T 1706/06 04-03-2008

Procedural matters

1. The question of whether an accompanying person may make oral submissions on technical issues during oral proceedings has been considered by the Enlarged Board of Appeal in decision G 4/95 (OJ EPO 1996, 412). It held that such oral submissions could not be made as a matter of right but only at the discretion of the board. The Enlarged Board set out that a professional representative when requesting permission should inter alia make the request sufficiently in advance that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions. In particular, it stated that a request made shortly before the oral proceedings should, in the absence of exceptional circumstances, be refused unless each opposing party has agreed to the making of the oral submissions requested. In the present case the patent proprietor did not agree.

1.1 At the time that the opponent formulated its request for Mr Creak to be heard the claims on file were those introduced with a letter notified to the opponent in August 2007. It follows that the opponent, which had already filed an auxiliary request for oral proceedings in its statement of grounds of appeal, waited some months before deciding to request that Mr Creak be heard and then filed that request only one month before the oral proceedings. Under these circumstances the filing of the request for Mr Creak to be heard must be considered as having been made 'shortly' before the oral proceedings. No exceptional circumstances existed which would have justified the board departing from the guidance given in decision G 4/95 (supra) and, moreover, on the basis of the information given by the opponent it appeared that any statements made by Mr Creak would not have advanced the case.

1.2 The board at the oral proceedings therefore exercised its discretion to refuse the request for Mr Creak to be heard.

2. When the board summoned the parties to oral proceedings it indicated that any amended requests should be filed at least one month before the set date. The patent proprietor complied with this by filing amended requests by fax on the final day (4 February 2008) before that period. A copy sent by post to the opponent was received by its representative three days later. Although the patent proprietor's requests ran to a total of nineteen sets of claims, eight even-numbered requests were for a single claim 1 identical to that of the respective preceding odd-numbered request. Moreover, some of the claims 1 essentially corresponded to those previously filed but amended as explained by the patent proprietor in order to overcome objections raised by the board when summoning the parties to oral proceedings. Whilst some amendments in the dependent claims of some requests were made without being clearly identified the opponent's representative admitted at the oral proceedings that it nevertheless had been able to fully prepare for the requests in the time available. Essentially that same amount of time was available to the board for its preparation and was found to be sufficient. Whilst a combination of factors may have resulted in a somewhat less than favourable situation, the board considers that the opponent was not unduly burdened thereby. The board therefore decided at the beginning of the oral proceedings not to disregard the patent proprietor's requests filed on 4 February 2008. Claim 1 of the proprietors final request corresponds in essence to claim 1 of the seventh auxiliary request filed on that date.

Substantive matters

3. The patent relates to an emergency exit path lighting system in a passenger aircraft. The system comprises guide members placed on the floor to visibly mark the path to an emergency exit when, for instance, the upper layer of the cabin is filed with smoke. Such systems conventionally employ electrical lighting powered by batteries but suffer disadvantages such as high maintenance costs and sensitivity to structural integrity of the aircraft. The patent sets out to overcome these disadvantages by providing photoluminescent guide means.

Amendments

4. Claim 1 differs from claim 1 as granted essentially by the addition of the features in the characterising portion. These were disclosed in the application as originally filed in the second full paragraph on page 3, the third paragraph on page 6 and in the description of the embodiments of figure 1, bridging pages 15, 16 and of figures 2, 3, on page 19.

4.1 In the embodiment of figure 1 the base member includes a horizontal base section 18 and two upstanding flanges which form a channel closed by a releasably fitted support formation 23. The embodiment of figures 2, 3 differs in that the support formation 23' is integral with the upstanding flanges, thereby forming a box-section. The opponent takes the view that the wording "base member has a support formation" in present claim 1 excludes the embodiment of figure 1. As a result, it considers present claim 1 to be an impermissible generalisation of the disclosure of the embodiment of figure 2, 3 in as far as it does not specify the feature of a box-section. However, the specification in present claim 1 that when installed in the aircraft "the base member has a support formation" does not exclude that the support formation be a separate piece which is releasably attachable to the base member. Indeed, the second sentence on page 19 as originally filed states when comparing the embodiment of figures 2, 3 with that of figure 1: "instead of having a separate support formation ...", thereby explicitly specifying that in the embodiment of figure 1 the base member 'has' a support formation.

