T 1588/16 04-07-2019

1. The appeal is admissible.

2. The subject-matter of granted claim 1 is not new over D1 (Article 54 EPC), given that disputed features M2, M5, M6 and M7 are disclosed in D1.

Feature M2 ("i.e. "a rigid carrier, the carrier is configured to fit within a cavity within a vehicle frame") is known from D1, given that the container 12 (see D1, figures 1, 2) in D1 carries the expandable material 30 (D1, column 4, lines 18-30) and is to be rightly considered as being a "carrier", this term being broader than and encompassing or including the term "container". In particular (contrary to the Appellant's view), the presence of outer walls or enclosures in a carrier is by no means excluded.

Feature M5 (i.e. "the expandable material is disposed adjacent to the rigid carrier and the adhesive") is known from D1. In effect, D1 states that "while the expandable material is configured as pellets in fig. 2, the expandable material may be placed within any container ... in a variety of different configurations ... For example, the expandable material may be provided as single mass or multiple masses .." (see D1, column 4, lines 39-45) and (D1, column 6, lines 12-19) "in another embodiment, the expandable material is provided in an encapsulated or partially encapsulated form, which may comprise a pellet, which includes an expandable foamable material, encapsulated or partially encapsulated in an adhesive shell. An example of one such system is disclosed in commonly owned, co-pending U.S. application Ser. No. 09/524,298 ("Expandable Pre-Formed Plug") (i.e. D2), hereby incorporated by reference". Thus it is absolutely evident that the expandable material 30 being shown placed in the container 12 in figure 2 of D1 may have

"a variety of different configurations", in particular it can have the form of pellets, partially or completely encapsulated in an adhesive shell.

It ensues that the novelty analysis in the appealed decision is correct in this respect, since the mentioned feature is disclosed in D1, D2 merely being used for illustration purposes (identifying the expandable material and the adhesive with reference signs from figure 2 in D2). In other words, there is no need to refer to the disclosure of D2 when assessing whether feature M5 is known from D1, the technical information for concluding on lack of novelty being present in D1 alone.

In particular, it ensues that the expandable material is disposed adjacent to the rigid carrier and to the adhesive, the expandable material being surrounded by and adjacent to the adhesive, and also adjacent to the container 12 ("carrier"), given that it is placed in the container, i.e. in its immediate vicinity. The term "adjacent" does not require direct contact, and this is also not specified in claim 1.

Feature M6 (i.e. "the adhesive is placed on top of the expandable material") is known from D1, for the adhesive encapsulates the expandable materials (see above) and therefore irrespective of the specific arrangement of the expandable material in the container the adhesive will always be on top of the expandable material it. In effect, feature M6 does not require the adhesive to be located exclusively on top of the expandable material.

Finally, feature M7 (i.e. "the expandable material (34) and the adhesive (36) are disposed such that the expandable material (34) causes the adhesive (36) to move away from the carrier and into contact with an exterior surface of the carrier (32) and an interior wall of the cavity (40) to bond both the rigid carrier (32) and the wall cavity (40), when the expandable material (34) expands") is likewise known from D1.

The Appellant's contentions are not convincing, particularly relating to the allegedly unknown way and manner in which the expandable material, being placed in the container, would expand in the cavity.

Indeed, D1 repeatedly emphasizes that "upon activation, the pellets 30 of expandable material expand, combine and travel through the openings 20 (i.e. of the container 12) to contact the one or more walls of the structure 52", and "upon cooling, the expandable material adheres to the walls thereby securing the container and the expandable material within the cavity 50 (i.e. of the pillar structure 52)" (D1, column 6, line 63-column 7, line 3, figure 4). The same concepts are disclosed in connection with the embodiments of figures 5A, 5B (see column 8, lines 6-11; "upon activation of the expandable material, the expandable material expands and flows through the openings 122 of the peripheral wall 108 to contact the walls of the structure"), of figures 6A, 6B (column 8, lines 33-40) and of figure 7 (column 8, lines 59-64: "the expandable material may be activated to expand and flow through openings 182 of the container 170 to contact and wet walls of the structure. Upon curing, the expandable material adheres itself and the container 170 to the walls of the structure"). Finally, the same concept is repeated in more general terms , i.e. "Generally, for the various embodiments of the present invention, the walls or materials of the container, and particularly the walls or materials having the openings, will have a relatively large transmittance for allowing easier flow of the expandable material through the opening" (column 9, lines 1 to 5).

Therefore, it is self-evident that these concepts apply to all disclosed embodiments and that upon activation and expansion of the expandable material the adhesive (encapsulating and surrounding the expandable material) will "move away from the carrier and into contact with an exterior surface of the carrier (32) and an interior wall of the cavity (40) to bond both the rigid carrier (32) and the wall cavity (40)". In particular, the "rigid carrier" and the wall cavity will be bonded together after curing, either through direct bonding by the adhesive, or through the joint and combined action of the adhesive and of the expandable material, both alternatives being encompassed by the broad wording of feature M7.

