T 0028/87 (Wire link bands) of 29.4.1988

Summary of Facts and Submissions

I. European patent No. 0 039 850 incorporating 12 claims was granted to the proprietor/respondent on 2 May 1984 on the basis of European patent application No. 81 103 306.7 filed on 2 May 1981 and claiming a priority of 7 May 1980.

II. Oppositions were independently filed by the appellant (opponent II) and by another party (opponent I) requesting revocation of the patent. Invoking Article 100(c), opponent II maintained that Claims 1, 5 and 6 extended beyond the content of the original version of the European patent application, whilst opponent I pleaded on the strength of Article 100(a) that in the light of CH-A-610 273 and CH-A- 444 467 the subject-matter of the patent did not involve an inventive step.

III. After examining the grounds for opposition, the Opposition Division established in its interlocutory decision of 23 October 1986 under Article 106(3) that maintenance of the patent in its amended form as proposed in the oral proceedings was not prejudiced by any of the grounds for opposition under Article 100 EPC, the main reason being that the objections give no grounds for challenging the novelty and inventive character of the subject-matter of the patent. In the method according to the closest prior art CH-A-610 273 there is no reference to a closure slot and to several helices being commonly pressed towards each other: what it says is that one helix after the other is laterally pressed into each preceding helix with a manual sliding pressure. Nor would the person skilled in the art set the problem of producing wire link bands economically by machine have had any occasion to turn to the field of zip-fasteners when searching for parallel cases to help solve this problem and would consequently have disregarded this state of the art (CH-A- 444 467). ... Claim 1 relating to the method reads as follows: "Method for manufacturing wire link bands of synthetic or metal material, having helices with virtue of contractive pre-stress, which are arranged alternatively adjacent with right and left wound pitch and pressed together toward each other and wherein their head-bows are connected by connecting means, characterized in that three or more helices (1,2) are laterally pressed toward each other by commonly pulling them through a narrow closure slot (3, 3a, 3b)." Claim 6 relating to the apparatus, maintained as amended, reads as follows: "Apparatus for execution of the method according to one of the claims 1-5, characterized in that a closure slot (3) having a narrowing passage way for two or more helices (1, 2) to be pulled jointly through the closure slot, which passage way is limited by a cover surface (3, 3a), two lateral surfaces (3, 3a) and a bottom surface (3b) whose narrowest cross-section dimension corresponds approximately to the cross-section dimension of the wire link band (10) which should be formed and whereby the helices (1,2) are pulled through the closure slot (3, 3a, 3b) by drive means (4)."

IV. Opponent II (appellant) filed notice of appeal against the decision on 20 December 1986. ... The appellant maintained that the novelty of Claim 6 was taken away by CH-A-444 467 because all its features were known from the latter. The appellant - and moreover not until the oral proceedings - put forward the further argument that there was lack of inventive step in the light of CH-A-610 273 and CH-A- 444 467, asserting that CH-A- 444 467 had wrongly been assigned in the decision to a field serving another purpose and rested on different principles, after the proprietor of the patent had himself referred to it in the introduction to the description. The appellant requests that the contested decision be set aside and that the patent be revoked for the reasons given. ...

Reasons for the Decision

5. In reply to the question as to whether it was obvious to this problem by following the method and/or means set out in Claims 1 and 6, the following has to be stated:

5.1 The Board points out first of all that it would be empowered under Art. 114(2) to disregard the appellant's argument regarding insufficient level of invention, which had not been submitted in due time. On the other hand the appellant has maintained that a remote state of the art must be taken into account when examining for inventive step in a case where the proprietor of the patent himself went into this particular state of the art of his own accord when considering the state of the art in the application and therefore was aware of it on the date of filing. The Board consequently thought it advisable to consider this point of law.

5.2 It should first be retained that Decision T 176/84, OJ EPO 1986, 50 has made it clear on the one hand that the state of the art in neighbouring fields and/or a broader field should be included when deciding whether there has been an inventive step but on the other that a remote state of the art is not to be taken into consideration.

5.3 By its nature the invention has to be assigned to the same wire link band field as the subject of CH-A- 610 273 which refers to a flat structure composed of combined helices and is called a wire link band. In contrast, CH-A- 444 467 introduced by opponent I in the opposition proceedings discloses a method and apparatus for the continuous production of helical series of zip-fastener links which are formed by the detachable coupling of only two helices.

5.4 In the consideration of the state of the art contained in the introduction to the description in the original documents there is a reference to the wire link bands as specified in CH-A- 610 273 and a general reference to zip-fastener disadvantages that had needed to be overcome. In this way an association of ideas with the zip-fastener field was undoubtedly created. But the decisive fact is that on the date of filing an association of ideas of that nature which the applicant had obviously made only existed in his own private domain which in a manner of speaking comes under the rubric of the "internal" state of the art (i.e. within the company). It was not until publication and the subsequent public awareness that the opponents came to the realisation that they should look for solutions in the zip-fastener field or investigate the latter for matter that might be prejudicial to patentability. (This is how opponent I came upon CH-A- 444 467 as "external" (i.e. generally accessible) state of the art.) For this reason alone the association of ideas has to be disregarded when examining for inventive step. It is furthermore decisive that in the event of sufficiently comprehensive search CH-A- 444 467 was to be found and could have been traced even if it had not been referred to by the applicant. In the opinion of the Board of Appeal it would be unfair to apply differing standards to the relevance of an objection depending on whether the said document could be found by a third party carrying out a search on the basis of a pointer from the applicant, or whether it could have been found without any such pointer. Zip-fasteners and (flat) wire link bands serve different purposes and cannot therefore be ascribed either to relevant or to neighbouring fields. To this extent the Board concurs with the observations made in the Examining Division's decision. The applicant's association of ideas must therefore not be held against him to his disadvantage because it is not objectively justifiable to let a state of the art that has properly to be classified as remote move closer to the field of the invention on that account. Thus, for this reason too, the Board of Appeal has to accept CH-A- 444 467 as remote state of the art and appraise it accordingly, regardless of the manner in which it came to light and the applicant's association of ideas. CH-A- 444 467 cannot therefore be taken into consideration when considering inventive step and consequently the Board does not need to enter more closely into its disclosure content.

5.5 It comes to the conclusion, therefore, that CH-A- 610 273 does not contain either ideas or indications likely to lead a person skilled in the art to the subject-matter of the patent in dispute, irrespective of whether this subject-matter is expressed in Claim 1 relating to the method or in Claim 6 relating to the apparatus. These claims therefore involve inventive step within the meaning of Art. 56 EPC.

6. Claims 1 and 6 are therefore valid.

7. The contingent Claims 2 to 5 and 7 to 12 are upheld by the validity of Claims 1 and 6.

ORDER

For these reasons, it is decided that:

The appeal is dismissed.