5. The opponent argues that according to the original disclosure the photoluminescent guide member was not "sandwiched between the base member and the cover member" as in present claim 1 but sandwiched between the support formation and the cover member. However, the present wording of the claim was explicitly disclosed in the centre of page 3 of the application as originally filed.

6. Present claims 2 to 9 essentially differ from claims 4 to 10 and 12 as granted only in as far as they were amended for consistency with the amendments to claim 1. Similarly, the description has been amended only for consistency with present claim 1.

7. On the basis of the foregoing the board concludes that the amendments made by the patent proprietor do not offend the provision of Article 123(2) EPC.

8. The description was amended for consistency with the claims according to the patent proprietor's sole request. The board is satisfied that no objections arise from the amended description and none was brought forward by the opponent.

State of the art

9. IN13si is an undated publicity brochure produced by a company PJP Trading Limited and is almost exclusively concerned with applications of a photoluminescent material called Permalight. The final page proposes the use of Permalight material each side of an aisle for escape guidance in aircraft. The status of IN13si as state of the art is contested by the patent proprietor.

9.1 Although IN13si carries no printing date there are several indications that it was at least intended for publication late in 1989:

- It carries a reference to a "new" publication "INTRAD Permalight". The associated illustration is visibly the same as SE1 which carries a publication date of September 1989;

- In SE2 Mr Krokeide stated in 2001 that he was in possession of IN13si which was received at an exhibition in 1989 where a company INTRAD Permalight had a booth. SE8 shows that PJP Trading, whose name is on IN13si, exhibited at "FIREX South '89" which took place from 10-12 October 1989;

- IN13si carries a reference to a then planned fund-raising campaign ending on "17 November" to coincide with a television transmission of the Children in Need Appeal. In SE5 the BBC has confirmed that in 1989 a Children in Need Appeal programme was transmitted on 17 November;

- In SE3 Mr Richard Clark states that he had been employed at PJP plc and formerly PJP Trading, which is stated in IN13si to be the publisher of that document, since 1985 and that IN13si had been prepared and sent to customers as a support medium for the publication SE1. He further states that IN13si was made available to customers prior to availability of SE1 in September 1989;

- In SE4 Mr Richard Clark also states in response to questions from the USPTO that IN13si was published in Autumn 1989;

- SE6 is a letter from Mr Richard Clark having essentially the same content as SE3 but having the reference "Jalite Reply re. Intrad News (Wrd)" and so apparently addressed to a third party;

- SE7 is a letter dated 18 July 1989 on "INTRAD"- headed paper from a Mr Peter Clark to Permalight GmbH in preparation for a meeting. One discussion point is listed as IN13si and states the publication date to be September 1989.

9.2 On the basis of the above it is convincingly established that if IN13si were made available to the public it would have been in late 1989 and therefore so far in advance of the earlier priority date of the present patent that an exact date need not be determined. The critical matter is whether IN13si was, in fact, published. In the case of a publicity brochure there is an implicit presumption of availability to the public without any obligation of confidentiality, cf.

T 743/89, reasons, 3rd paragraph (not published in OJ EPO). Moreover, in the present case there are the statements by Mr Krokeide (SE2) that he was in possession of a copy of IN13si and Mr Richard Clark (SE3, SE4, SE6) that IN13si was distributed to the public. The patent proprietor argues that according to case law of the boards of appeal mere statements are insufficient as evidence. However, this is not so since the principle of free evaluation of evidence applies, cf. T 970/93, reasons 2.8 (not published in OJ EPO).

