T 0301/94 (Green glass/AVIR) 28-11-1996

1. The appeal is admissible.

2. The appellants argued that D10 should have been disregarded by the opposition division under Article 114(2) EPC since it had been submitted after expiry of the opposition period and was not relevant. The board shares the opposition division's opinion that D10 is of such relevance that it had to be introduced into the proceedings. The reasons for this are readily apparent from the following considerations.

3. The respondents contended that green glass bottles produced by themselves and exhibiting all the characteristics recited in claim 1 as granted had been sold to a customer, namely a champagne producer, before the priority date.

D10, which was submitted by the respondents as evidence of this alleged prior use, comprises a first "procès-verbal de constat" drawn up by a "huissier de justice" and dated 5 April 1993 and a second one dated 8. December 1993, as well as the enclosures referred to in these reports. The evidentiary value of such official reports drawn up by a "huissier de justice" was no longer questioned at the appeal stage. D10 and its enclosures reveal the following:

In April 1986 champagne bottles having a special shape were produced by the respondents in their factory in Oiry, on the order of a customer, Billecart-Salmon SA, producer of champagne. The respondents submitted that, because of the special form of these bottles, they were produced only once a year in a single production run when ordered by the said customer. The report of the corresponding production run (page 7 of D10) shows that 182 160 bottles designated "Billecart Salm. SP 77.5, bague SP.BS, teinte CH.F" were produced in one run of six days from 15 to 21 April 1986. A letter from the champagne producer confirms that he had ordered 140 000 of these special bottles on 6 January 1986 (see D22, page 1). D10 also comprises invoices dated 21 May 1986, 22. May 1986, 23 May 1986 and 13 June 1986, ie before the priority date, concerning the sale and delivery of 75. 834 bottles having the same reference as in the run report. The additional invoices dated 18 June 1986, 19. June 1986 and 7 July 1986 show that further bottles produced in the same campaign were also delivered on and after the priority date. According to D10 the bottles of special shape produced in 1986 in the factory at Oiry can be distinguished from other bottles produced in a different year and in another factory by different marks on the bottom (for 1986: the letter T surrounded with six dots and for the factory at Oiry: the letters S and G with two points in between). On 8. July 1986 a number (21 134) of the delivered bottles were used to bottle champagne at the premises of the champagne producer. The bottles which were removed by the "huissier de justice" from the cellar of the champagne producer on 5 April 1993 bore the two said marks on the bottom and came from this bottling operation (see D10 pages 2, 4 and 5). Six of these bottles were analysed by two different laboratories (the laboratories of the Institut National du Verre in Belgium and of Saint-Gobain Recherche). The analyses enclosed in D10 show that the results obtained by both laboratories for the compositions and the optical properties all fall within the ranges defined in claim 1 of the patent in suit and that they are in sufficient agreement with each other to be reliable.

3.1. The appellants expressed doubts as to whether the bottles mentioned in the invoices dated earlier than the priority date, ie 21 May, 22 May, 23 May and 13. June 1986, had really been delivered to the consignee before the priority date. It was argued in this respect that in many companies throughout the world invoices were sent considerably earlier than the corresponding shipment of the articles. However, according to the "déclaration sur l'honneur" by the "Responsable administratif et financier" in the respondents' company (D19a) invoices relating to the delivery of bottles to customers are issued concomitantly with the shipment of the bottles from the factory and this was already so in 1986. The issuing of the invoices occurs as soon as the delivery order is issued by the factory when the bottles are shipped, and notification thereof is effected by an E.D.P. system. The customer himself confirmed that the invoices concerning the supply of bottles from the respondents were sent simultaneously with the delivery of the bottles (see D23). The board has no reason to doubt these statements, which were not contested by the appellants. As the premises of the champagne producer Billecart-Salmon are situated, according to the respondents' uncontested statement, about 10 km from the factory, it is also credible that the bottles were supplied to the consignee on the same day or days immediately following. A letter from the champagne producer dated 12 May 1986 and addressed to the respondents shows that a first delivery of the bottles designated "speciales Billecart-Salmon" was planned for 20, 21, 22 and 23 May 1986 (see D22). In view of the documents provided in evidence and of the concordance of their content the board is convinced that the bottles with the reference "Billecart-Salm.SP 77.5 CH.F SP.BS" mentioned in at least the three invoices dated 21, 22, 23 May 1986 (ie 72 864 bottles) had been delivered to the champagne producer before the priority date (18 June 1986). In this context, the board notes that the EPC does not contain any restrictions with regard to the kind of evidence which can be produced in proceedings before the European Patent Office and that the principle of free evaluation of evidence applies to any kind of evidence submitted in these proceedings (see Singer, "Europäisches Patentübereinkommen", 1989, pages 507, 509 and 513). The probative value of a "déclaration sur l'honneur", the signature of which was certified by a "notaire", depends on the particular circumstances of the case.

