T 0628/14 30-06-2016

1. Non-admitting documents D9 and D10

1.1 Documents D9 and D10 had not been admitted into the proceedings because (see contested decision, point 11) there were no reasons to suspect that, prima facie, these late-filed documents prejudiced the maintenance of the opposed patent. The opposition division found that D9 and D10 were not prima facie relevant, in particular not more relevant than the closest prior art already on file, since D9 related to a different method of supplying the sealant without the use of a compressor and D10 did not show a separate procedure for inflating tyres.

1.2 Appellant II argues that D9 and D10 had been filed in time within the time limit under Rule 116 EPC and should have been admitted. However, according to the established case law, Rule 116(1) EPC (former Rule 71a EPC 1973) should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote) as established with the notice of opposition according to Rule 76(c) EPC (former Rule 55(c) 1973, see G 9/91, point 6 of the Reasons). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings 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 II, so the board confirms the view taken by the opposition decision that D9 and D10 have been filed late.

1.3 In fact, the request of the appellants to have D9 and D10 admitted into the proceedings amounts to a request to overrule the way in which the first-instance department has exercised its discretion pursuant to Article 114(2) EPC. 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.

As can be taken from the contested decision (point 11), the opposition division applied the criterion of prima facie relevance, which is considered to be the right criterion in case of late-filed submissions. Moreover, the board cannot see that the opposition division exercised its discretion in an unreasonable way. The appellants argue that the opposition division did not duly consider that document D9 shows a second hose for connection to the tyre and related to the same technical field. However, there is no reason to assume that the opposition division did not reasonably consider this argument, which was already on the table in first-instance proceedings, in a prima facie approach. Having identified further differences in comparison to the prior art on file (see above), the opposition division concluded that D9 and D10 were not more relevant or might prejudice the maintenance of the patent.

1.4 Therefore, the board sees no reason for overturning the decision of the opposition division non-admitting documents D9 and D10.

2. Inventive step (Article 56 EPC)

2.1 Starting from document D8 as the closest prior art, a kit for inflating and repairing inflatable articles comprising a compressor assembly, a container of sealing liquid, an outer casing and connecting means according to features 1 to 7 of granted claim 1 are known, which was not disputed by appellant I. D8 explicitly describes (page 18, line 30) the connecting means for connecting the container to an inflatable article to be a hose (10). Following the argument of appellant I, since the connecting means connecting the container to the compressor assembly (6) is identically represented in Figure 9, D8 implicitly shows a second hose, as required by feature 4 due to the plural term "formed as hoses".

2.1.1 Feature 8 specifies "an additional hose cooperating with said inflatable article". Therefore, when taking features 4 and 8 together, three hoses are required in total, in particular according to feature 8 a second, additional hose cooperating with the inflatable article. This is not known from D8 which only shows a single hose connected to the inflatable article (tyre).

The board does not follow appellant II in that the number of hoses forming the connecting means of feature 4 is not specified, because by using the plural "hoses" feature 4 requires at least more than one hose. Moreover, although the contested patent describes in relation to the embodiment according to Figure 7 (which shows a three-way valve according to feature 9) the connection between the container and compressor assembly to be a "conduit 82", there is no reason for interpreting feature 4 more broadly, as alleged by appellant II, to include connecting means which are formed only by a single hose (e.g. hose 6 in D8) so that hose 10 in D8 might represent the additional hose of feature 8. As explicitly stated in the contested patent (see page 2, lines 37 to 38), "Figure 7 shows a schematic of a pneumatic circuit connected to the Figure 2 kit dispenser unit", and Figure 2 shows a fitting 53 (connected in Figure 7 to conduit 82) which is connected to compressor 2 by hose 4 as explicitly stated in paragraph [0036]. Moreover, the description of the embodiment of Figure 7 also refers to the hose 5 which in Figure 2 connects the container to the tyre. Therefore, there is no reason to assume that the contested patent itself might suggest only two hoses.

Appellant II asserts in a further line of argument that claim 1 leaves open whether two hoses are leading to the tyre, so the subject-matter of claim 1 was distinguished over D8 by part of feature 4, assuming that hose 10 represented the additional hose according to feature 8. Following appellant II in that feature 4 does not explicitly specify (due to the wording "for connecting the container to an inflatable article") a hose establishing a physical connection between the container and the inflatable article (i.e. a second hose parallel to the additional hose leading to the tyre), features 4 and 8 have to be considered in combination and require at least two hoses establishing a connection to the tyre (one of which cooperating with the tyre, see feature 8). In any case, D8 fails to show a second hose for establishing a connection to the tyre, no matter whether this missing feature is considered to represent feature 8 or part of feature 4.