9.3 The patent proprietor argues that there are inconsistencies in the evidence presented by the opponent and that, as a result, the opponent has not proved its case to the necessary level, namely beyond all reasonable doubt ('up to the hilt'). That standard of proof has been held as being appropriate when only one party has access to information and the other party is reduced to merely pointing out inconsistencies or gaps in the chain of evidence, cf. T 472/92 (OJ EPO 1998, 161). That is not so in the present case since all of the evidence supplied by the opponent derives from third parties. Nevertheless, the patent proprietor relies solely on attempting to show inconsistencies and has neither offered declarations by other persons nor sought to have either Mr Krokeide or Mr Richard Clark heard as a witness. Moreover, the patent proprietor failed to convince the board as regards inconsistencies. In particular:

- Even if IN13si were published after SE1 it would not have rendered the former redundant because it was used to promote interest in the products which evidently were contained in SE1 by giving information about their possible applications; the suggestion of the patent proprietor that PJP Trading would have simply discarded as no longer relevant the copies of IN13si which had been printed (the printing as such is not disputed) is in contradiction with both the content of the document and its intended purpose as stated by Mr Richard Clark);

- The patent proprietor argues that the statements in SE2 and SE3 are incomplete in as far as they do not contain some information which may be of relevance in determining when IN13si was published. However, as already set out above, SE2 is more important as regards IN13si being in the possession of a third party than when this occurred. Similarly, SE3, which is supported by SE4 and SE6, is primarily of value in establishing whether or not IN13si was made available to the public;

- The fact that Mr Krokeide mistakenly attributed the document IN13si to a non-existent company "INTRAD Permalight", whereas this is in fact the name of the product featuring in the document, cannot discredit the general thrust of this statement that the document was obtained at an exhibition in 1989;

- As regards the absence from the file of specific recipients of IN13si, the board notes that this document is not a saleable product in itself but is merely for information. Whilst it would be expected that PJP Trading would have kept a record of addressees to which IN13si was sent, Mr Richard Clark stated in SE4 in 2003 that the company was no longer active in the market of photoluminescent materials. Under these circumstances it would be understandable that records of addressees of IN13si, which related almost exclusively to those products, would be no longer available.

9.4 It is to be expected that over the course of the time inaccuracies and lacunae can creep into the recollections of events that happened several years before. Any such discrepancies in the present case are however not of a nature which throw the veracity of the statements of Mr Krokeide and Mr Richard Clark significantly into doubt. On the basis of the whole of the evidence before it, the board is convinced that IN13si was indeed made available to the public in 1989 and thus belongs to the state of the art.

Disclosure of IN13si

10. IN13si on the penultimate page lists various "standard" Permalight photoluminescent material products. These include tapes, floor coverings and stair nosing. On the final page various applications of Permalight photoluminescent material are suggested. Some applications relate to buildings but it is also suggested that the material may find use for providing directional guidance and a sense of orientation in an aircraft. In particular, it proposes that Permalight be used to mark-out aisles and applied to large areas to provide a target for escaping people if placed at the end of an aisle adjacent to an exit. An illustration shows a path along the aisle of an aircraft marked by two lines of photoluminescent material on the floor. At the end of the aisle there is shown a large rectangular area on the wall and the two lines deviate sideways in front of the seats.

10.1 The patent proprietor does not contest that all features of the preamble of present claim 1 can be seen in IN13si. It does argue, however, that for the skilled person at the effective date of the present patent IN13si was not a genuine disclosure of those features because it would have been regarded as speculative and non-enabling. In particular, it argues that IN13si does not disclose a physical form of Permalight appropriate for use along the aisles and that its light emitting properties were not suitable for use in aircraft.

10.1.1 IN13si discloses that the product Permalight was available as inter alia tapes for marking escape routes on floors and as flexible vinyl sheet having markings applied to it. In the board's view both of these would be suitable for use in an aircraft. The patent proprietor argues that the vinyl sheet would be unsuitable because of flammability and, moreover, would be rejected since aircraft cabins are carpeted. As regards flammability, however, the board notes that the photoluminescent strip according to the present patent may be vinyl (patent specification page 5, lines 54 to 57). Furthermore, even if the skilled person would reject the use of vinyl sheeting for covering the aircraft floor, it would be evident to him that the width of the sheet need be no greater than the strip of photoluminescent material, thereby effectively creating a vinyl track for application to an existing carpet.

