T 2438/13 23-06-2017

1. Late-filed documents

1.1 The opposition division, in the exercise of their discretion under Article 114(2) EPC, did not admit documents E17 and E18 into the opposition proceedings.

1.1.1 According to established case law, a board of appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

1.1.2 E17 represents evidence of an alleged prior use, which was filed supplementarily by the opponent after the opposition division had expressed a negative preliminary opinion in its communication annexed to the summons of oral proceedings as regards the alleged prior uses filed in the notice of opposition. However, receiving a preliminary opinion does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant. Therefore, E17 must be considered late-filed, which was not contested by the appellant. According to the consistent case law of the boards of appeal, late-filed facts, evidence and related arguments should only exceptionally be admitted into the proceedings if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the patent.

According to the contested decision (see point 2 of the Reasons), the original document E17 was provided by the opponent during the oral proceedings, in reaction to an objection to the poor quality of the photocopies of E17 filed on 25 September 2013 (one month prior to the date of oral proceedings), which did not show the entire ground contact shapes. Even taking into account this original document, the opposition division found that the pressure and load conditions used to make the ground contact shapes in E17 were different from the ones claimed in claims 1 and 2 ("not at 100% load and pressure"). This was acknowledged in the appellant's grounds of appeal (see page 17: the test conditions in E17 deviated by 4% from the maximum load conditions specified in E17 for a dual mounting configuration). For lack of any evidence that at these conditions the ground contact shapes of E17 would not change, E17 was disregarded by the opposition division.

The board cannot follow the appellant's allegation that the division has exercised its discretion in an unreasonable way when denying the relevance of E17. The argument that the contact patterns shown in E17 might be closer to the claimed ones than those shown in E4 was not supported by further evidence in opposition proceedings as regards e.g. the influence of the maximum load conditions as set out above.

Therefore, the board finds that the opposition division took into consideration the right criterion of prima facie relevance and exercised its discretion under Article 114(2) EPC in the right way in accordance with the right principle when not admitting late-filed document E17.

1.1.3 The opposition division disregarded late-filed document E18 for not disclosing any parameter of the ground contact shape. By judging that E18 did not disclose the features specifying the claimed invention according to claim 1, the opposition division again applied the right criterion of prima facie relevance. Therefore, the board sees no reason why the decision not to admit E18 into the proceedings should be overturned.

The appellant's asserted that E18 showed nothing else but the knowledge of the skilled person regarding the post-treatment in the evaluation of real tire footprints and could therefore be introduced at any stage of the proceedings. However, this has to be refuted, because E18 is a patent specification and as such is not immediately recognisable as representative of common general knowledge (see Case Law of the Boards of Appeal, 8th edition 2016, I.C.2, 2.8.2)).

1.2 Document E19, filed for the first time in appeal proceedings, is identical to E17 except for showing a better quality. For the reasons already given with regard to E17, the board sees no reason for admitting document E19 either.

1.3 The further evidence E20 to E23 was provided for the first time in appeal proceedings, allegedly in response to the contested decision to support the pertinence of document E19. However, the tire tested in E20 to E23 is of a different brand (BRIDGESTONE) than the ones on which the appellant's arguments with regard to E17/19 (MICHELIN, PIRELLI) were based, so the board cannot see that these tests are relevant to what might be deduced from E17/E19. What is more, such evidence could and should have been provided already in first-instance proceedings, since the issue of the influence of deviations from a maximal tire load on the claimed ratios (A-B)/L and (C-B)/L was decisive in support of the alleged prior use E17/E19 - see above reasoning of the opposition division as regards the relevance of E17/E19 - when arguing on lack of novelty.

Accordingly, in application of its discretionary power pursuant to Article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA, OJ EPO 2007, 536) to hold inadmissible evidence which could have been presented in first-instance proceedings, the board decided not to admit documents E20 to E23 into the appeal proceedings.

2. Novelty of claim 1 as granted (Article 54(3) EPC)

2.1 Document E5 constitutes state of the art under Article 54(3) EPC and is prejudicial to the novelty of the subject-matter of claim 1 as granted.

2.2 E5 shows (Figure 1) a pneumatic tire provided with a tread (1) including a plurality of ribs (3) separated by at least two circumferential direction grooves (2A, 2B) extending in a circumferential direction according to the preamble of claim 1, which was not contested.

