T 0957/03 25-02-2005

1. The appeal of Appellant I is admissible.

2. The appeal filed by the Proprietor (Appellant II), related to the findings in the decision under appeal that the opposition was considered admissible and the claimed priority not valid, is not admissible since it does not meet the requirements of Article 107 EPC. Pursuant to Article 107 EPC only parties adversely affected by a decision may appeal. A party is adversely affected if the decision does not accede to its requests, regardless of whether it conforms in every respect, in particular in respect of the grounds or reasoning on which it is based, to the party's argument. Since the decision to reject the opposition acceded to the request of the Proprietor, the Appellant II is not adversely affected by the decision and, therefore, not entitled to appeal. Even though some of the reasoning in the decision (namely, regarding his claim to priority) was contrary to the contentions of and therefore adverse to the Patentee, he could not on this basis file an appeal against the decision (see T 73/88, OJ 1992, 557). As a consequence, its appeal is not admissible.

Nevertheless, Appellant II remains a party to the appeal proceedings as Respondent (Article 107, second sentence, EPC), and its "appeal" and "statement setting out the grounds of appeal" are, therefore, considered as submissions made during the proceedings initiated by the admissible appeal of Appellant I. It is understood, on the basis of its submissions, that Appellant II requests that the appeal of Appellant I be dismissed with the proviso that the patent be maintained in amended form on the basis of the amended claim 1 of one of the three requests MR, AR1 and AR2.

3. Sufficiency of disclosure (Article 100b) EPC).

The patent meets the requirement of sufficiency of disclosure within the meaning of Article 100b) or 83 EPC. Although the information provided about the "flexible anchorage means" housed in holes 241, about the diaphragm in the connection element 33 and about the "drain pipe 6" is not wholly clear, the skilled person is able to derive the correct information from the patent as a whole. In fact, it follows from paragraphs 0018 and 0025 that the "damps 6" (an obvious printing error in the patent specification, which should read "clamps", as originally filed) shown as flexible bands in Figure 4 are "anchorage means" extending through the holes 241 in the ribs 24 for fastening the mounting bracket 9 for the air conditioner 10, disclosing an example of how the flexible anchorage means of claim 3 as granted could be realised. The use of reference signs 6,11 for the drain pipe, the clamps and the screw anchor in paragraphs 0018, 0021, 0024, 0025 and 0027 is indeed inconsistent but the connection between the connection element 33 and the drain pipe, whether "6" or "11", seems to be clearly derivable from paragraph 0021 and Figure 4. Considering that according to paragraph 0027 the drain pipe is "fixed" and "previously laid in a chase together with the box 1", it obviously corresponds to the drain pipe of the building main system connected to the pipe (33), as defined in claim 1 as granted. Blind connection elements to be opened by breaking an internal diaphragm are generally known in the field of plastics moulding and, therefore, no further information thereon is required.

4. Validity of the claimed priority (Article 87 EPC)

The Board takes the view that the subject-matter of the invention as claimed in claim 1 of all three requests does not define the same invention as the one described in priority document D1. Accordingly one of the requirements of Article 87 EPC is not met so that the priority is not valid. As set out in G 2/98 the novelty test applies to verify whether the subject-matter of an application or a patent is the same as the one of the claimed priority. In the current case claim 1 of all the requests comprises an essential feature, namely the provision of ribs on the rear side wall and, by defining "at least a section of pipe", covers an embodiment having a single drain pipe section.

It seems to be clear from the whole patent document that the term "ribs" in claim 1 applies to the ribs 24 extending across the wall 22 shown in Figures 1 to 3 of the patent, rather than to the "reinforcing ribs" extending away from the back wall, as shown in Figure 1 of D1. For example, the description of the patent reserves the term "rib" for the ribs 24 extending across the wall 22 and utilises the term "coupling element 231" for the central "reinforcing rib". Since no ribs corresponding to the ribs 24 of the patent are disclosed in D1 (it is undisputed that the reference to the "ribs" in line 19 of the English translation is due to a translation error and should read "fracture lines"), the subject-matter of claim 1, including ribs on the rear side-wall, is not derivable from the invention described in the priority document and, consequently, the priority is not valid (Article 87 EPC).

The filing date applying for the patent is thus the effective filing date of 29 July 1998 of the International patent application PCT/EP98/04724.