10.1.2 As regards the light emitting properties, the patent proprietor argues that emergency escape routes in buildings typically are illuminated at all times when occupied so that the light emitting properties of photoluminescent material need be effective only for the duration of an evacuation. Aircraft on long haul flights, on the other hand, typically operate for several hours with the cabin in darkness during which time the photoluminescent material would discharge. The patent proprietor deduces that the skilled person would have recognised the suggestion in IN13si to use photoluminescent material in aircraft as being impractical. The board disagrees because neither present claim 1 nor the disclosure of IN13si specifies applicability to all aircraft and small aircraft having a limited range would not normally operate with the cabin in darkness.

10.1.3 The board also considers that the relevant part of the disclosure of IN13si is not speculative in as far as it not only suggests the photoluminescent material to be used, namely Permalight, but also proposes both a suitable physical form and a practical layout. Moreover, the large area shown on a wall and described as a "target" is, contrary to the patent proprietor's assertion, not necessarily the door to the cockpit but may be simply a bulkhead. The content of other parts of IN13si relates to other applications and is not relevant to the present case.

10.2 On the basis of the foregoing the board finds that IN13si does constitute an enabling disclosure.

Inventive step

11. IN13si represents the closest state of the art because it already addresses the problem of providing emergency lighting in an aircraft. It discloses the features contained in the preamble of claim 1. However, it does not disclose details of how an existing aircraft having an electrical emergency lighting system might be modified and the skilled person wishing to implement the proposal of IN13si in an existing aircraft would face the problem of providing a practical embodiment. The features in the characterising portion of present claim 1 relating to the form of the track provide a solution to that problem. The remaining characterising features relating to the dual-layer structure of the photoluminescent guide member improve its performance, cf. paragraph [0030] of the patent specification.

11.1 The skilled person when applying the teaching of IN13si to new aircraft would search for the simplest, lightest and lowest cost solution and thereby apply photoluminescent material in a suitable form directly to the floor. The same solution would be applicable to existing aircraft but would involve removal of the conventional ("Grimes") tracks. A lower cost alternative which would offer the desired greater reliability but at the expense of higher weight would be to remove the redundant wiring, lamps and cable covers from the tracks and simply apply the photoluminescent guide member to the outer surface of the track outer cover.

11.2 The Grimes track comprises a base, a cable cover, which together with the base forms a closed channel to contain the wiring, and a clear outer cover (see D9). The idea put forward by the opponent that the skilled person when opting to retain the tracks in existing aircraft would replace the cable covers and then position the photoluminescent material on them does not follow in a logical fashion from the state of the art even in combination with the knowledge of the skilled person. In particular, the combination of IN13si and D9 contains no teaching to position the photoluminescent material beneath a cover. Indeed, in view of the additional characterising feature in claim 1 of a plurality of layers in order to improve the photoluminescent performance of the guide member it would not be immediately evident to place the guide member beneath the track outer cover which, although clear, nevertheless would reduce the effective light emission. Moreover, it cannot be derived from the state of the art that the cable covers in the Grimes track serve any purpose other than hiding wiring because they are present not throughout the length of the tracks but only between the lamps. After detaching the cable covers in order to remove the wiring the skilled person therefore would not be motivated to replace them. Additionally, according to D9 the existing installations do not have two tracks marking the emergency path but a single track on opposing sides at each end so that the subject-matter of claim 1 anyway could not result from the simple application of guide members to existing tracks.

11.3 It follows from the above considerations regarding modifying the Grimes track that even if, as argued by the opponent, D9 were taken as the closest state of the art, the skilled person still would not arrive at the subject-matter of claim 1 in an obvious manner.

11.4 The board concludes from the foregoing that the subject-matter of present claim 1 involves an inventive step. Since claims 2 to 9 contain all features of claim 1 this conclusion applies to those claims also.