Moreover, Figure 2 in E5 illustrates schematically a ground contact shape of the tread surface of the invention according to E5 having a gradually decreasing circumferential direction length (A; corresponding to L in granted claim 1) from the tire width direction center (CL) to the portion corresponding towards the tire width direction outermost circumferential groove (2A), followed by the ground contact shape having a gradually increasing circumferential direction length towards the tire width direction outside. Such form of the tire footprint is also explicitly mentioned in the example described in E5 (paragraph [0025] and Table 1: C/B<1 for "Present Invention Tires 2 to 4" defines a tapered shape of the imprint of the outermost rib as claimed; paragraph [0026]: D

2.3 Therefore, novelty of the subject-matter of granted claim 1 depends solely on whether the claimed ranges for the ratios (A-B)/L and (C-B/)L are novel over E5.

In this respect, the following correspondence of the dimensions according to claim 1 and E5 has to be observed:

L (claim 1) corresponds to A (in E5)

A (claim 1) corresponds to B (in E5)

Moreover, claim 1 requires dimensions B respectively C to be measured at an offset (distance of 0.076Ws respectively 0.112W2 in the tire width direction to the outside respectively inside, i.e. amounting to about 10% of the width Ws or W2 of the corresponding rib) in the tire width direction to the outside respectively inside from a border line of the corresponding portion of the respective rib in the tire footprint, whereas similar dimensions C and D in E5 are taken at the edge of the respective rib imprint. Therefore, due to the tapered shape of the respective rib imprints in E5 (see above), the following correspondence applies:

B' (

C' (

Note: In the following, the corresponding characters according to claim 1 will be used when referring to E5.

It is noted that for a rib imprint having a tapered shape (viewed in the tire width direction) linear relationships apply. Therefore, when measuring a longitudinal length of a rib imprint at a distance of e.g. 10% of the rib's width viewed from the shorter border line in the rib's imprint, the measured length will be increased by a value which is 10% of the difference between the longitudinal lengths of the two longitudinal border lines in the rib's imprint.

2.4 The board agrees with the respondent that the drawings in E5 cannot be used to measure any of the dimensions as specified in granted claim 1. However, as argued by the appellant, E5 also shows numerical values of ratios A/L and B'/A (< B/A) for examples of inventive tires (Table 1, paragraph [0025] and [0026]).

Moreover, it is observed that the two ratios A/L and B'/A given in E5 can be combined to form a term corresponding to the first relationship specified in claim 1 for a difference between relative length dimensions A/L and B'/L, namely:

(A-B')/L = A/L*(1-B'/A)

The two numerical values disclosed in E5 can therefore be combined to describe a single quantity as specified in claim 1.

Taking e.g. the "Present Invention Tire 2" from Table 1 in E5 (A/L=0.90, B'/A=0.95), the appellant showed that the following value resulted for (A-B')/L:

(A-B')/L = 0.045

Moreover, it argued that, taking into account the claimed offset, a smaller value resulted for the term (A-B)/L specified in claim 1, based on the ground contact shape disclosed in E5. In fact, taking into account that claim 1 requires a length B to be measured at a distance of 0.076Ws (i.e. 7.6% of the rib's width) from the respective border line (B') of the respective rib's imprint (having a length B > B'), the value of A-B/L will be smaller by 7.6% (i.e. derivable by using a factor 1-0.076=0.924) compared to (A-B')/L as calculated from the values disclosed in E5, due to the tapered shape of the rib's imprint as noted above, i.e. still provides a value falling in the claimed range.

Expressed mathematically, the first relationship specified in claim 1 equates to the following when taking the length dimensions as specified in E5:

(A-B)/L = 0.924*(A-B')/L = 0.924*A/L*(1-B'/A)

Taking e.g. "Present Invention Tire 2" from Table 1 in E5, the following value is obtained:

(A-B)/L = 0.924*0.90*(1-0.95) =0.4158

This clearly shows that the "Present Invention Tire 2" known from E5 shows a value for the first claimed ratio (A-B)/L which falls within the claimed range, so the first range specified in claim 1 as granted for the ratio (A-B)/L cannot establish novelty over E5.

2.5 It is noted that novelty of a pneumatic tire which is specified - as in the present case - by a range of values for a ratio of dimensions must be denied when a pneumatic tire known in the prior art shows a value for the same ratio of dimensions which falls within the claimed range, irrespective of how this ratio is presented via mathematic formula. In this respect, the board finds that neither an arbitrary change in alphabetic characters describing the same dimension (e.g. L in claim 1, corresponding to A in E5), nor a dimension arbitrarily measured differently in a claim (B in claim 1 measured at a distance from the border line, B'

The board even finds that the present case can be compared to so-called product-by-process claims. Claim 1 tries to specify a pneumatic tire by features relating to the evaluation of dimensions in the tire's footprint, i.e. defines a product by specifying an evaluation method with regard to the tire's footprint and deriving a characteristic value therefrom. According to the established jurisprudence for product-by-process claims, process features not previously described can only establish novelty of the claimed product if they cause it to have different properties from the products previously described. As demonstrated above, the product known from E5 shows properties, i.e. values for the claimed ratio (A-B)/L as claimed.