For the same reason, the first line of argument presented by appellant II has to fail, according to which the general disclosure on page 4 of D8 disclosed a five-way valve and two separate hoses between the switching valve and the inflatable object, so that allegedly the subject-matter of claim 1 was only distinguished from D8 by the three-way valve of features 9 and 10. According to appellant II two separate hoses were present between the switching valve and the inflatable object on the assumption that a 1st outlet and a 3rd outlet were leading to the tyre. However, D8 is totally silent on page 4 on whether the 1st and 3rd outlets might be identical or not, so that the feature in dispute is not disclosed clearly and unambiguously in D8.

2.1.2 The board also takes the view that the term "three-way valve" has a well-recognised meaning in the field of pneumatic or hydraulic circuits and defines a valve with three ports for connecting the valve to a respective circuitry. The broad interpretation of claim 1, as asserted by appellant II in a further line of argument, that claim 1 only specified the valve's inputs and outputs and the term "three-way" might relate to the number of channels within the valve as known from D8 (two channels 13 and bypass 12), is not accepted and not supported by the contested patent either, which shows in Figure 7 a three-way valve according to the standard definition. The same applies with regard to the assertion by the appellants that the turning valve of D8 provided all the functions of a three-way valve. As a consequence, feature 9 is not known from D8, although the four-way valve shown in Figures 1 and 2 in D8 might have an input and two outputs as specified by features 9 and 10.

Appellant II also argued that D8 contained a general disclosure on page 4 which basically described a switching valve with two positions and three connections, i.e. a so called 3/2-valve. However, the board cannot see that the passages cited by appellant II provide any hint about how the valve is realised or that a three-way valve as specified by features 9 and 10 would be unambiguously disclosed. On the contrary, as mentioned in the third paragraph ("durch einfaches Umschalten des Ventils in die zweite Position kann der Benutzer jetzt das gleiche Gerät zum schnellen und einfachen Abdichten und Aufpumpen ... verwenden) suggests that simply switching the valve is the only manual operation necessary to switch over from an inflating function to a repair function, which does not suggest at all that a second additional hose to the tyre has to be provided, or that two outputs are necessary as required by feature 10. Moreover, appellant II himself (see above 2.1.1) relies on same page 4 for arguing that D8 discloses a five-way valve.

From this it follows that the lines of argument presented by appellant II, according to which a three-way valve was allegedly known from D8, have to fail.

2.1.3 In summary, the board takes the view that D8 fails to show a three-way valve according to feature 9 and a third hose as required by the wording of claim 1, be it the additional hose cooperating with the inflatable article according to feature 8 (as admitted by appellant I) or a hose for connecting the container to the inflatable article according to the second part of feature 4 (as argued by appellant II).

2.1.4 As stated in the contested patent (paragraph [0051]), this configuration provides the advantage that the user can switch in a simple way from an inflation-only to a repair and inflation use of the kit. A corresponding problem is already mentioned and solved in D8 (see pages 3 and 4).

By providing an additional hose and the three-way valve as specified in claim 1, which only comprises one input connected to the compressor, contamination or clogging of the valve by sealant is avoided. According to the established case law, the technical problem has to be formulated in such a way that it does not contain pointers to the solution or partially anticipate the solution. Thus, the board does not agree to the formulation of the problem proposed by the appellants that sealant contamination of the valve should be avoided, which implies that the valve should not get in touch with sealant and should be bypassed. Since the problem of valve contamination is already addressed in D8 and solved by means of replacing respective parts, the problem to be solved may be regarded as how to provide an alternative solution to the problem of valve contamination.

2.1.5 The appellants consider it obvious to provide a direct connection from the container to the tyre, by forming conduit 8 of D8 as a hose and connecting it directly to the tyre. As argued by appellant II, this would result in one channel within the valve of D8 (connecting conduits 8 and 10) being without any function, so the valve would be a three-way valve.

However, the board does not see any motivation for the skilled person to contemplate such modification of the kit known from D8, which would require an additional hose to be provided with the kit. D8 already represents a user-friendly design which allows for inflation-only use in one position of the switching valve and which requires for repairing a punctured tyre, except for operating the switching valve, no further manual operation. In particular, there is no prompting in the prior art to revert to an operation mode which might involve a further manual step of selecting the appropriate hose to be connected to the tyre and to one of the two outputs of a three-way valve, depending on whether a repair or inflation functions is required, in order to avoid valve contamination.