3. Auxiliary requests 1 to 3 are not admitted into the appeal proceedings pursuant to Article 12(4) RPBA (Rules of Procedure of the Boards of Appeal), for these requests were already submitted and withdrawn during opposition proceedings. This was a deliberate choice and procedural act by the Appellant which cannot be reversed in appeal according to established case law of the Boards of Appeal. In particular, under the given circumstances this would be tantamount to warranting the Appellant freedom of choice to arbitrarily deciding to submit a given request either in opposition or in appeal proceedings. Moreover, the Appellant was not aware of and did not invoke any specific circumstances which could exceptionally lead to different conclusions.

4. The subject-matter of claim 1 of auxiliary request 4 is not new over D1 (Article 54 EPC). The amendment stating that the expandable material is disposed within a "holding area" cannot contribute to distinguish the claimed subject-matter from D1, as D1 discloses that the expandable material (pellets) is placed within the container 12 (i.e. carrier) (figures 1,2) and is held therein by the top and bottom wall 24, 26 and by the outer circumferential walls. Therefore, a holding area is implicitly and inherently disclosed in D1, e.g. the inner surface of the bottom or top wall of the container.

5. The subject-matter of claim 1 of auxiliary request 5 is not new over D1 (Article 54 EPC). The further amendment indicating that the holding area is defined by a "plurality of ribs" does not render new the claimed subject-matter over D1, given that the longitudinal elements 20 connecting the bottom and top walls of the container 12 ("carrier") are to be regarded as ribs, very much the same as human ribs likewise designate and are constituted by (curved) longitudinal elements. Moreover, the ribs 20 in D1 likewise define a holding area, as they form the outer peripheral walls of the container, thus delimiting an inner volume or area (e.g. the inner surface of the top or bottom wall) in the container for holding the expandable material (pellets).

6. Auxiliary request 6 is not admitted into the appeal proceedings in view of Article 12(4) RPBA. This request was late filed during oral proceedings as auxiliary request 3 and considered inadmissible by the Opposition Division and it can only be admitted into appeal proceedings if the Opposition Division exercised its discretion in an improper way, i.e. if its decision is not based on the proper principles, or if these principles were applied in an unreasonable way. In the case in point the Board takes the view that the Opposition Division properly exercised its discretion, for it considered that claim 1 was prima facie not clearly allowable for several reasons, and that the amendments were based on the description and were such that the Opposition Division and the Opponent could not be reasonably expected to be able to adequately consider and deal with the new submissions during the oral proceedings.

7. Auxiliary requests 7, 9 and 10 were submitted by the Appellant with the statement of grounds of appeal and the Board has pursuant to Article 12(4) RPBA a discretionary power not to admit these requests, if these requests could and should have been filed in opposition proceedings, thus being late filed.

The Board considers that these auxiliary requests could and should have been filed already during opposition proceedings for the following reasons.

The appealed decision leading to revocation of the patent is based on independent claim 1 of the main request, and of the first, second and third auxiliary request, all these requests likewise including an independent method claim not discussed and decided upon in the appealed decision. It would have been obvious for the Patentee, as it presently occurred with auxiliary requests 7, 9 and 10, to submit an auxiliary request including only one independent method claim, thereby eliminating product claim 1, against which most of the objections of the Opponent were raised. Evidently the Patentee deliberately opted not to submit these requests during opposition proceedings, thus being satisfied with a decision based exclusively on independent claim 1, the Patentee obviously being aware of this fact. It is clear that the submission of corresponding requests, lying within the responsibility of the Patentee, generally determines to a major extent the course of the opposition and appeal proceedings, and in the present case this led to a decision being taken only on the product claim. Thus, auxiliary requests 7, 9 and 10 could and should have been filed earlier, if the Patentee exercising its freedom of choice had deliberately chosen to seek protection only for the method of the independent claim, which he decided not to do since the main request as well as auxiliary requests 1 to 3 all included product claim 1 (see e.g. T 339/06, Reasons, 8.2).

The Board decided to exercise its discretionary power not to admit these requests into the appeal proceedings, given that the subject-matter of the method claim by its very nature considerably differs from the product claim and would require the Board to decide for the first time on all objections and all issues at stake in relation to this claim. However, this would be contrary to the general principles of the appeal proceedings (as set out in the decision G 9/91 of the Enlarged Board of appeal, Reasons, point 18) implying that it is not the purpose of the appeal proceedings to consider grounds for opposition on which the decision of the Opposition Division has not been based. In addition, to admit a new request under the given circumstances would give patentees the opportunity to compel a remittal to the first instance department as they pleased, which not only puts the opponent at a disadvantage but would also run counter to the principle of procedural economy.

As auxiliary requests 7, 9 and 10 are not admitted into the proceedings, the request to remit the case to the Opposition Division cannot be granted.