Moreover, it was not disputed that the sale of the said bottles to the champagne producer took place without any obligation to maintain secrecy (tacit or express obligation). In these circumstances, and following the well-established case law of the boards that a single sale is sufficient to render the sold product available to the public, provided the buyer is not bound by an obligation to maintain secrecy (see for example T 482/89, OJ EPO, l992, 646), the board comes to the conclusion that the bottles sold and delivered to the champagne producer before the priority date were made available to the public.

3.2. Taking into account that the "Billecart Salm.SP 77.5 CH.F. SP.BS" bottles mentioned in the invoices were not all delivered to the consignee before the priority date, the question arises whether or not the champagne bottles filled on 8 July 1986 and removed from the customer's cellar for analysis were bottles received before the priority date and, if not, whether the glass compositions reported in D10 are representative of all the bottles produced from 15 to 21 April 1986. The bottles delivered before the priority date cannot be distinguished from those delivered thereafter either by their form, their colour or a mark thereon. Although the number of bottles delivered between the priority date and the date of the champagne bottling (8 July 1986) is somewhat lower than the number of bottles delivered before the priority date, it is however comparatively high. In these circumstances, the possibility that all six bottles analysed were received after the priority date cannot be ruled out. In this context, the respondents have provided a "déclaration sur l'honneur" by the director of the respondents' factory in Oiry (D18a) in which it is stated that in 1986 a single production run was carried out in this factory from 15 to 21 April 1986 for the production of the champagne bottles with the reference SP 77.5 Billecart Salmon in compliance with an order placed by a customer, Billecart Salmon, and that the composition of the glass used to produce these bottles had not been changed during this run. At the oral proceedings, the respondents further explained that the same starting materials were used during the whole run and that composition analyses were performed during this run as well as daily checks on the bottles' colour, so that eventual fluctuations might be compensated by action on the batch composition. The board sees no reason to doubt the veracity of these statements and explanations taking into account that (i) the production run was carried out to fulfil a customer's order of 140 000 bottles of a specific kind in January 1986 (see page 1 of D22), (ii) the designation of the bottles, in particular the colour "CH.F" indicated in the report of the production run (page 7 of D10), is also mentioned in all the invoices concerning the delivery of the ordered bottles, whether they were dated before or after the priority date, and (iii) there are no apparent reasons why the bottle manufacturer would have changed the colour and hence the composition of the ordered bottles, thus deviating from the customer's order. It should also be noted that, contrary to the appellants' allegation, it is not the order of the 140 000 bottles which extended over a period of several months, but the delivery of these bottles. For the preceding reasons, the board considers that the results of the analysis shown on pages 26 to 40 of D10 are representative of the "Billecart Salm.SP 77,5 CH.F. SP.BS" bottles delivered either before or after the priority date.

At the oral proceedings the respondents further explained that the special "Billecart Salm.SP 77.5 CH.F. SP.BS" bottles could be easily distinguished from the bottles with the reference "Billecart Salmon 77.5 CH.81 SP.BS", which were both mentioned in the invoice of 21 May 1986, in particular by their colour and by the different mark identifying the place of production on the bottom, the latter bottles having been produced in a different factory. These facts remained uncontested. Furthermore, there is also no doubt that the shape of the said special bottles was sufficiently different from that of normal champagne bottles possibly produced in 1986 in the same factory and delivered to the same customer. In these circumstances, the board is convinced that the bottles removed from the customer's cellar were those referred to as "Billecart Salm.SP 77.5 CH.F. SP.BS" in the invoices concerned.