2.6 The main argument of the respondent with regard to novelty was that E5 did not disclose the parameters B and C as claimed, in particular no measurement at an offset from the edge of a rib's imprint. As shown above, it is not the evaluation method (i.e. measuring at an offset from the border line or edge of a rib's imprint instead of taking the measurement at the very edge) for deriving a value of a geometrical relationship of dimensions in a tire footprint which can establish novelty of the claimed product, but whether the claimed value or range of values is new over the prior art.

As admitted by the appellant, E5 did not show numerical values for length dimensions B and C. However, the board follows the appellant in that E5 implicitly discloses upper and lower limit values for the claimed relationship (C-B)/L on the basis of relationships between dimensions given in E5 (see page 4), without deriving values from the schematic drawings. In particular, taking into account offsets from the edge of the imprints of the respective ribs, E5 discloses a range for (C-B)/L which is broader than the range specified in claim 1, but which does not satisfy the criteria for novelty of a selection from a broader range, as demonstrated in the following.

2.6.1 E5 discloses (page 4) relationships which also apply to the example tires of Table 1, reading in the language of claim 1 (dimension E is only specified in E5):

C'>B'; C'

Dimension E, which is not specified in claim 1, describes the length of the longer longitudinal border line of the second outer rib and the relation C'

2.6.2 Based on the above relationships, C' can assume values between B' and L, which immediately provides lower and upper limit values for the ratio(C'-B')/L, by setting C'=B' (lower limit) and C'=L (upper limit):

0 < (C'-B')/L < 1-B'/L

Taking e.g. again "Present Invention Tire 2" from Table 1 in E5 (A/L=0.90, B'/A=0.95), the value of B'/L is implicitly given (A=0.90*L => B'/L=0.95*0.90=0.855) so that the following range results, as argued by the appellant:

0 < (C'-B')/L < 1-0.855=0.145

2.6.3 The board also agrees with the appellant that taking into account the claimed measurement specification ("offsets"), an even smaller range results for the second relationship (C-B)/L as specified in claim 1, i.e. the following inequality still applies:

0 < (C-B)/L < 0.145

In particular, when measuring the lengths at an offset from the longitudinal edge of the rib's imprint, higher values of C>C' and B>B' result due to the tapered shape of the rib imprint. Therefore, C=L and B=B' still provides an upper limit value for (C-B)/L as shown above. Moreover, C'=B' can still be assumed to estimate a lower limit value for (C-B)/L. [This ratio is still positive for the following reason: The length difference of the longitudinal border lines in the imprint of the respective ribs is larger for the second rib from the outside (see third inequality in E5: E>A, i.e. E-C'> A-B'), for which also a higher offset value (0.112W2 to determine C; 0.076Ws to determine B) is defined, i.e. the relative increase of C/L versus C'/L is higher than for B/L versus B'/L.]

Note: In assessing novelty, it is not necessary to provide more precise upper and lower limit values, as derivable from a value for B/L>B'/L, based on the given offset and the tapered form of the rib's imprint.

2.6.4 E5 therefore shows for the example tire 2 a range for ratio (C-B)/L smaller than 0 to 0.145 which is only slightly larger than the range claimed (0.02 to 0.1).

According to the established case law of the boards of appeal, a definition of a (sub-)range can render the subject-matter of a claim novel only if it meets the three criteria defined in the decisions T198/84 and T279/89, namely that:(a) the selected sub-range should be narrow,(b) the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples, and(c) the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).|

In the present case, already the first two criteria are not fulfilled. Therefore, also the second range defined in claim 1 for the second relationship (C-B)/L cannot establish novelty over E5.

2.7 The board therefore comes to the conclusion that the subject-matter of claim 1 as granted is not new over the "Present Invention Tire 2" disclosed in E5.

3. First auxiliary request

3.1 Admissibility

3.1.1 The board sees no reason why the first auxiliary request should not be admitted into the proceedings. It may be seen as a reaction to the communication of the board of 17 May 2017 and the preliminary opinion expressed therein with regard to novelty of claim 1 over E5. Moreover, the first auxiliary request was derived from the granted claims by merely deleting the first independent claim, and the appellant had already alleged lack of inventive step of the second independent claim 2 as granted in its grounds of appeal. Therefore, the fact that this request was filed only four days prior to the date of oral proceedings did not confront the appellant with new subject-matter he could not be expected to deal with during the oral proceedings.

