T 0009/93 () of 1.2.1995

Summary of Facts and Submissions

I. The Appellant (Opponent) lodged an appeal against the decision of the Opposition Division on the rejection of the opposition against the patent No. 0 254 944.

Opposition was filed against the patent as a whole and based on Article 100(a) and (b) EPC.

The Opposition Division held that the grounds for opposition mentioned in Article 100(a) and (b) EPC did not prejudice the maintenance of the patent unamended, having regard to the document

D1: EP-A-94 483.

II. Oral proceedings were held on 1 February 1995.

(i) The Appellant requested that the decision under appeal be set aside and the patent be revoked.

(ii) The Respondent requested that the appeal be dismissed and that the patent be maintained unamended (main request) or be maintained on the basis of the auxiliary request presented on 9. September 1993.

(iii) The wording of the single claim of the contested patent reads as follows:

"A driving method of a winder used for the winding of a yarn wherein the yarn is wound on a bobbin (4) comprising the steps of: bringing a contact roller (6) into contact with said bobbin (4), rotating said bobbin (4) connected to a bobbin holder (2) with a first motor (10) being speed controllable, and rotating said contact roller (6) with a second motor (13), characterized in that said rotations of said first and second motors (10, 13) are controlled such that the number of rotations of said contact roller (6) is given by the following equation:

N = nl-(K.m(nO-nl)/Tl),

wherein N indicates the number of rotations (r.p.m.) of said contact roller (6) which is operated in pressing contact with said bobbin (4), nO indicates the synchronous number of rotations (r.p.m.) according to the power frequency of said second motor (13), nl indicates the number of rotations (r.p.m.) of said second motor (13) with which only said contact roller (6) is driven, Tl indicates a load torque (kg cm) of said second motor (13) with which only said contact roller (6) is driven, m indicates the number of packages (5) which are wound in contact with said contact roller (6), and K indicated a factor which is between O and 1.5."

According to the auxiliary request a number of corrections of clerical errors in the patent specification are proposed.

(iv) The Appellant argued essentially as follows:

The passage "K indicates a factor which is between 0 and 1.5" in claim of the contested patent has to be interpreted in the light of the description and the drawings in the sense that it includes both the lower limit of 0 and the upper limit of 1.5. In particular, the formula in line 20 of page 5 indicates that the limits of 0 and 1.5 should be included. Also the examples given in the patent with respect to Figures 8 and 9. clearly show that the value of K=0 achieves the optimum result of the invention of the contested patent.

Document D1 discloses a driving method comprising the features according to the preamble of the claim of the contested patent and including implicitly the formula given in the claim of the contested patent. According to page 14, lines 25 to 32, of document D1 the motor of the contact roller is said to be controllable such that either no torque or a certain torque is transferred from the contact roller to the bobbin. Therefore, the subject-matter of the claim of the contested patent lacks novelty with respect to the method according to document D1.

If the Board interprets the claim of the contested patent in the sense that the lower and upper limits of the K-value of 0 and 1.5 are excluded, the claim would lack an enabling disclosure (Art. 100(b) EPC), since the limits of the range "between 0 and 1.5" would not be defined. Moreover, even with such an interpretation, the claimed method would be anticipated by document D1. Furthermore, the claimed method does not constitute a "selection invention" with respect to the method disclosed in document D1, since there are no particular unforeseeable advantages indicated in the contested patent for a range of the K-value "between 0 and 1.5".

(v) The Respondent argued essentially as follows:

The claim of the contested patent has to be interpreted in the sense that the values for K of 0. and 1.5 are excluded. This cannot only be derived from the word "between" but also from the description, wherein, in particular on page 5, line 50 and page 6, lines 38 to 40, it is indicated that a torque of plus direction acts from the contact roller to the bobbin, which means that a K-value of 0 is not included. The formula given in line 20 of page 5, which includes the values of 0 and 1.5, has to be seen only in context with the discussion of Figure 2 and not in context with the claim.

The method of the claim is new with respect to the method disclosed in document D1, since a specific range of the K-value between 0 and 1.5 is not disclosed in that document and since that document does not give any hint to the significance of the number "m" of the packages involved.

The method of the claim involves also an inventive step with respect to the teaching of document D1, since that document does not give any enabling disclosure to the person skilled in the art for the specific optimum range of the K- value as claimed in the contested patent. The claimed range must be regarded as constituting an inventive selection with respect to the disclosure of document D1, which selection produces a specific advantage with respect to yarn quality and package profile, as explained on page 6, lines 38 to 40 of the contested patent.

Reasons for the Decision

1. Interpretation of the claim

According to the sole claim of the patent "K indicates a factor which is between 0 and 1.5". The ordinary meaning of "between" does not exclude the lower and the upper limit (0 and 1.5 respectively). The man skilled in the art would therefore consider the range of values as including both the lowest and the highest value mentioned in the claim. If, as contended in the present case by the Respondent, the word "between" in a claim of a patent is intended to exclude the lowest and the highest value, a clear and unambiguous support for such an interpretation in the description of the patent would be required.

