its intention to allow the third auxiliary request.

VI. In a response dated 21 January 2020 to the summons, the appellant expressed its intention to withdraw the main request and the first and second auxiliary requests, on the condition that the Board were indeed minded to decide that the third auxiliary request was allowable and the oral proceedings be cancelled.

VII. With a further communication pursuant to Article 15(1) RPBA 2020 the Board informed the appellant that its conditional withdrawal of the main request and the first and second auxiliary requests was inadmissible and did not have any legal effect.

VIII. In response, with letter dated 9 March 2020, the appellant withdrew the main request and the first and second auxiliary requests, and maintained as sole request the third auxiliary request.

IX. The Board thereupon cancelled the oral proceedings and informed the appellant that the proceedings would be continued in writing.

X. Claims of the appellant's sole request

Independent apparatus claim 1 as amended reads as follows (the feature numbering is introduced for ease of reference; compared with claim 1 as originally filed, added passages are indicated in bold, deleted passages in strike-through):

(a) A mobile apparatus for trenching a pipeline (7)

laid under water, the mobile apparatus including:

(b) a mobile base station (1), and

(c) a soil breaker in the form of a tracked vehicle,

the soil breaker including moving parts for

breaking up soil adjacent to the pipeline (7)

with a mechanical action, the soil breaker being

connected to the mobile base station (1) by an

umbilical connection arranged to allow the soil

breaker to move relative to the mobile base station

(1), the umbilical connection providing a path for

control signals from the mobile base station (1) to

the soil breaker,

(d) one or more dredging units (5A, 5B, 5C) connected

to the mobile base station (1), the dredging units

(5A, 5B, 5C) being arranged to remove [deleted: for removing]

soil broken up by the moving parts of the soil

breaker from under the pipeline (7) and convey

[deleted: conveying] away the broken up soil mixed with water

to form a trench, and

(e) a backfilling unit (6) connected to the mobile base

station (1) for receiving soil removed by the one

or more dredging units (5A, 5B, 5C) and conveying

the soil into the trench to cover over the pipeline (7);

(f) wherein the soil breaker, the one or more dredging

units (5A, 5B, 5C) and the back filling unit (6)

are each individually deployable from the mobile

base station (1) and are longitudinally spaced

along the pipeline (7).

Independent method claim 13 as amended reads as follows (compared with claim 13 as originally filed, added passages are indicated in bold):

A method of trenching a pipeline (7) laid under water, the method including the following steps:

- providing a mobile base station (1),

- providing a soil breaker in the form of a tracked vehicle, the soil breaker including moving parts for breaking up soil adjacent to the pipeline (7) with a mechanical action, connecting the soil breaker to the mobile base station (1) by an umbilical connection arranged to allow the soil breaker to move relative to the mobile base station (1), the umbilical connection providing a path for control signals from the mobile base station (1) to the soil breaker, and using the soil breaker to break up soil along a path adjacent to the pipeline (7) using the mechanical action,

- further providing one or more dredging units (5A, 5B, 5C) connected to the mobile base station (1), and using the one or more dredging units (5A, 5B, 5C) to remove soil broken up by the moving parts of the soil breaker and to carry away the soil mixed with water to form a trench, and

- providing a backfilling unit (6) connected to the mobile base station (1), the backfilling unit (6) receiving soil removed by the one or more dredging units (5A, 5B, 5C) and conveying the soil into the trench to cover over a pipeline (7) in the trench,

- wherein the soil breaker, the one or more dredging units (5A, 5B, 5C) and the back filling unit (6) are each individually deployed from the mobile base station (1) and are longitudinally spaced along the pipeline (7).

XI. Cited evidence

(a) The following prior art documents were cited in the examination proceedings:

D1: US 4,992,000;

D2: FR 2 473 228 A1;

D3: US 4,301,606;

D4: GB 1 492 151;

D5: GB 1 399 802;

D6: FR 2 580 305 A1;

D7: US 6,336,419 B1;

D8: WO 83/00060 A1.