3.3. According to the opinion of the Enlarged Board of Appeal in G 1/92 (OJ EPO, 1993, 277), the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by a skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.

3.4. It follows from the considerations in items 3.1 and 3.2 above that green glass bottles produced by the respondents from 15 to 21 April 1986 and having the composition, dominant wavelength and filtering power characteristics reported in D10 were made available to the public before the priority date. Therefore, following G 1/92, if the two requirements of analysability and reproducibility were fulfilled, the said chemical composition of the green glass as well as the optical parameters, ie dominant wavelength and filtering power would be state of the art taking into account that these optical parameters represent intrinsic characteristics of the glass composition, and not characteristics depending on a particular use or application of the glass.

As regards the analysability of the glass, the appellants expressly declared at the oral proceedings that a skilled person would have been able to determine the composition of the said green glass before the priority date, including the low sulphide concentration, using the methods of analysis known at that time. Furthermore, both the "Stazione sperimentale del vetro" and the "BGIRA" had been able to determine low contents of sulphides in green glass before the priority date, as shown by the corresponding documents D6 and D9 reporting said analyses, and these reports did not contain any restriction or warning as regards the accuracy of the results. In these circumstances, the board considers that a skilled person would have been able to determine sulphide concentrations of 0.005% or less in a green glass with sufficient accuracy before the priority date.

3.5. The appellants' arguments that a skilled person would not have been able on the basis of the common general knowledge on the priority date to reproduce the green glass having the composition and the optical properties stated in D10 without undue burden are not convincing. It was not disputed by the appellants that a skilled person knowing the glass composition would also have been aware of the approximate temperature which has to be used at the proximity of the furnace discharge mouth to obtain the desired viscosity allowing the subsequent forming operation, and that a temperature of above 1200 C was usual for this kind of glass. As regards the reducing conditions, there is also no doubt that the method of preparation of amber glass belonged to the common general knowledge before the priority date, and therefore that it would have been well known to a skilled person how to prepare a glass in a reducing environment in order to form a relatively high amount of sulphide ions. The fact that the green glass to be produced contains a lower amount of sulphide ions than amber glass does not mean that a skilled person would not have been able to arrive at such a glass. It would have been immediately apparent to a skilled person that the relative amount of reducing components to oxidising components in the batch composition had to be changed. Thus, as pointed out by the respondents, a skilled person would have started with a certain amount of reducing materials such as coal and/or blast furnace slag in the batch mixture and would have measured either the sulphide content of the obtained glass (or its dominant wavelength), and then re-adjusted the sulphide amount (or the colour) by modifying the amount of reducing agent or oxidising agent depending on whether the sulphide amount was too low or too high (or the glass too green or too yellow). Therefore, even without knowing the redox number of the vitrifiable mixture, a skilled person would have been able by routine experimentation to reproduce the green glass having the said composition. The statement in D13 that "a continuous production in an industrial plant would have required rather long times, particularly in the early experimental stages" does not prove that the requirement of reproducibility set out in G 1/92 is not met. What is required in this decision is not that continuous production on an industrial scale be possible without undue burden, but that a skilled person be able to prepare the product without undue burden on the basis of his general technical knowledge and knowing the composition or internal structure of the product, whatever the scale of production (laboratory, pilot or industrial scale).

3.6. The appellants argued that the sulphide concentration of the glass was a "hidden" or secret feature in the sense of decisions G 2/88 and G 1/92 (item 3). In the appellants' view, as it was not common general knowledge on the priority date that a green glass having a high UV absorption might contain a very low amount of sulphide, the skilled person would not have carried out a sulphide analysis and, therefore, the glass composition was not made available to the public. The board cannot follow this line of argument for the following reasons:

Item 3 of opinion G 1/92 refers to the use of a known compound for a particular purpose, based on a new technical effect as defined in G 2/88, and it is stated in this context that such characteristics cannot be regarded as having already been made available to the public when the compound itself is available to the public. The situation considered by the Enlarged Board of Appeal is however different from that of the present case, since it concerns a claim relating to a new use of a known compound reflecting a newly discovered technical effect and not a claim to the compound itself. It is the new technical effect which constitutes a hidden or secret feature, not the composition itself or one component thereof.

