T 0599/05 24-10-2006

1. The appeal is admissible.

2. Main request - set A of claims

2.1 Document D1 undisputedly discloses (see the Figure) a metal soleplate according to the preamble of claim 1, namely a metal soleplate (2) for an iron which is provided with an anti-friction layer (3) containing an inorganic polymer (see claim 1 of D1). As acknowledged by the appellant during the oral proceedings, D1 also discloses the feature of the characterizing portion, according to which the organic polymer of the anti-friction layer is provided by means of a sol-gel process (see claim 1 of D1).

D1 further discloses that the metal soleplate (2) comprises a stainless steel alloy layer, the stainless steel being in particular an AISI 304 alloy (col. 3, lines 52, 53 and col. 4, lines 36, 37). D1, undisputedly, does not explicitly disclose an aluminium layer in combination with a stainless steel alloy layer.

The respondent argued that the known iron must also have an aluminium part provided on top of the stainless steel layer, in which the heating resistance was embedded. The respondent did not dispute that irons without such an aluminium part existed, but argued merely that it was found in the standard construction of all modern irons available on the market. Under these circumstances, the Board can only accept the appellant's submission that iron constructions without such an aluminium part are known. Therefore, when reading D1, the skilled person would be faced with the question of whether the iron of D1 has a "standard" construction with an aluminium part or, rather, a different known construction without the aluminium part. Accordingly, it must be concluded that the presence of the aluminium part cannot be clearly and unambiguously derived from the disclosure of D1.

Hence, since D1 does not disclose a part of the soleplate made of aluminium in combination with a stainless steel layer as intermediate layer, the subject-matter of claim 1 is novel over the disclosure of D1 (Article 54(2) EPC).

2.2 However, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC).

When reading D1, the skilled person would consider the technical problem of how to realize, in practice, an iron in accordance with the above-mentioned embodiment of D1 in which the metal soleplate comprises a stainless steel alloy layer. An aspect of this problem is providing the iron with the necessary heating element.

The Figure of D1 shows that there are further parts on top of the stainless steel alloy layer (2). These parts must necessarily include the heating element. The provision of a heating element in the form of a heating resistance embedded in an aluminium cast part is, undisputedly, generally known in the art. It is also generally known, as acknowledged by the appellant itself during the oral proceedings, to attach a steel plate to such an aluminium part, in particular for expensive "high-end" types of irons. It is further undisputed that in these types of irons the combination of the steel plate and the aluminium part constitutes the soleplate.

The skilled person would therefore consider it as obvious, having regard to his common general knowledge, to provide, as one of the parts on top of the stainless steel layer (2) shown in the Figure of D1, an aluminium part containing the heating resistance. In doing so, he would realize a soleplate comprising a part made of aluminium, an intermediate layer made of an AISI 304 stainless steel, and the above-mentioned anti-friction layer. Since AISI 304 stainless steel has, undisputedly, a hardness which is at least twice that of aluminium, the skilled person would in this manner arrive at a metal soleplate falling within the scope of claim 1 without the exercise of inventive activity.

2.3 Therefore, the appellant's main request is rejected for lack of inventive step, Article 56 EPC.

3. First and second auxiliary requests (sets of claims B and C)

In addition to the features of claim 1 according to the main request, claims 1 according to the first and second auxiliary requests define, respectively, the feature that "the anti-friction layer is an inorganic polymer layer", and the feature that the inorganic polymer is "with or without a quantity of filler".

As pointed out by the Board during the oral proceedings, these features do not provide any further distinction over D1. Stating that the inorganic polymer is with or without a quantity of filler does not limit the claimed subject-matter but is simply an indication of the fact that the filler is optional. The anti-friction layer disclosed by D1 is, undisputedly, an inorganic polymer layer (see col. 4, lines 32 to 44).

Therefore, the subject-matters of claims 1 of the first and second auxiliary requests lack an inventive step for the same reasons as given in respect of claim 1 of the main request.

It follows that the appellant's first and second auxiliary requests are rejected for lack of inventive step, Article 56 EPC.