Hence, there is in principle no need to decide whether D1 discloses "at least a section of pipe" for connection to the drain pipe. However, the Board takes the view that the omission of the second pipe 4 in Figure 1 of D1 is a drawing inaccuracy because the "two-way"-feature is essential (see the "two-way tank" in claim 1 and the "two-ways 3 and 4" in the description of Figure 1, page 2, line 14 of the English translation), and the description on page 2, lines 8 to 10 indicates that the box shown in Figure 1 corresponds to that of Figure 2, having two pipe sections. Thus the embodiment included in the claimed invention according to the patent and referring to a single drain pipe is not disclosed as such in the priority document. The claimed priority is, therefore, also invalid because of this second difference.

5. State of the art according to Article 54(2) EPC

Since the filing date of the invention according to the patent is the effective filing date, 29 July 1998, the state of the art comprises documents D11 (published 26 June 1998) and D14 (published 19 August 1997), as well as alleged prior uses PU1 (alleged public availability: between 30 January and 30 July 1998) and PU2 (public availability: in the course of the first half of 1998).

In agreement with the reasoning and conclusion of the impugned decision, the first alleged prior use PU1 is disregarded by the Board under Article 114(2) EPC.

Documents D11 and D14, as well as alleged prior use PU2, being considered as relevant, are, however, admitted into the proceedings.

5.1 The fact that prior use PU2 is comprised within the state of the art, as made available before the effective filing date of the patent, has not been disputed by Appellant II. Neither the circumstances of the public availability (sale of products before the filing date of the patent to several customers not bound to confidentiality) nor the basics of its subject-matter, namely the "Climaboxes" of Code 11100091 shown in the Catalogue of Tecnosystemi and corresponding to the boxes shown in Catalogue D10 in the Name of Niccons, are challenged. These boxes were undisputedly built-in boxes for the feeding of the inner units of air-conditioning systems having a hollow parallelepiped-shaped element with an open base and a plurality of ribs provided at its rear side wall (as clearly shown in the original Catalogue of Technosystemi presented in the oral proceedings), and a flat lid. These boxes further comprised an incorporated condensation collecting tray in correspondence with the open base of said hollow element, said tray having two pipe sections suitable and obviously intended for its connection to a drain system.

The sole disputed issue relates to the question whether the "Climaboxes" sold before July 1998 according to prior use PU2 were actually made in form of a single moulded piece or of two separately moulded parts, i.e. with a tank made separately from the hollow box element and with suitable coupling means.

5.2 Prior art D14 (as well as D11 which may be considered as technically equivalent to D14 when compared to the subject-matter of the patent) discloses a piping box 42 for connecting a refrigerant pipe 30 and a drain hose 31. to an indoor unit, said box being buried in a wall 24. (Figures 1 and 2). It comprises a hollow parallelepiped-shaped element 45 (Figures 3,5,9,13 and page 4 of the English translation) with an open base and a flat lid 53 (first line of page 7 of the English translation and Figures 12 and 13). These boxes further comprise a condensation collecting tray 46,46a in correspondence with the open base of said hollow element, said tray having either a left-hand (Figure 3) or a right-hand (Figure 6) drain pipe section 31 for connection to a drain pipe.

6. Main request (MR)

6.1 The Board follows the reasoning of the Appellant I that the subject-matter of claim 1 is obvious in view of the written prior art alone. In fact, it is evident from the analysis of document D14 in point 5.2, that the box defined in claim 1 differs from that disclosed in D14 (or D11) only in that the rear side wall is provided with ribs. However, the provision of such ribs on the rear side wall of the built-in box of either D14 or D11 is to be considered an obvious measure because, in the field of plastics moulding, it is generally accepted that a compromise can be achieved between the amount of plastics material and the mechanical strength of the end product by providing so-called reinforcement ribs on larger surfaces. The ribs, as defined in the description of the patent or in dependent claims 3 and 4, may have additionally a supporting function; however no feature which could provide such an additional effect is present in claim 1 so that the technical problem to be solved cannot take these additional merits into account. The box according to claim 1 of MR is thus obviously derivable for the skilled person, on the basis of his general knowledge, from D14 of D11.