Furthermore, when arguing that the chemical composition of the green glass was not made available to the public because the skilled person would not have analysed the sulphide content on the basis of the common general knowledge at the priority date, the appellants in fact introduce an additional requirement for the chemical composition to be available to the public. This additional requirement is that the skilled person should be able to recognize a priori, on the basis of the common general knowledge, which components the commercially available product might contain and in which amounts. Such an additional requirement would not be in agreement with the essence of opinion G 1/92, where only analysability and reproducibility of the commercially available product are required for its chemical composition to be state of the art. According to opinion G 1/92, it is the fact that direct and unambiguous access to some particular information is possible which makes the latter available, whether or not there is any reason for looking for it. As, in the present case, the skilled person would have been able to both analyse the commercially available green glass using the analytical methods known at the priority date and reproduce it without undue burden, the chemical composition of this glass is state of the art even if it had not been common general knowledge that a green glass with high UV absorption might contain a relatively low, but measurable, amount of sulphides. In these circumstances, there is no need to investigate whether D12 to D15 prove that the skilled person would not have determined the sulphide concentration of such a glass.

4. The question for referral to the Enlarged Board of Appeal reads as follows: "Is the composition of a commercialized chemical product accessible to the public in its entirety if at least one of the components was not recognizable for a person skilled in the art on the basis of the knowledge at the priority date, in particular in case the component is present in an unusual small amount". It is implicit from the context in which this question was submitted at the oral proceedings that the said non-recognisable component or the component present in an "unusual small amount" could be analysed on the priority date using the analytical methods known on that date. However, in the appellants' view, if the skilled person was not aware, on the basis of the general knowledge on the priority date, of the fact that at least one of the components might be present in the product or might be present in an "unusual small" amount, he would not perform an analysis of this component and, therefore, the chemical composition of the marketed product would not be available to the public. In other words, for the chemical composition of a marketed chemical product to be available to the public, the skilled person should be able to recognize a priori (ie before performing an analysis), on the basis of the general knowledge on the priority date which component(s) the product might contain or whether a component might be present in a very small amount. With such an additional requirement, products which are commercially available, analysable and reproducible would be removed from the public domain only because it was not common general knowledge on the priority date that at least one of the components might be present therein or might be present in a very small amount. There is no support in the EPC for such an additional requirement. As pointed out in opinion G 1/92 and already indicated in the preceding point, "it is the fact that direct and unambiguous access to some particular information is possible, which makes the latter available, whether or not there is any reason for looking for it". If the commercially available product can be analysed using the analytical methods known on the priority date, then it is irrelevant whether or not a skilled person would analyse the product or a component thereof, or whether there are reasons for not analysing a particular component. The board therefore comes to the conclusion that when a commercially available product can be analysed by the analytical methods known on the priority date and can also be reproduced, its chemical composition is state of the art even if a skilled person could not have recognized a priori (ie before performing an analysis), on the basis of the common general knowledge on the priority date that at least one component was present in the product, or was present in an "unusual small" amount. Taking into account that the answer given by the board to the question submitted follows clearly from the previous case law (see T 952/92, OJ EPO, 1995, 755; T 406/86 OJ EPO, 1989, 302; T 390/88 not published in OJ) and is in complete agreement with the essence of opinion G 1/92, which overruled decision T 93/89 (OJ EPO, 1992, 718), the board has decided not to refer this question to the Enlarged Board of Appeal.

5. It follows from the above that the green glass having the characteristics recited in claim 1 of the patent in suit does not differ from the green glass produced and sold by the respondents before the priority date. Therefore, the subject matter of claim 1 as granted does not meet the requirement of novelty set out in Articles 52(1) and 54(2) EPC. For this reason the appellants' request that the patent be maintained as granted must be refused.

6. In view of these findings, it was not necessary to examine the alleged prior use based on the commercial availability of glass bottles produced by the appellants.