3.1.2 Since the first auxiliary request represents a subset of granted claims together with a description which was adapted accordingly, the requirements of Article 84 and 123(2) EPC are fulfilled, which was not contested.

3.2 Inventive step (Article 56 EPC)

3.2.1 The subject-matter of claim 1 involves an inventive step over the cited prior art (Article 56 EPC). Two lines of argument were presented by the appellant, either starting from document E1 or from document E4 as the closest prior art.

3.2.2 Starting from E1 as the closest prior art, which shows (see Figure 1) the features according to the preamble of claim 1 and addresses the problem of uneven tire wear, the skilled person might consult the teaching of E4 which also deals with the problem of uneven wear of pneumatic tires. However, irrespective of whether ranges of ratios according to the characterising portion of claim 1 are known from E4 (the appellant argued a non-novel selection of ranges from two lists), the appellant admits that E4 shows a step height of the outer rib in a direction exterior to a virtual line that was an extension of the second outer rib (see Figure 2: second running surface Y2 not located to the inside in the tire diameter direction of a virtual extension line of the first running surface Y1).

The board finds that E1 and E4 show different solutions to the same problem which are structurally incompatible with each other. In E4, the tread outline shape is established by providing a belt layer 7 extending below the second running surface and separated by a rubber layer of increasing thickness from the tire equator axially outward from the carcass cords, so that the step height of the outer rib results in an exterior direction. E1 also shows a belt layer 12 at least partially extending below the second running surface, but the tire tread outline shape results from a step height between the rubber of the first running surface and the second running surface. However, E4 does not show a step height da between the first and the second running surfaces, neither in Figure 2 (relating to an uninflated tire, see paragraph [0020]), nor when assuming inflation to the maximum pressure (see paragraph [0021]: "With this structure, the tread outline shape in a standard internal pressure state in which the tire is assembled into a standard rim and the standard internal pressure is charged is brought into closer to a single arc having a radius of ..."), i.e. E4 does not provide any indication to give up the "single arc" shape and replacing it by a step height between the two running surfaces as claimed. Therefore, the skilled person would either stick to the structure known from E1, for which the ratios of dimensions as claimed are unknown, or he would be tempted to use the structure as disclosed in E4, which does not show the features according to the preamble of claim 1 although it might show a tire falling within the claimed ranges of ratios of dimensions. Thus, the skilled person would not arrive at the subject-matter of claim 1.

In view of the foregoing, it can be left open whether the minimum contact length Lm shown in E4 corresponds to dimension B specified in claim 1 and whether values for B and C are derivable from E4, as discussed extensively between the parties.

3.2.3 For the same reasons as mentioned above, the board cannot see that the skilled person starting from E4 as the closest prior art and taking into account the teaching of E1 would arrive at the subject-matter of claim 1 in an obvious manner. Again, when combining the teachings of E4 and E1, the skilled person might consider to choose the structural features of E1 in order to realise a step height between the two running surfaces, but then there is no information about the ratio of dimensions in the tire's footprint as required by the characterising portion of claim 1.

3.2.4 Dependent claims 2 and 3 concern particular embodiments of claim 1 and are therefore likewise allowable.

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

4.1 The board finds that the objections raised under Article 100(b) EPC against claim 1 as granted, which the appellant also maintained against granted claim 2 and thus against claim 1 of the present auxiliary request 1, are unfounded.

4.2 Claim 1 relates rather generally to "a pneumatic tire", without specifying its mounting location at the steering axle as mentioned in the description. Moreover, the wording of claim 1 leaves open whether a single-mounted or dual-mounted configuration has to be assumed and which standard applies. Although the "maximum loading" as specified in claim 1 might be different in a single-mounted and in a dual-mounted configuration, as argued by the appellant, the board finds that this objection relates to the broadness of the claimed subject-matter, which is an issue under Article 84 EPC and as such cannot be raised against granted claims. The fact that the wording of a claim is broad, however, has to be taken into account when assessing novelty and inventive step.

The same applies to the issue of rounding and measurement errors which have to be considered when interpreting the ranges of numerical values for the differences (A-B)/L and (C-B)/L specified in claim 1, in accordance with decision T 175/95 cited by the appellant. The recognised rounding conventions have to be applied in the assessment of novelty, which in the board's view is not a problem under Article 100(b) EPC. For the same reason, the board cannot see a problem in the offsets for measurement of B and C given in claim 1 which contain values expressed to three decimal places.