6.2 When considering the alleged prior use PU2, the following conclusions can be drawn.

From the assessment made previously in point 5.1 of the technical properties of the "Climabox" of prior use PU2 with Code 11100091, it is clear that these built-in boxes comprise all the features of claim 1 of the MR; this has not been disputed by Appellant II. The subject-matter of claim 1 of the MR therefore lacks novelty (Articles 52(1) and 54(1) EPC.

7. First auxiliary request (AR1)

Claim 1 of AR1 is based on the combination of claim 1 and dependent claim 5 of MR, and defines the mode of realisation in which the hollow element and said tank are carried out separately and comprise lateral and rear coupling means suitable for connecting said hollow element to said tank. Appellant I stated that this additional feature was also known from the "Climaboxes" sold in the context of PU2 as indicated in the affidavit of Mr Pasqualini (D15). Appellant II responded to this assertion by arguing that the said boxes were moulded in the form of a single piece until the end of July 1998 and this was actually confirmed by the text accompanying the picture in the catalogue, which refers to "an incorporated tank". Whilst, in the Board's view, the expression "incorporated" does not mean "made integral with" and could apply to a construction having separate box and tank elements eventually assembled together, the question of whether the boxes of PU2 were made in one piece or had a separate tank coupled to the hollow box element cannot be answered to a sufficient degree of certainty on the basis of the available evidence and would, therefore, require further investigations.

However, the Board considered that it would not be appropriate to remit the case to the first instance for further prosecution of this aspect of prior use PU2 (for instance for the witness hearing offered by Appellant I) because it would unduly lengthen the procedure and because, even if this feature was not disclosed by the prior use PU2 before the filing date of the patent, it would not involve an inventive step over this state of the art. The objective problem which can be derived from this feature consists in reducing manufacturing costs and additionally in allowing a greater flexibility of products by providing several types of tanks (for instance with left or right drain pipe, with flat or inclined bottom walls) for a single box element. The person skilled in the art would be acting in the field of plastics moulding or at least would be a team including such a skilled person. In the field of plastics moulding it is generally known that the moulding of a specific embodiment may be rather complicated and expensive if made in form of a single piece and that production costs can be reduced by dividing in a suitable manner the moulding process by selecting several components or parts which can be moulded separately. Coupling means would then of course be needed to assemble these separate parts. In the current case the skilled person would envisage a separate moulding of the box and the tank as particularly suitable since it would provide additional advantages, such as a greater flexibility of products with a reduced number of box types. The Board therefore concludes that the subject-matter of claim 1 of AR1, even though it may be new over prior use PU2, is obvious in view of this state of the art for the person skilled in the art. The first auxiliary request AR1 is thus not allowable because of a lack of inventive step of its subject-matter (Article 56 EPC).

8. Second auxiliary request (AR2)

Second auxiliary request AR2 substantially corresponds to the request filed with fax dated 23 February 2005, i.e. tow days before the oral proceedings.

In the European Case Law, the Boards of Appeal have laid down several criteria for limiting the admissibility of amended requests, like the time of filing, the reasons for the late filing, the obvious allowability, the lengthening of the procedure.

Here, first, the late-filed request AR2 was filed only two days before the oral proceedings and without any reasons for its allowability. Second, the auxiliary request was not caused by exceptional circumstances or surprising developments during the proceedings.

When considering the criteria of prima facie allowability of the amended claims the Board took account of the following considerations. From prior use PU2 and on the basis of the written evidence, part of the additional features of claim 2 are known as well: the drawing of the article with Code 11100091 indeed shows that the tank is provided with two opposite pipe sections for the connection with the drain pipe.

The remaining question resides in the provision for each section of a diaphragm suitable for being broken for use as drainage of the condensate. Appellant I declared that the pipe sections of the "Climaboxes" were provided with such diaphragms and that confirmation could be found by hearing Mr Pasqualini as a witness. In the Board's view, even if the provision of breakable diaphragms was not known from PU2, it remains a well-known measure for the person skilled in the field of moulded pipes. The advantages of this kind of diaphragm, for instance the possibility for the end user to select the fluid-flow line in accordance with the specific needs, are easily foreseeable. The subject-matter of the late-filed request AR2 cannot be seen as prima facie allowable when compared to the state of the art. Additionally, a remittal to the first instance, to further investigate the issue related to prior use PU2, would unduly lengthen the procedure.

Taking the above considerations into account, the Board came to the decision not to admit the late-filed auxiliary request AR2.