T 1147/06 22-04-2009

1. The appeal is admissible.

2. Admissibility of the Oppositions

The Appellant submitted that the oppositions are inadmissible, because the grounds cited in the notices of opposition were not sufficiently substantiated.

2.1 Notice of Opposition of Opponent OI

Opponent OI cited Articles 100(a) and 100(c) EPC as grounds of opposition. The Appellant acknowledges that there is sufficient support for the ground under Article 100(c) EPC, but submits that this is not the case for the allegation of lack of inventive step (Article 100(a) EPC), because it is not clear from the notice of opposition how the ratios X/R and X/Y can be derived from E3 and E4.

In the notice of opposition, Opponent OI sets out the argument that CH-A-10342 (E1) discloses all the features of granted claim 1, except for defining length X as being greater than 30% of R. However, Opponent OI goes on to stress that no unexpected results arise from this relationship, and that such a value is within the common knowledge of the skilled person, as evidenced by textbooks E3 and E4. The submission of Opponent OI is also supported by a specific example from E5.

It is well established case law of the boards (see pages 556 to 558 of Case Law of the Boards of Appeal of the European Patent Office, 5th edition, 2006) that an opposition is sufficiently substantiated if the opponent's case can be properly understood on an objective basis, and that sufficiency of the notice of opposition must be distinguished from the strength of the opponent's case.

Whether or not the ratios X/R and X/Y are disclosed in documents E3 and E4 is a question of fact that would have to be determined by the Opposition Division, but this is more to do with the strength of the opponent's submission. What is important is that it is possible to understand the opponent's case, and hence the requirement of sufficiency for an admissible opposition has been met.

2.2 Notice of Opposition of Opponent OII

Opponent OII opposed the patent on the basis of Articles 100(a), 100(b) and 100(c) EPC.

2.2.1 Novelty (Article 100(a) EPC):

In the notice of opposition, Opponent OII alleges that the subject-matter of independent claims 1, 2 and 20 lacks novelty with respect to E4, because it merely amounts to "a straightforward application of natural laws to a separation device suitable for use as an odour trap". The Appellant argues that the failure of Opponent OII to indicate where in E4 the features of the claims are to be found means that the allegation of lack of novelty has not been substantiated.

E4 is a standard text book, and the citation in question amounts to seven pages, which can be readily understood by the skilled person. The view of the Board is that the submission of Opponent OIII could have been better argued, but this is insufficient to render it inadmissible, as the line of argument can be understood.

2.2.2 Inventive Step (Article 100(a) EPC):

The notice of opposition sets out the submission that the subject-matter of claims 1 and 2 lack an inventive step with respect to E2 when combined with E7, E4 or E9 (see pages 3 to 9 of the Notice of opposition). Opponent OII has presented arguments which are significantly more than a mere reference to these documents; it cannot therefore be said that the ground is insufficiently substantiated.

2.2.3 Sufficiency of Disclosure (Article 100(b) EPC):

In the notice of Opposition, Opponent OII argues that the claims define the subject-matter in terms of relative dimensions, without providing any indication of the actual dimensions and minimum velocities involved. This argument is also capable of being understood and hence is admissible. The Appellant's submission that Opponent OII only took the claims, and not the description, into consideration has no bearing on the admissibility of the ground.

2.2.4 Added Subject-Matter (Article 100(c) EPC):

In arguing this ground in the notice of opposition, Opponent OII compares the granted patent with the priority document. Since the comparison should have been with the originally filed application, the Appellant submits that Article 100(c) EPC has not been substantiated.

It is not clear in the notice of opposition whether Opponent OII is referring to the original application (E11) or the priority document (E8). However, the argument put forward by Opponent OII focuses on claim 4, which is substantially the same in both documents. On this basis, the submission of Opponent OII can be understood. In addition, Article 100(c) was also raised and substantiated in the notice of opposition filed by Opponent OI, so in any event the ground per se is in the proceedings, with all parties having an opportunity to comment upon it.

2.3 Notice of Intervention by Opponent OIII

2.3.1 Admissibility of the Intervention

The Appellant argues that no indication is given in the notice of intervention as to what extent the patent is being opposed, contrary to Rule 55(c) EPC 1973. However, in requesting that the patent be revoked, it is reasonable to conclude that the intervener (Opponent OIII) wants the patent revoked in its entirety; consequently the Board sees no infringement of Rule 55(c) EPC 1973.