4.3 The appellant also objected to the contested patent being silent on the post-treatment ("smoothing") of a real tire contact pattern, necessary for arriving at the schematic representation of the tread contact shape in Figure 1 of the patent specification. The board holds that this does not give rise to a problem under Article 100(b) EPC, since the concept and methods of contact pattern measurement are known in the field of pneumatic tires, as evidenced by the prior art cited by the appellant itself (e.g. E4, E5). The skilled person will therefore supplement the information contained in the application using his common general knowledge.

For the same reason, the board cannot see a problem in the contested patent being silent on the values to be considered for a tire having an asymmetric rib geometry, i.e. where the length dimensions specified in claim 1 are different on both sides of the equatorial plane. It is well-known that in such a particular case a representative dimension value can be provided by applying an averaging method.

4.4 Since claim 1 of auxiliary request 1 (identical with independent claim 2 as granted) specifies in more detail the circumferential axial cross-sectional geometry by structural features (i.e. radius of curvature of the first running surface in relation to the second running surface, step heights between them), the board cannot follow the appellant's objection that the claim resembled more a method claim and should have been formulated differently. Moreover, such objection relates to clarity of a granted claim which cannot be questioned in appeal proceedings.

4.5 The appellant also argued that it was not a matter of routine experimentation and a reasonable amount of trial and error to arrive at a tire according to claim 1. In particular, the contested patent only taught one way to carry out the invention, namely the example according to Figures 1 and 2.

According to the established case law, an invention is in principle sufficiently disclosed if at least one way is clearly indicated enabling the person skilled in the art to carry out the invention. A reasonable amount of trial and error is permissible, if the skilled person has at his disposal, either in the specification or on the basis of common general knowledge, adequate information leading necessarily and directly towards success through the evaluation of initial failures.

Claim 1 of auxiliary request 1 explicitly specifies the external profile of the axial cross-sectional shape of the tire tread by way of two relationships between structural parameters of the tire, namely the radius of curvature of a second running surface in relation to a first running surface (R2>R1) and also the step heights between the two running surfaces and their virtual extension lines (db>da), to obtain a form of a footprint as defined in claim 1. Contrary to the objections raised by the appellant against claim 1 as granted (referring in particular to decisions T 68/85, T 1063/06 and T 480/11), allegedly trying to define the invention solely by way of functional features or the result to be achieved, claim 1 according to auxiliary request 1 now contains a definition of the structure of the tire tread which provide adequate information leading the skilled person with a reasonable amount of trial and error to the claimed subject-matter. This process of trial and error does not represent an undue burden for the skilled person, as implicitly acknowledged by the appellant when arguing insufficiency of disclosure of granted claim 1 in comparison to granted claim 2 (also paragraphs [0045], [0046]) which specifies structures of the tire.

The appellant also referred to paragraph [0018] of the contested patent and the internal structure of the tire mentioned therein. Although it had an influence on the ground contact shape, the patent allegedly was silent on the internal structure. However, the board cannot see a problem under Article 100(b) EPC because the last sentence in the paragraph cited by the appellant explicitly states that the invention allows for a ground contact shape as claimed "by the running surface cross-section, without depending on the internal structure of the tire". Thus, there is no information lacking to put the invention as claimed into practice.

4.6 Finally, the appellant alleges that the invention was insufficiently disclosed since the contested patent was silent on how to proceed in cases in which maximum pressure and load were not quoted in reference standards for a given tire dimension.

As can be derived from the contested decision (see point 3.1), this argument refers to an alleged inconsistency in the description of the contested patent, in which it is referred to the JATMA-specification when describing the first embodiment, whereas in the experimental tests a tire size of 295/75R22.5 was used which is not quoted in the JATMA-specification. However, this tire size can be found in the TRA-specification setting the standards for the US-market, and it is explicitly said in the patent specification that for the experimental tests the "abrasion test method and evaluation method were: North American market", i.e. the board cannot see a problem there. Moreover, the passages from JATMA- and TRA-specification provided by the appellant show that both specifications set different standards which are not comparable as to the absolute values of tire load for a comparable tire pressure (e.g. TRA, tire size "295/75R22.5": maximum tire load 3000 kg at 830 kPa in a single-mounted configuration; JATMA, tire size "295/70R22.5" and "295/80R22.5" show maximum tire loads of 3280 kg and 3470 kg for 825 kPa and even higher values at higher pressure in a single-mounted configuration), so the appellant's deviating calculation results when deriving values by interpolation are explainable and cannot support an alleged insufficiency of disclosure.

4.7 In view of the above, the board finds that the invention as defined in claim 1 according to auxiliary request 1 is sufficiently disclosed.