T 0176/84 (Pencil sharpener) of 22.11.1985

Summary of Facts and Submissions

I. European patent application 80 107 426.1, filed on 27 November 1980 and published under number 0 031 470, claiming the priority of an earlier application of 29 November 1979, was refused by the Examining Division by decision of 14 March 1984. The decision was based on the claims received on 4 October 1983.

II. In its decision the Examining Division explained that the subject-matter of Claim 1 did not involve an inventive step in view of German applications (Offenlegungsschriften) 2 819 134 and 1 960 978.

III. On 10 May 1984 the applicants filed an appeal against this decision and paid the appeal fee requesting that the contested decision be set aside. A statement of grounds was received on 13 July 1984.

IV. At oral proceedings on 18 December 1984, the applicants requested that the patent be granted on Claim 1 as submitted at those proceedings, a fair copy of which was received on 21 December 1984, Claims 2 to 13 received on 4 October 1983, pages 1, 2, 2a and 2b of the description submitted at the oral proceedings, a fair copy of which was likewise received on 21 December 1984, pages 3 to 8 of the original description and sheets 1 to 4 of the original drawings.

Invoking Article 112 EPC, they also requested in the alternative that the following point of law be referred to the Enlarged Board of Appeal for a decision:

"On the basis of Articles 54 and 56, Guidelines for Examination C-IV, 9.6 and 9.7, and Decisions T 11/81 and T 09/82, is it admissible to demand or expect, for purposes of inventive step, that the average person skilled in the art seek guidance from fields of technology remote from that of his invention in pursuit of features relevant to his invention."

The present Claim 1 reads as follows:

"1. A hand-operated pencil sharpener having a container to collect the shavings, enclosed to prevent egress of shavings, in which the aperture through which the pencil to be sharpened is inserted can be completely closed when the sharpener is not in use, preventing such egress, and in which the container consists of a support element (2, 2') for the sharpener (3) and the slide member (1, 1'), an upper portion (5) mounted on the support element and secured thereon, and a receptacle (6) for the shavings, into which the support element can be slidably fitted, characterised in that the slide member (1, 1') has a contact surface (15, 15', 15") to receive the point of the pencil to be inserted so shaped or at such an angle to the direction (B, C, B', C') of slide of the slide member that the pressure (a) of the pencil point moves the slide member to the open position and return springing means (16, 16') are provided to move the slide member automatically to the position shutting off the inside of the container so as to prevent egress of shavings, and that the contact surface guides the pencil point to the insertion aperture (10, 11)".

The applicants consider that the subject-matter of Claim 1 is not suggested by the cited documents; they maintain that German application 1 960 978 (Offenlegungsschrift) concerns a field unconnected with that of pencil sharpeners and that the mechanism it discloses for securing the slot of a savings box was not apposite to the problem underlying the application. After consultation among the Board members, the Chairman announced that the decision would be given in writing.

V. On being informed that the composition of the Board had changed after the oral proceedings, the applicants stated in a document dated 10 October 1985 received on 12 October 1985 that they requested fresh oral proceedings pursuant to Article 7(1) of the Rules of Procedure of the Boards of Appeal only if the Board was not going to approve the grant of a patent on the documents in accordance with the request of 18 December 1984 except for pages 2a and 2b, for which they asked to substitute a new page 2a.

VI. For the wording of the claims and description as filed, see publication number 0 031 470.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The present Claim 1 incorporates the features of Claims 1 and 8 as originally filed. The subject-matter of the claims therefore does not extend beyond the content of the application as filed (Article 123(2) EPC).

The pre-characterising portion of the claims is based on a pencil sharpener of the kind disclosed in German application (Auslegeschrift) 1 003 093. This does not give rise to any objections. A pencil sharpener approximating more closely to the subject-matter of Claim 1 has not been found. Nor is there any objection to the way the features are apportioned between the first part and the characterising part of the claim. Those features of the sharpener which were also present in the sharpener according to the above-mentioned German "Auslegeschrift" are all in the pre-characterising portion.

Claim 1 accordingly complies in that respect with the formal requirements of the Convention.

3. The subject-matter of Claim 1 is hence distinguished from the pencil sharpener according to German application (Auslegeschrift) 1 003 093 by the features set out in the characterising portion of the claim. It is further distinguished from the pencil sharpeners disclosed in the other cited documents by its design in the form of a container consisting of a support element, an upper portion and a receptacle for shavings, specified in the pre-characterising portion.

The pencil sharpener according to Claim 1 is therefore new in terms of the relevant state of the art.

4. In the case of the pencil sharpener according to German application (Auslegeschrift) 1 003 093, the slide member in the support element acting as a cover for the insertion aperture has to be moved by hand to the closed as well as the open position. According to the description, the applicants find this mode of operation cumbersome. There is also the danger that after the sharpener has been used, the slide member, which is held in the open or closed position by springing means will not be returned to the closed position and that shavings may escape from the container as a result.