(b) In the statement setting out the grounds of appeal, the appellant referred in particular to the following documents:

D9: Palmer, A., "Subsea Pipeline Engineering",

Pennwell, 2008, paragraph 12.5.2.3;

D10: US 4,330,225;

D11: US 4,395,158;

D12: http://www.seatools.com/subsea-solutions/subsea-trenching/;

D13: https://deepoceangroup.com/services/seabed-intervention/jet-trenching/;

D14: https://deepoceangroup.com/services/seabed-intervention/mechanical-cutting/.

(c) In the communication pursuant to Article 15(1) RPBA 2007 the Board referred to the following extracts from textbooks:

D15: Palmer, A.C. and King, R.A., "Subsea Pipeline Engineering", Pennwell, 2004, pages 379 to 380;

D16: Bai, Y., "Pipelines and Risers", Elsevier Ocean Engineering Book Series, Volume 3, 2001, pages 315 to 320.

XII. The arguments of the appellant, insofar as relevant for the present decision, can be summarised as follows:

(a) Amendments to the claims

Contrary to the examining division's view, the added limitation that the soil breaker includes moving parts for breaking up soil adjacent to the pipeline with a mechanical action (features (c) of claim 1), does not amount to a non-allowable intermediate generalisation of the teaching in the application as originally filed (see WO 2005/005736 A2). In particular, using common general knowledge as documented in D9 to D14, the skilled person would immediately understand that - according to the invention - the soil breaker preferably comprises movable parts which are configured to act mechanically upon the soil to break it up and thus form a trench (page 3, lines 14 to 16).

The claims have been further amended to overcome the objection of lack of novelty over D1 raised in the appealed decision, as well as the objection of lack of inventive step raised in the examination proceedings. Support for the umbilical connection added to feature (c) can be found in the description (page 3, lines 3 to 5, 8 and 9 and 26 to 28; page 7, lines 21 to 24; page 11, lines 23 to 25) and in claim 3 as originally filed. With respect to feature (f) it is apparent from the application as originally filed that the umbilical connection is arranged to allow the soil breaker to move relative to the mobile base station, whereby this enables the soil breaker to move relative to the dredging unit(s) (page 3, lines 8 and 9; page 7, lines 21 to 24; page 11, lines 32 and 33 and figures 1 and 2). It is clearly disclosed that the soil breaker (4), the dredging unit(s) (5A to 5C) and the backfilling unit (6) are separate and spaced apart units, each deployed separately along the pipeline (page 2, lines 30 to page 3, line 2; page 6, lines 20 to 24; page 9, lines 12 to 28; page 13, lines 70 to 10).

(b) Novelty

The subject-matter of claims 1 and 13 is novel over the prior art documents cited by the examining division. In particular, the trenching apparatus defined in claim 1 differs from that disclosed in D1, which comprises a soil breaker in the form of a towed jetting sled, in that:

- the soil breaker includes moving parts for breaking up soil adjacent to the pipeline with mechanical action,

- the soil breaker is in the form of a tracked vehicle and the umbilical connection from the soil breaker to the mobile base station provides a path for control signals from the base station to the soil breaker, and

- the soil breaker and the dredging unit are each individually deployable from the mobile base station and spaced along the pipeline.

(c) Inventive step

The trenching apparatus disclosed in D1 forms the closest prior art for assessing inventive step. The distinguishing features have several technical effects, namely (i) that the trenching apparatus can be used in harder soils, (ii) that the soil breaker can progress in a controlled and precise manner by means of the vehicle's tracks, (iii) that its operation can be remotely controlled in a reliable and precise manner, and (iv) that dredging and backfilling can be carried out separately from soil breaking in response to soil breaking and sinking of the pipeline. The objective technical problem solved by the distinguishing features thus is how to enable effective management and control of pipeline-trenching operations in harder ground.

The claimed solution to this problem is not rendered obvious by the cited prior art documents.

In particular, the skilled person seeking to solve the objective problem would not replace the water jets of D1 with rotating bucket wheels in accordance with the teaching of D3. In fact, since the apparatus according to D3 is activated electrically and hydraulically and D3 fails to disclose that the broken up soil is re-used to backfill the trench, the skilled person would not apply the teaching of D3 to the apparatus of D1.

