T 1488/08 14-10-2011

1. The appeal is admissible.

2. Admissibility of the grounds of added subject-matter and lack of novelty

2.1 Article 12(2) RPBA stipulates that "The statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on".

This provision provides a cut-off point after which any further submission is ipso facto late and subjected to the discretionary power of the Board. The intended overall effect of this Article is to require the parties to present a complete case at the outset of the proceedings in order to provide the Board with an appeal file containing comprehensive submissions from each party and to prevent procedural tactical abuses.

In the particular circumstance of the present case, the statement of grounds of appeal, after a short introductory paragraph generally referring to earlier submissions made in the first-instance proceedings, contained under the main heading III "Stellungnahme zu der Entscheidung bezüglich der Einspruchsabteilung" only a substantiation in support of lack of inventive step. Specific objections under the grounds of added subject-matter and lack of novelty were not raised.

It is only with the letter dated 11 August 2009 after the reply of the Respondents that the Appellants, referring to the introductory paragraph of the grounds of appeal, invoked the grounds of extension of subject-matter and lack of novelty.

It is established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. On the sole basis of the statement of grounds of appeal, the Board had no reason to examine the grounds of inadmissible extension of subject-matter and lack of novelty without making investigations of its own.

The new objections are therefore late-filed and their admissibility is a matter of discretion by the Board pursuant to Article 13(1) RPBA.

2.2 Article 13(1) RPBA states that "Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy".

In the present case, the Appellants have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the Respondents in their reply). The attempt of the Appellants to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called "salami" tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty. For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The objection of added subject-matter addressed in the letter dated 11 August 2009 was concerned with the feature of claim 1 "when the seat back is moved to the reclined position, a top edge of the seat back is caused to be moved in a rearward direction" (feature 1.3.1.2 of the features analysis filed with that letter). The submission of the Appellants in this respect focussed on the Opposition Division's assertion in the decision under appeal , according to which the application as originally filed discloses that "the backseat [i.e. seat back] describes the trajectory of an arch". However, claim 1 is not concerned with the trajectory of the seat back and therefore the Appellants' objection appears to be misconceived. This also applies to the further objection under Article 100(c) EPC 1973 raised with the letter dated 11 August 2009, which objection was not raised during opposition proceedings, contesting the change of the claimed subject-matter from "a privacy and support apparatus" to "an airplane". Indeed an airplane is undoubtedly disclosed in the application as filed. As regards the objection of lack of novelty over D2, it was based on an interpretation of claim 1 justified by the alleged added subject-matter (i.e. due to the added subject-matter, claim 1 would cover objects which were not disclosed in the application as filed, and such objects were known from D2). The objection of added subject-matter being unfounded, on a prima facie basis, the same applies to the objection of lack of novelty.

The Board therefore exercised its discretion not to admit the late filed grounds of added subject-matter and lack of novelty for reasons of procedural economy.

3. Inventive step

3.1 As mentioned in paragraph [0007] of the European Patent Specification, claim 1 as granted has been delimited with respect to document D3. This document discloses an airplane in accordance with the preamble of claim 1 (see for example figures 14-15) with a floor 58 having an aisle and at least one seat 2 located adjacent to the aisle, the seat comprising a seat cushion 43 and a seat back 42 that is moveable between an upright position and a reclined position, and a with a privacy and support apparatus in the form of a fixed seat housing 41 which affords privacy for a passenger seating or reclining in the seat and provides support for other passengers walking in the aisles.

3.2 The features of the characterising part of the claim have to be understood within the context of the invention, taking into due account the objective contribution that the invention makes over the prior art in accordance with the patent specification. In the present case, the features of the characterising part can only be read that the pedestal is a piece which is separated from the seat and permanently fastened to the floor of the airplane at a location behind the seat, the latter being of a conventional construction with the seat back moving in a rearward direction when adjusted in the reclined position. In combination with the features of the preamble of the claim they solve the problem of providing at constant regular intervals a reliable support for a passenger walking about the aisle of the airplane (see the sixty inches interval required by the regulations of the FAA as mentioned in paragraphs [0003] of the patent specification). At the same time the side wall defined by claim 1 must provide privacy for the passenger in the seat. This is clearly obtained by a rearward extension of the fixed side wall which is of such a lateral extent as to provide privacy for the passenger when he is reclining, with the seat back being in the rearward position, as well as when he is sitting, with the seat back adjusted in the upright position.