5. On the question of whether it was obvious to overcome these disadvantages by designing a sharpener as set out in Claim 1, the following points need to be noted:

5.1 Persons skilled in the art have previously attempted to solve the problem underlying the application insofar as it involves automatically preventing the egress of shavings through the insertion aperture after the sharpener has been used.

5.1.1 Thus according to the teaching of German application (Offenlegungsschrift) 2 513 051, the sharpener housing is fitted with a lid under pressure of a spring which holds the lid in a position covering the insertion aperture when the sharpener is not in use, so that before the pencil is inserted, the lid has to be moved manually against the action of the spring to the position affording access to the aperture and held in that position at least while the pencil is being inserted.

5.1.2 A spring operating in the direction of the closed position and therefore automatically shutting the insertion aperture is also provided for in the sharpener according to German application (Offenlegungsschrift) 2 819 134. It too, like the subject-matter of Claim 1, involves a closing element consisting of a longitudinally moving slide member. However, as in the case of the lid of the sharpener according to German application (Offenlegungsschrift) 2 513 051, it has to be moved manually to the open position before the pencil is inserted. For this purpose it is fitted with externally projecting gripping means.

5.2 While the pencil sharpener according to Claim 1 also uses the idea of a return spring acting on the slide member in the closing direction to ensure that the insertion aperture is not left open after the sharpener has been used, it also combines that idea with the idea of using the pencil as the operating means for the slide member: the slide member is not moved to the open position until the pencil is inserted.

The aforementioned applications, either individually, in combination with each other or in conjunction with US Patent Specification 2 169 908, would not suggest the possibility of implementing the overall idea by the means set out in Claim 1. According to the US document's teaching, the egress of shavings is prevented by removing a lid containing a passageway for the pencil and replacing it in reverse position.

5.3 Whether the pencil sharpener according to Claim 1 represents a modification, suggesting itself to a person skilled in the art, of the securing mechanism for the slot of a savings box according to German application (Offenlegungsschrift) 1 960 978, as the Examining Division maintains but the applicants dispute, need not be considered here as it is not material. The Examining Division arrived at its conclusion because it was of the opinion that a person skilled in the art wishing to improve the sharpener according to German application (Auslegeschrift) 1 003 093 could be expected to take into account also the field of securing mechanisms for savings-box slots. Such securing mechanisms represented a neighbouring field because both pencil sharpeners and savings boxes belonged to the "broader field of the closing of containers". The Board is unable to share this view.

5.3.1 While it is indeed perfectly reasonable to expect a person skilled in the art if need be, i.e. in the absence of useful suggestions in the relevant field as to how a given problem might be solved, to look for suitable parallels in neighbouring fields, the question of what is a neighbouring field is one of fact and the solution depends, in the opinion of the Board, on whether the fields are so closely related that the person skilled in the art seeking a solution to a given problem would take into account developments in the neighbouring field. It is furthermore quite reasonable to expect a skilled person to refer to the state of the art in the general field of technology in which the same problems or problems similar to those in the special field of the application extensively arise and of which a person skilled in the art must be expected to be aware.

5.3.2 In the present case, even adopting the same premise as the Examining Division that the person skilled in the art by abstracting the problem would eventually, in his search for suggestions as to how he might solve the problem underlying the application, turn to the broader, that is to say general field of container closing, while he would then have entered what the Examining Division considers to be the generic field, he would not have reached the field of securing mechanisms for savings-box slots. In view of the technological differences between the two fields - storage of coins in a container as opposed to sharpening of pencils with provision for collection of shavings - there is no reason why it should occur to a skilled person to refer to this specific area - which the Examining Division considers to be part of the same broader field - to see how similar problems had been solved there.

5.3.3 Nor does the IPC direct the skilled person's attention to the field of securing savings-box slots, since class B 43 L, sub- class 23/00 and its subsidiary groups do not contain a cross- reference to class A 45 C, much less to savings boxes.

5.3.4 The field of such securing mechanisms is therefore not one of the neighbouring fields to which a skilled person concerned with the development of pencil sharpeners would also refer, should the need arise, in search of appropriate solutions to his problem.

5.4 In terms of what is therefore the sole relevant state of the art for pencil sharpeners, the subject-matter of Claim 1 accordingly involves an inventive step under Article 56 EPC as has been shown.

6. Claim 1 is hence allowable (Article 52 EPC).

7. Since dependent Claims 2 to 13 concern particular embodiments of the pencil sharpener according to Claim 1, they too are allowable.

8. In these circumstances the applicants' alternative request need not be considered.

9. The description has been brought into line with the amended wording of the claims and a section has been added dealing with another pencil sharpener revealed by the search. It accordingly does not give rise to any objections.

ORDER

For these reasons, it is decided that:

1. The contested decision is set aside.

2. The case is remitted to the department of first instance, which is instructed to grant a European patent on the following application documents ....