Even if D1 and D3 were to be combined, the skilled person would not employ an umbilical connection providing a path for control signals from the mobile base station to the soil breaker, let alone modify the soil breaker and the dredging unit so that they be separate units which can be individually deployed along the pipeline. D3 discloses an electric cable 38 for supplying power to the trencher, but it fails to suggest control of the trenching operation remotely via an umbilical.

A secondary indication of inventive step is that the distinguishing features over D1 produce surprising technical effects: the broken up soil has a larger grain size and is less fluidised and thus it is less prone to dispersal during backfilling, with the result that environmental impact can be further reduced; the broken up soil has a lower water content and thus the volume and weight of the mixture of soil and water that is conveyed can be reduced and this is advantageous when trenching in shallow water.

These arguments apply equally to independent method claim 13.

Reasons for the Decision

1. The revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020). However, in the present case, Article 12(4) to (6) RPBA 2020 does not apply, but instead Article 12(4) RPBA 2007 continues to apply (Article 25(2) RPBA 2020).

2. Applicable provisions of the EPC

2.1 The application was filed under the PCT on 2 July 2004 and published as WO 2005/005736 A2. It was still pending at the time of entry into force of the EPC 2000 on 13 December 2007.

2.2 According to Articles 1(1) and 6, first sentence of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 4, OJ EPO 2007, 217), Articles 54(1)(2) and 56 EPC 1973 as well as Article 123 EPC (2000) apply.

3. Common general knowledge

3.1 The appellant alleges that D9 to D14 document the common general knowledge of the skilled person in the art of subsea pipeline trenching.

3.2 However, these documents were not filed as annexes to the appellant's letter and are therefore not available to the Board.

3.3 Notwithstanding the lack of availability of these documents, the Board has doubts as to whether D9 to D14 could actually document common general knowledge at the priority date of the application (4 July 2003). D9 was published in 2008. According to established case law, common general knowledge is normally to be found in basic handbooks, monographs, encyclopedias, textbooks and reference books, but not in patent specifications (D10, D11) or commercial brochures (D12, D13, D14).

3.4 The Board has introduced D15 and D16, which are extracts from text books, as evidence of what was common general knowledge at the priority date (Article 114(1) EPC 1973). D16 clearly belongs to the state of the art according to Article 54(2) EPC 1973. D15 appears to reflect common general knowledge already available at the priority date, even though it was published (shortly) after that date. D15 and D16 are highly relevant for appreciating the content of the application as filed and for assessing the question of novelty and possibly inventive step.

4. Admissibility of the appellant's request

4.1 The appellant filed its present request for the first time as the third auxiliary request with the statement of grounds of appeal.

4.2 Claims 1 and 13 differ from claims 1 and 13 of the first auxiliary request on which the appealed decision was based, essentially by the added limitations:

- that the soil breaker is in the form of a tracked vehicle,

- that the soil breaker is connected to the mobile base station by an umbilical connection allowing the soil breaker to move relative to the mobile base station as well as providing a path for control signals, and

- that the soil breaker, the dredging unit(s) and the backfilling unit are each individually deployable from the mobile base station and are longitudinally spaced along the pipeline.

4.3 These amendments were filed in direct reaction to the objection of lack of novelty in the appealed decision, which was raised for the first time in the oral proceedings before the examining division, as well as in response to the objection of lack of inventive step raised by the examining division in the annex to the summons to oral proceedings (point 3).

4.4 They clearly overcome all outstanding objections without introducing new issues.

4.5 The Board thus sees no reason to disregard this request (Article 12(4) RPBA 2007).

5. Amendments to the claims

5.1 Claim 1 differs from claim 1 as originally filed - apart from minor editorial amendments and the insertion of reference signs - by the following additional features:

(1) that the soil breaker is "in the form of a tracked

vehicle" (see feature (c)),

(2) that the soil breaker includes "moving parts" for

breaking up soil adjacent to the pipeline "with a

mechanical action " (see features (c) and (d)),

(3) that the soil breaker is connected to the mobile

base station "by an umbilical connection arranged

to allow the soil breaker to move relative to the

mobile base station, the umbilical connection

providing a path for control signals from the

mobile base station to the soil breaker

(see feature (c)), and

(4) that "the soil breaker, the one or more dredging

units and the back filling unit are each

individually deployable from the mobile base

station and are longitudinally spaced along the

pipeline" (feature (f)).