In respect to this issue the person skilled in the art extracts from the description of the contested patent the following teaching:

- in connection with Figures 1 and 2 which describe a "preferred embodiment" of the invention (see headline on page 4, line 11), it is stated on page 5, lines 16 to 20 that the torque t(which corresponds to the value K of the claim!) "allowable with respect to the rupture of the aforementioned yarn quality and the rupture of the bobbin paper sleeve is given by the following equation (2):

O <= t <= 1.5 m".

This formula clearly includes the values of 0 and 1.5.

- Figures 8 and 9 and the corresponding parts of the description on page 2, line 46 to page 3, line 25, explain the basic effects and advantages of the invention. Figure 8 clearly shows that good results with respect to yarn quality are obtained within the whole range of K-values between and including 0 and 1.5 and that the best results are obtained at a K-value of 0. Figure 9 also clearly shows that with respect to paper tube damage the best results are obtained, when the K-values are 0.

- the advantages (I), (II) and (III) specified on page 6 are achieved with an optimum effect at a K-value of 0.

- the advantage (IV) also specified on page 6 which was referred to by the Respondent, indicates that a torque of plus direction should act in the direction from the contact roller to the bobbin in order to avoid yarn elongation. However, this indication, which admittedly could be understood as excluding a K-value of 0, is made with respect to an alleged specific further advantage of the invention and cannot invalidate the general teaching of the description of the contested patent that a K-value of 0 is included in the claimed method.

On the basis of the aforementioned disclosure of the description, the Board concludes that the wording of the claim as it stands and as interpreted in the light of the description, means that the factor K should be between 0 and 1.5, including both the values of 0 and 1.5.

2. Novelty

2.1. Document D1 (cf. Claim 3, Figures 1 and 4 and corresponding parts of the description) discloses a driving method of a winder used for the winding of a yarn wherein the yarn is wound on a bobbin comprising the steps of bringing a contact roller into contact with said bobbin, rotating said bobbin connected to a bobbin holder with a first motor being speed controllable and rotating said contact roller with a second motor, wherein the number of rotations of said first and second motors are controlled such that the number of rotations of the contact roller is held at a certain value. This value linearly depends on the synchronous number of rotations n0 according to the power frequency of the second motor, on the number of rotations of the second motor with which only the contact roller is driven n1, on the load torque of the second motor with which only the contact roller is driven T1 and on the torque transferred between the contact roller and the bobbin (see page 12, last paragraph to page 14 in connection with Figure 6 of document D1).

It is a matter of course that the torque which can be transferred between the contact roller and the bobbin is directly proportional to the width of contact or the number "m" of bobbins in contact with the contact roller and that therefore also in the method document D1 the number "m" of packages to be wound influences the number of rotations of the contact roller. Since, however, this number "m" is one in the example given in document D1, no explicit mention of the number "m" of packages is found in this document.

Therefore, the Board concurs with the opinion of the Opposition Division and the Appellant that the formula "N = n1-(K.m(n0-n1)T1)" given in the claim of the contested patent is implicitly present in the method according to document D1.

On page 14, lines 25 to 28, of document D1 it is expressly stated that the control device can be adjusted so that the motor of the contact roller exerts no net force on the bobbin. Moreover, on page 5, lines 4 to 11 it is said that the slippage between the contact roller and the bobbin can be eliminated so that the circumferential speed of the contact roller corresponds to the circumferential speed of the bobbin.

These passages clearly disclose an operation mode, wherein no torque is transferred between the contact roller and the bobbin, i.e. the value of K is 0 in the meaning of the claim of the contested patent.

Therefore, document D1 discloses a method comprising all the features of the claim of the contested patent, including the feature that no torque (value K = 0) is transferred between the contact roller and the bobbin.

The method of the claim of the contested patent is therefore not novel with respect to the method disclosed in document D1.

2.2. Even if the method of Claim 1 of the contested patent had to be interpreted in the sense as excluding a K- value of 0, it would be anticipated by the disclosure of document D1, since on page 14, lines 28 to 32 of this document also an operation mode is disclosed, wherein the contact roller transfers a positive transfer force to the bobbin.

Taking into account the teaching of document D1 on page 14, lines 8 to 32, that the torque transferred between the contact roller and the bobbin could be 0, positive and negative, and that, for physical reasons, a certain maximum torque cannot be exceeded, the person skilled in the art would choose the range of the transfer force (or torque) of this positive-torque operation mode adjacent to the value of 0 torque which falls within the range indicated in the claim for the value K.

3. Auxiliary request

The amendments proposed according to the auxiliary request of the Respondent essentially concern only corrections of obvious clerical errors in the patent specification. These amendments are not necessary to overcome objections with respect to the grounds of opposition which would prejudice the patent as granted. Therefore, following established jurisprudence of the Boards of Appeal the Board does not allow the auxiliary request.

4. Since none of the requests of the Respondent is allowable, the patent has to be revoked.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.