3.3 In their contention that the subject-matter of the granted claim lacked an inventive step the Appellants considered document D2 as the nearest prior art. This was contested by the Respondents.

The boards of appeal of the EPO have developed criteria for identifying the closest prior art. Indeed, the determination of the closest prior art is an objective and not a subjective exercise. In selecting the closest prior art, the first consideration is that it must be directed to the same purpose or effect as the invention (T 606/89). In the present case, document D2 exclusively deals with the problem of privacy (column 1, lines 10-15) and there is no mention in D2 that the partition wall 42, that the Appellants equate with the privacy and support apparatus of the claim, could have any support function. In the same way as a movable and reclining seat back is unable to offer adequate support for a passenger walking about the cabin (see column 1, lines 29-34 of the patent specification), the movable partition wall 42 of D2 is, a priori and because of its ability to move, not adapted for providing support for a passenger moving in the aisle. As the partition of D2 is movable, it cannot act as a reliable support in accordance with the FAA regulations mentioned in paragraph [0003] of the patent specification. This is clearly exemplified by the spacing between the partitions in the configuration shown in figure 4 of D2, which clearly does not fulfil the requirements referring to the regular intervals (sixty inches).

The Board is therefore of the opinion that D2 is not a prior art the person skilled in the art would contemplate as suitable when seeking an apparatus for providing privacy and support for passengers.

3.4 Moreover, as concerns the problem of providing privacy, it can be noted that the claimed solution differs from that of document D2 in that rather than being obtained by a movable side wall as in D2, privacy in the reclined position is obtained by the rearward extension of a permanently fixed side wall.

3.5 In a first line of argumentation in support of their contention that the subject-matter of the granted claim lacked an inventive step the Appellants started from the apparatus shown in figure 2 of D2 and argued that the passage of the description in column 3, lines 19-25 of D2 would convey the skilled person to fasten the trolley 30 with its vertical partition 42 to the floor.

This argumentation does not convince the Board. The passage mentioned by the Appellants suggests that the partition may be secured in the rearward position during the flight. In the same sentence, however, D2 states that the partition should be moved to the forward position for take-off and landing. This is confirmed by the passage of column 3, lines 11-16 of D2 according to which the partition wall requires to be brought to the forward position for take-off and landing. Safety considerations would suggest that the partition should be secured not only in the rearward and the forward position but also in any intermediate position, since airlines cannot afford unexpected movements of the partition during the flight. Since the answer to the question how the partition could be fastened is to be given in this context, the choice of the floor to secure the trolley in multiple positions does not only appear costly and complex but even void of technical sense. In fact, this would require the provision of a dedicated mechanism, partly in the floor and partly in the partition, for fastening the partition to the floor, when much simpler solutions not requiring any modification of the floor are immediately evident. The skilled person would rather consider that any securing could take place within the channel 24 under the base member 12 of the passenger seat 10 (see figures 1-2 of D2). The skilled person may also contemplate a motorised displacement of the trolley by a self-locking driving mechanism, the trolley being held captive within the seat.

3.6 In an alternative line of argumentation which starts from D2, the Appellants contended that the skilled person would realise that he could combine the partition wall 42 of D2 with a conventional seat and simply secure the partition wall to the floor in its rearward position, thus dispensing with any movement in the forward position.

In this argumentation the Appellants formulated the problem to be solved in terms of being able to use the partition of D2 also for conventional passenger seats. This formulation appears to be inspired by hindsight because it directly runs against the central teaching of D2 which is precisely to mount the partition wall for linear movement between the forward and the rearward position (see claim 1 of D2). Furthermore, under the assumption that the trolley 30 of D2 would be fastened to the floor in its rearward position, it can be noted that privacy would not be provided by the partition 42 for a passenger sitting in the upright position of the seat and it is doubtful whether such an arrangement would meet the above-mentioned FAA regulations.

3.7 The Appellants presented a last line of argumentation which starts from D4 as prior art. The evident weakness of this argumentation is that it relies on the assumption that the bucket 36 (see figures 3-4 and column 7, lines 24 of D4) is a pedestal within the meaning of the claims. The Board shares the opinion of the Opposition Division and of the Respondents that the bucket 36 is a part of the seat and therefore cannot be a pedestal which is fastened to the floor of the airplane at a location behind the seat, a part which is clearly separate from the seat. Thus, also this reasoning of the Appellants must fail.

3.8 The Board concludes from the above considerations that the subject-matter of claim 1 as granted involves an inventive step (Article 56 EPC).