2.3.2 Novelty (Article 100(a) EPC)

According to the Appellant, the allegation of lack of novelty as resulting from a prior sale was not sufficiently substantiated. In the notice of intervention, Opponent OIII submits that proprietor of the disputed patent offered for sale a urinal having all the features of the present invention. This submission is supported by copies of correspondence (E20) between the patent proprietor and Herr E. Eibner, whom Opponent OIII offered as a witness. Particularly as the alleged offer for sale involved the present patent proprietor, the Board agrees with the finding of the Opposition Division that the ground of lack of novelty in respect of the alleged prior use was substantiated sufficiently in the notice of intervention.

2.4 The Board thus concludes that all of the oppositions meet the requirements of Rule 55(c) EPC 1973 and are admissible.

3. Admissibility into the Appeal proceedings of the late-filed Submission concerning Article 100(c) and Article 123(2) EPC

In the opposition proceedings, Opponent OI submitted that the tool member referred to in granted claim 23 was only disclosed in relation to certain embodiments, hence the definition given in claim 23 extends beyond the content of the application as originally filed.

Although no mention of this ground was made in the Respondents' reply to the grounds of appeal, in a letter dated 16 March 2009 the Respondents submitted that the definition of dimension "R" in granted claim 1 and claims 1 of the auxiliary requests is not limited to any particular container dimension, and hence has a broader meaning than that given in the original application. This reasoning is completely different to that presented during the opposition proceedings and was first raised in appeal about 5 weeks before the oral proceedings.

Claim 1 refers to a "main container (14) having a dimension (r) at a height at a bottom end of the baffle (16A, 16B) from the center of a container to a side thereof". It therefore seems that R does relate to a specific dimension. In addition, the disputed definition of R appears in granted claim 1, so it cannot be said that the objection has been raised late because the Appellant filed amended claims.

Given the tardiness of the submission and the fact that it is not prima facie relevant, the Board has exercised its discretion under Article 13(1) of the Rules of Procedure of the Boards of Appeal and decided not to admit the new submission into the appeal proceedings.

4. Priority (Article 87 EPC)

The disputed patent is based on an international application (WO-A-97/15735), which claims priority from US-A-19950548281 (Document E8) filed on 25 October 1995.

The Respondents allege that E8 was not the first filing in the sense of Article 87(1) EPC, since an earlier Korean application, KR 1995-0017972 (Document E12), was filed on 29 June 1995 in respect of the subject-matter of independent claims 1 and 2.

The parties have not disputed that E12 discloses the features of the preamble of claims 1 and 2; the question is whether or not the dimension ratios given in the characterizing parts of these claims are also disclosed in E12.

4.1 Priority of Claim 1

E12 discloses a horizontal odour trap (210), and from Figure 2B it is apparent that the container must have a radius from the center of the container to the side, and a horizontal flow path length for sealant recovery. These dimensions have not been mentioned in E12, but are referred to in priority document E8 and in the contested patent as (x) and (r) respectively. E12 does not explicitly disclose that X is greater than 30% of R, but the Respondents argue that this is implicit.

One argument put forward by the Respondents is that Figures 2A and 2B in E12 correspond to Figures 1A and 2 in the contested patent and in the alleged priority document E8, hence the dimensions must also correspond. However, in assessing the disclosure of E12, the Board agrees with the approach adopted in T 272/92 (point 3.3 of the Reasons), that a document must be considered alone and cannot be interpreted on the basis of subsequently filed documents; this is also in agreement with G 2/98, which states that when assessing priority, the question is what the skilled person, just using common general knowledge, can derive from a patent application (see the Headnote). It is thus necessary to determine if the ratio X greater than 30% R can be derived from E12 alone.

Decision T 204/83 was relied upon by both the Appellant and the Opposition Division, the headnote of which states that "Dimensions obtained merely by measuring a diagrammatic representation in a document do not form part of the disclosure". However, this is not a hard and fast principle, because the real test is whether a skilled person can clearly derive the feature from a diagram, using information presented in the whole document and common general knowledge; again, this is in agreement with the approach taken in G 2/98. Hence, in T 748/91 (cited by the Respondents) which concerned a bearing, it was held that the relative depth of an intermediate profiled layer compared with the depth of the surface layer was derivable from a drawing. The patent in question in T 748/91 was concerned with the thicknesses of the various layers making up the bearing, and the Board in that case considered that in light of the detailed discussion on this topic in the text of the patent, the skilled person would be in a position to derive the relative thickness from the drawing, although it was not expressly mentioned in the description.

