T 0746/97 () of 3.2.1999

Summary of Facts and Submissions

I. European patent application No. 92 309 889.1 (publication No. 0 540 319) was refused by decision of the Examining Division.

The reason for the refusal was that the subject-matter of independent claim 1 of the main and auxiliary request then on file lacked an inventive step, since it was only distinguished from the nearest prior art as disclosed in document:

D3: US-A-4 917 613

by an aggregation of trivial or known features.

II. The appellant (applicant) lodged an appeal against the decision.

III. In a communication pursuant to Article 11(2) of the rules of procedure of the Boards of Appeal issued in preparation of oral proceedings, the Board inter alia drew the appellant's attention to the contents of document:

D4: JP-A-3-269 912

as referred to in the introductory portion of the description, which in its view appeared to disclose the very connection arrangement defined in the characterizing portion of amended claim 1 as filed with appellant's statement of the grounds of appeal. A translation into English of document D4 was prepared on the EPO's behalf and forwarded to the appellant.

IV. In response to the Board's communication the appellant with his letter dated 21 January 1999 filed amended application documents to replace the description and claims then on file. He submitted that independent claim 1 had been restricted in scope to the embodiments disclosed in the description with reference to Figures 10 to 14 and that its subject-matter was not suggested by the prior art.

In a letter dated 28 January 1999 he further submitted that the document D4 upon which the outstanding objections were based had not been fully considered during the examining procedure and that the application should therefore be referred back to the examiner at first instance for reconsideration.

V. Oral proceedings were held on 3 February 1999, at the end of which the appellant requested that the case be remitted to the first instance for further prosecution on the basis of the claims submitted with his letter of 21. January 1999.

Claim 1, the only independent claim of the valid set of claims, reads as follows:

"1. A wire harness for electrical devices comprising: a main member (1) having a main circuit (7) including an insulated conductor wiring circuit plate (3) in the form of a flexible circuit plate in which conductors (8,31) are arranged on an insulation base film (9, 33) and an upper coverlet film (12, 32) having a back surface with an adhesive layer thereon (11, 37) is disposed on the conductors, and a branch member (2) including a printed wiring plate (4) having a plurality of conductive paths (22) thereon and mounting holes (19) for receiving connector pins of a connector (20) for leading electrical wires (5), characterised in that a connecting area (14A) is formed by a predetermined width along an edge of said flexible circuit being devoid of said insulation base film (9,33) thereby leaving a belt-shaped space across the edge of the flexible circuit plate, and said conductive paths (22) of said printed wiring plate (4) have a side exposed in a connection area (14B) and are directly and electrically contacted in an overlapping relationship in contact with a corresponding one of the conductors (8, 31) on the insulated conductor wiring plate (3) in the connecting area (14A) whereby the adhesive layer in the back surface of the upper coverlet film (32) at positions between the conductors in the belt-shaped space adheres on the printed wiring plate thereby to hold a connection between the flexible circuit plate and the printed wiring plate."

Reasons for the Decision

1. The appeal is admissible.

2. As compared to its wording in the version on which the refusal was based, claim 1 has in particular been supplemented with the additional substantial limitation that in the flexible circuit an adhesive layer is formed on a back surface of an upper coverlet film disposed on the conductors, which in the belt-shaped space devoid of an insulation base film and at positions between the conductors adheres on the printed wiring plate thereby to hold a connection between the flexible circuit plate and the printed wiring plate.

The feature of the adhesive layer being so provided between the conductors as to hold a connection between the flexible circuit plate and the printed wiring plate and its interest - in particular in avoiding the need for troublesome soldering work - had indeed been disclosed in the description as originally filed (see e.g. page 11, lines 11 to 19). This feature had not however been set out in any of the claims as filed or as amended in the course of the examining procedure.

The merits of the above additional feature - which might not have been properly encompassed by the search performed by the Search Division under the provisions of Article 92 EPC - have not yet been considered by the Examining Division, accordingly.

In these circumstances, the Board's deems it appropriate to exercise its power under Article 111(1) EPC to remit the case to the Examining Division for further prosecution on the basis of the substantially amended claims at present on file, in accordance with appellant's sole request (see decision T 47/90, OJ EPO, 1991, 486, point 3 of the Reasons).

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 for further prosecution on the basis of the claims submitted with the letter of 21 January 1999.