4. Third auxiliary request - set D of claims

The third auxiliary request counts as late-filed because it was filed during the oral proceedings, after the discussion of the third auxiliary request previously on file, in respect of which the Board expressed concerns under Article 123(2) EPC.

Claim 1 of the third auxiliary request is amended to define a metal soleplate in which the intermediate layer is provided with the anti-friction layer on one side, "whereafter they are secured with the uncoated surface to the surface of the aluminium part". In accordance with the appellant's intention, as expressed during the oral proceedings, claim 1 requires that the intermediate layer is firstly coated with the anti-friction layer and then secured to the aluminium part.

The amendments thus introduce, in the claim directed to a product, a reference to the steps of the method for manufacturing the product. Since it is not immediately clear what limitations for the claimed product derive from the reference to the method steps, the claim is prima facie objectionable under Article 84 EPC.

Accordingly, since the third auxiliary request is considered late-filed and claim 1 is not clearly allowable under Article 84 EPC, this request is rejected as inadmissible (see e.g. T 92/93, Reasons, point B.1).

5. Fourth auxiliary request - set E of claims

5.1 Claim 1 according to the fourth auxiliary request additionally defines, as compared to claim 1 of the main request, that the intermediate layer is obtained by hardening the surface of the soleplate by a nitration or a carbonation process. This feature is disclosed in the description of the application as filed (see page 2, lines 16 to 19). In the application as filed there is support for combining this feature with the remaining features of claim 1 (see claim 1 and page 2, lines 13, 14 and 16 to 19 of the application as filed).

Dependent claims 2 to 5 correspond to claims 5 to 8 of the patent as granted (see claims 5 to 8 of the application as filed).

Accordingly, the amendments made to the claims do not give rise to objections under Article 123(2) EPC.

5.2 Since it is taken from the description, the above-mentioned feature might not have been searched at all. Its introduction constitutes a substantial amendment in the sense that it could lead to a different assessment of inventive step as compared to the main request. No decision was taken by the first instance as to inventive step.

In view of these circumstances, the Board considers it appropriate to give the parties the possibility of having this matter considered by two instances of jurisdiction. The Board thus makes use of its power under Article 111(1) EPC to remit the case to the Opposition Division for further prosecution.

5.3 Apportionment of costs

The respondent's request for an apportionment of the costs of the oral proceedings in the event of such a remittal is based on the allegation that additional costs have been created by the appellant having filed late the fourth auxiliary request, whereby a final decision could not be taken at the oral proceedings.

It is clear that additional costs are occasioned by a remittal. However, the respondent failed to show what additional costs it incurred in relation to the oral proceedings held before the Board by reason of the filing of the fourth auxiliary request during said oral proceedings. In fact, the oral proceedings was rendered necessary by the appellant's other requests previously filed in writing. Nor can the Board recognise an abuse of procedure in the appellant's behaviour: the fourth auxiliary request corresponds to the previous third auxiliary request filed in writing with letter dated 18 September 2006, which included two independent claims 1 and 2, and which was amended only by way of deletion of claim 1 in reaction to an objection of the Board under Article 123(2) EPC raised during the oral proceedings. Moreover, the added feature concerning the nitration or the carbonation process was already present in the third auxiliary request filed with the grounds of appeal.

Finally, it is true that in accordance with the Rules of procedure of the Boards of Appeal (Article 11(6) and 10b(3) RPBA), a case should be ready for decision at the end of oral proceedings and amendments to the appellant's case should not be admitted if they would result in an adjournment of the oral proceedings. This, however, does not mean that the decision at the end of oral proceedings shall be a final decision in the sense that it terminates the proceedings. A remittal for further prosecution, as in the present case, does not terminate the opposition proceedings, but terminates the current appeal proceedings. Moreover, this possible outcome of the oral proceedings had already been hinted at in the communication annexed to the summons for oral proceedings (point IV).

Therefore, there are no reasons of equity which in accordance with Article 104(1) EPC could justify a different apportionment of costs incurred during oral proceedings. The respondent's request cannot therefore be allowed.