This, however, is not the situation in the present case. Although E12 presents the advantage of having a horizontal recovery region (page 6, lines 20 to 25), there is no mention in E12 of the relevance of its ratio to the radius of the container, in fact the radius of the container is not mentioned at all. Therefore, unlike in the case of T 748/91, the skilled person is not alerted to the significance of the relative dimensions.

Given the schematic nature of the drawings in E12 and that there is no discussion of dimensions X and R in the description of E12, the Board concludes that the skilled person is in no position to conclude from the teaching of E12 alone that X must be greater than 30% of R. This feature is disclosed for the first time, in combination with the other features of claim 1, in E8, and hence it is this document that gives rise to the priority right set out in Article 87(1) EPC.

4.2 Priority of Claim 2

Independent claim 2 defines the vertical distance (y) from the overflow level to the bottom of the baffle, and requires that X is greater than Y. Both the Respondents and the Opposition Division considered feature to be disclosed in E12, since in all of the figures showing these dimensions, it is clear that X is greater than Y.

In reaching their conclusion, the Respondents and the Opposition Division have, in effect, applied a "novelty test", concluding that, since E12 discloses X/Y ratios greater than 1, all the features of claim 2 "lack novelty" in light of E12. The "novelty test" is one of several yardsticks applied by the boards over the years to assist them to answer priority questions, but it itself is not the test. G 2/98 establishes that, in the context of priority, the real question to be answered is whether the skilled person, using common general knowledge, can derive the subject-matter directly and unambiguously from the document as a whole.

Values for X/Y are not explicitly mentioned in E12. However, according to the Respondents, the X/Y ratios in Figures 2B, 5B and 7 of E12 can be determined to be roughly 4, 3 and 6 respectively. These values meet the requirement that X/Y > 1, and in this sense render the ratio as "lacking novelty". Despite the schematic nature of the drawings, the Board would not disagree that the figures of E12 generally show X/Y values greater than 1, albeit that the exact values are unknown.

However, a lower limit for X/Y cannot be derived from E12; the lower limit for the ratio could be, for example, 2, 1.5, 0.5 etc, and hence it is not inevitable that X/Y must be greater than 1, or in the words of the claim X greater than Y; for example, X could be greater than 2Y. The range X/Y greater than 1 is therefore not disclosed in E12, but is first disclosed in combination with the other features of claim 2 in E8, hence it is this document that gives rise to the priority right under Article 87(1) EPC.

4.3 The claimed priority right based on document E8 for independent claims 1 and 2 is therefore valid.

5. Novelty

The Opposition Division concluded that the subject-matter of granted claim 2 was not novel in light of the sale of a urinal having all the features of claim 2. Evidence for the sale is provided by a price list dated 05/96 (E15) and a letter dated 4 September 1996 (E20). Both of these dates are before the filing date of the PCT application (25 October 1996), but after the filing of the contested priority document (E8, 25 October 1995). Since the priority right is considered to be valid, the alleged sale does not form part of the state of the art for the purpose of assessing novelty (Articles 54(2) and 89 EPC).

Since the claims of the main request are not prejudiced by this novelty objection, it is not necessary for the Board to consider the Appellant's auxiliary requests,

6. Referral of the Question to the Enlarged Board of Appeal

The Respondents have requested that the questions set out in paragraph VIII above be referred to the Enlarged Board of Appeal. According to Article 112(1) EPC, a board of appeal has the discretion to refer a question to the Enlarged Board of Appeal if it considers that a decision is required in order either to ensure uniform application of the law, or if a point of law of fundamental importance arises.

In the present case, the questions concern the type of features, especially relative dimensions, that can be derived from a drawing. The Board considers that the disclosure of features in the figures referred to in the present case is a question of fact rather than law. In addition, the approach adopted by the Board is consistent with the reasoning given in the cited cases of the boards of appeal.

The Respondents' request for referral of the questions is therefore refused.

7. Remittal to the Opposition Division

The contested decision deals with the issues of priority, and novelty in respect of the alleged sale mentioned in paragraph 5 above. Several issues still have to be decided upon by the Opposition Division, and hence the case must be remitted in order to provide the parties with opportunity to have the issues decided upon by two instances.