2.1.6 Therefore, the board finds that the subject-matter of claim 1 as granted involves an inventive step over closest prior art document D8 (Article 56 EPC).

2.2 Appellant II alternatively considered document D6 as the closest prior art.

2.2.1 Similar to what has been found for D8 as closest prior art, D6 also shows an embodiment comprising a four-way valve (Figures 1, 2), one hose for connecting the container to the compressor assembly and one single hose for establishing a connection to the tyre. Irrespective of whether the hose leading to the tyre is associated with the hose claimed in feature 4 (connecting container and tyre) or in feature 8, D6 fails to show a three-way valve (feature 9) and a second, separate hose for establishing a connection to the tyre. Consequently, the kit for inflating and repairing inflatable article as specified in claim 1 is distinguished from the kit disclosed in D6 by the same distinguishing features as already argued above in relation to D8 as closest prior art. Therefore, the same considerations in judging inventive step apply.

2.2.2 In addition to the arguments already dealt with, appellant II pointed to paragraph [0028] and claim 2 of D6. D6 describes in paragraph [0028] the advantage of the invention of D6, mentioning that the valve of the extraction unit opens in one position preferably ("vorzugsweise") two channels leading to the container. However, even if the term "preferably" might indicate a mere option and a one-way valve or a multiple-way valve is explicitly specified in claim 2, there is no indication given in D6 or in the prior art that the skilled person would consider using a three-way valve, or that an additional hose should be provided for establishing a connection to the tyre to solve the problem of valve contamination. On the contrary, this known problem is already solved in D6 by a cleaning process using compressed air for inflating the tyre after having injected the sealant. Moreover, the arguments of appellant II are based on mere assumptions ("the valve could only switch one channel .... Thus, the valve used in D6 was a three-way valve..."; "When using two separate hoses ...to the tyre") without indicating any prompting that could have convinced the board.

2.2.3 Appellant II alleges that there is no inventive quality in going back to the simpler and less sophisticated design with two separate hoses according to the subject-matter of claim 1. However, the criterion for assessing inventive step as set forth in Article 56 EPC is not inventive quality, but whether the claimed solution is obvious to the person skilled in the art, having regard to the state of the art. As argued above, the board sees no reason why the skilled person would consider using a three-way valve and an additional hose cooperating with the inflatable article as required by features 8 and 9.

2.2.4 D6 also shows a further embodiment (Figures 3, 4) comprising a sliding valve having an input 3, an output 4 and a channel 17 for connecting the valve to the container. Following appellant II in that at least Figure 4 of D6 shows a valve having three ports, i.e. a three-way valve according to features 9 and 10, a second, additional hose for connecting the container to the tyre is not known, irrespective of whether this missing feature relates to feature 8 (as argued above) or to feature 4 (as argued by appellant II). The board does not see why the skilled person would provide, in addition to hose 8, a further hose leading to the tyre which would require an additional part and further manual steps as argued already above.

Moreover, by providing a further hose leading to the tyre and relying - to avoid completely redesigning the kit of D6 - on the known interface between valve and container comprising a combined inlet and outlet port, an additional valve output for the additional hose has to be provided. Such modification of the valve of D6 would result in a four-way valve, i.e. would not lead to the feature 9 of claim 1 as granted. Moreover, it would not solve the problem of valve contamination, since the valve still would have an input connected to the container (contrary to feature 9) so that during a repair operation sealant fluid would be injected into the valve. A contamination of the valve could only be avoided by further modifying the container such that sealant is not injected into the valve but into a separate hose now connected to the container. Such modification of the kit of D6 is not considered to be obvious, in particular because D6 already solves the problem of valve contamination or clogging by blowing air through the channels after having injected the sealant into the tyre (see paragraph [0038]).

2.2.5 Therefore, the subject-matter of claim 1 as granted involves an inventive step over D6.

2.3 Finally, appellant II argues lack of inventive step starting from the allegedly prior-used kits which were designed in accordance with the design registration D7. As acknowledged by appellant II, an additional hose according to feature 8 and a three-way valve according to features 9 10 were missing in those kits. Therefore, for the reasons given already above, the subject-matter of claim 1 as granted is found to involve an inventive step. Again, it is observed that the problem formulated by appellant II ("inflating function independent from the repair function") contains a pointer to the solution which cannot be accepted.

3. In view of this finding, it can be left open whether the public availability of the prior-used kits was sufficiently proven and whether this line of attack should be admitted into the proceedings, which has been answered in the negative in the contested decision.