5.2 The same amendments have been carried out in method claim 13.

5.3 The Board is satisfied that the introduction of features (1), (3) and (4) into claims 1 and 13 is supported by the information in the application documents as originally filed, as indicated by the appellant (see point XII-a) above).

5.4 With respect to feature (2), the Board shares the appellant's view that its introduction into claims 1 and 13 does not contravene Article 123(2) EPC:

5.4.1 In the present case, the application as filed is concerned with a mobile apparatus for trenching and burying a pipeline underwater, in particular in shallow water (page 1, lines 3 to 7 and 29 to 31). The application as filed is thus directed to an engineer having experience in the design of such equipment.

5.4.2 This skilled reader knows from their general knowledge that subsea pipeline trenching is normally performed by jetting, ploughing or cutting the soil, whereby different trenching techniques are suited to different soil conditions. This common general knowledge is documented in D15 and D16. It is also mentioned - albeit briefly - in the introductory section of D1, column 1, lines 18 to 23.

5.4.3 The reader is taught in claim 1 and in the paragraph bridging pages 1 and 2 of the application as filed that the trenching and burying apparatus according to the invention comprises a soil breaker for breaking up soil adjacent to the pipeline, whereby it is stated on page 3, lines 14 to 16 that "the soil breaker preferably includes moving parts for breaking up the soil with a mechanical action; the moving parts may, for example, be cutting discs".

5.4.4 In the light of this paragraph and of common general knowledge, as set out above, the skilled reader would immediately understand that - according to the invention - the soil breaker preferably comprises movable parts which are configured to act mechanically upon the soil to break it up and thus form a trench. Thus, for the reader it is apparent that the soil is broken by mechanical action of moving parts upon the soil, but not by water jets. By adding the feature that the soil breaker includes "moving parts" for breaking up soil adjacent to the pipeline "with mechanical action" in claim 1, the claim has been limited to this preferred embodiment of the soil breaker.

5.4.5 The Board is not persuaded by the examining division's contention that - in the application as filed - the added feature is disclosed only in combination with the further feature that the moving parts are cutting discs and that it is functionally and structurally linked with this further feature and cannot be isolated from it. In fact, it is clear from the wording on page 3, lines 14 to 16 that the further feature that the moving parts are cutting discs is an optional feature ("the moving parts may, for example, be cutting discs", emphasis by the Board). Thus, there is no need to require further that the moving parts are cutting discs.

5.4.6 To support its view, the examining division argues that claim 1 as amended may cover other hypothetical embodiments, which are not disclosed in the application as filed. However, when assessing compliance with Article 123(2) EPC, the question is not whether or not a specific hypothetical undisclosed embodiment falls within the scope of the claim. In a nutshell, the relevant question is whether the amendment results in the skilled reader being presented with new technical information, which is not the case here.

5.5 The Board therefore concludes that the subject-matter of claims 1 and 13 can be directly and unambiguously derived from the application as originally filed.

6. Novelty

6.1 D1 discloses, in the terms of claim 1, a mobile apparatus for trenching a pipeline laid under water (in figures 1 and 2, see underwater trenching system 10 for burying cable/pipeline 37), including:

- a mobile base station (floating barge 12),

- a soil breaker (jetting nozzles 20 of trenching sled 16) for breaking up soil adjacent to the pipeline (column 2, line 64 to column 3, line 1 and figure 3), the soil breaker being connected to the mobile base station (hoses 18 and 24),

- a dredging unit (vacuum head 22 of sled 16) connected to the mobile base station and arranged to remove soil broken up by the soil breaker from under the pipeline and convey away the broken up soil mixed with water to form a trench (column 3, lines 1 to 8), and

- a backfilling unit (bury sled 32) connected to the mobile base station for receiving soil removed by the dredging unit and conveying the soil into the trench to cover over the pipeline (column 3, lines 8 to 15),

- wherein the soil breaker (20), the dredging unit (22) and the backfilling unit (32) are longitudinally spaced along the pipeline (figures 1, 3 and 4), and

- wherein the sled comprising the soil breaker and the dredging unit, on the one hand, and the backfilling unit, on the other hand, are each individually deployable from the mobile base station.

6.2 The appellant contends that, contrary to the appealed decision (point 6 of the reasons), D1 fails to disclose that the soil breaker includes moving parts for breaking up soil adjacent to the pipeline with mechanical action, as required by feature (c).

6.3 The Board shares the appellant's view that this feature is not anticipated by the disclosure of D1:

6.3.1 The soil breaker disclosed in D1 is a towed jetting sled 16 including two jetting nozzles 20, coupled to a high pressure water pump 17 by water hoses 18. Hence, the soil is broken up by physical action of high pressure water jets on the soil, whereby the nozzles 20 control the direction and characteristics of the jets.

6.3.2 On a normal reading of disputed feature (c) in the context of claim 1, this feature requires that moving parts of the apparatus be adapted to act mechanically upon the soil to break it and thus form a trench. Contrary to the examining division's opinion, this cannot be said of the jetting nozzles 20, let alone the rotor of pump 17. In particular, it cannot be derived from D1 that these components would be suitable or configured for the required use. The examining division refers to movable arms carrying the nozzles, but such movable arms cannot be derived from D1. D1 uses the physical action of high pressure water to break up the soil. The water cannot be considered to be a moving part of the apparatus of D1.

6.4 Finally, apart from the afore mentioned feature, D1 fails to disclose the following features of claim 1:

- that the soil breaker is in the form of a tracked vehicle, and the umbilical connection from the soil breaker to the mobile base station provides a path for control signals from the base station to the soil breaker (feature (c)), and

- that the soil breaker and the dredging unit are each individually deployable from the mobile base station (feature (f)).

6.5 In D1, the jetting sled 16 is pulled along by a tow cable 34 and connected to the barge via water hoses 18 and suction hoses 24. There is no umbilical for sending control signals. Since the soil breaker (jetting nozzles 20) and the dredging unit (vacuum head 22) are integral parts of the sled 16, they must be deployed together.

6.6 Hence, the subject-matter of claim 1 is new in the sense of Article 54(1)(2) EPC 1973 in light of D1.

6.7 The Board is also satisfied that the claimed subject-matter is not anticipated by the other cited prior art, this being more remote than D1.

7. Inventive step

7.1 The trenching and burying apparatus disclosed in D1 forms a realistic starting point for the assessment of inventive step. In fact, among the prior art documents cited by the examining division, it forms the most promising starting point.

7.2 As reasoned above, the subject-matter of claim 1 differs from this apparatus comprising a soil breaker in form of a jet sled in that

- the soil breaker is a mechanical trencher in the form of a tracked vehicle, as defined in feature (c),

- the umbilical connection from the soil breaker to the mobile base station provides a path for control signals from the base station to the soil breaker, and

- the soil breaker and the dredging unit are each individually deployable from the mobile base station.

7.3 The technical problem objectively solved by these distinguishing features can be formulated as how to enable effective management and control of trenching and burying operations in hard soils.

7.4 The Board shares the view of the appellant that the claimed solution to this problem is not part of the common general knowledge of the skilled person and is neither disclosed nor suggested in the cited prior art documents. In particular, the Board can see no reason why the skilled person would modify the apparatus of D1 so that the soil breaker and the dredging unit be separate units which are each individually deployable from the mobile base station along the pipeline.

7.5 In conclusion, with regard to the prior art cited by the examining division, the subject-matter of claim 1 involves an inventive step in the sense of Article 56 EPC 1973.

8. The above reasoning applies also to the subject-matter of method claim 13.

9. The description has been brought into conformity with the amended claims.

10. The Board comes to the conclusion that the application documents according to the (sole) request meet the 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 with the order to grant a patent in the following version:

- claims 1 to 24 filed as the third auxiliary request with letter dated 26 September 2017;

- description pages 1, 4, 5, 8, 12, 13, 16 and 17 of the application as published, and description pages 1a, 2, 2a, 3, 6, 7, 7a, 9, 10, 11, 14 and 15 filed with letter dated 21 January 2020; and

- drawing sheets 1/5 to 5/5 of the application as published.