T 0987/16 20-02-2019

Reasons for the Decision

1. The appeal is admissible.

2. The subject-matter of granted claim 1 (main request) in conjunction with the description of EP-B disclose the invention in a manner sufficiently clear and complete for the skilled person to be able to carry it out (Article 83 EPC).

First, the Opponents' view relating to claim 1 being unduly and excessively broad in scope is not shared by the Board. Indeed, the nature of the inorganic platelets implied by claim 1 is clearly disclosed in EP-B (see e.g. paragraphs [0009] to [0012]), these platelets including for instance "clay, such as montmorillonite, vermiculite, mica, talc and combinations thereof". In addition, feature (b) of claim 1 requires that the inorganic platelet layer have a UL 94 flame classification of V-0, therefore clear restrictions and limitations are imposed on the nature of the inorganic platelets, contrary to the Opponents' view.

Further, the Opponents' contentions relating to essential features allegedly missing in claim 1 and in the disclosure of EP-B are unfounded in the Board's view. Indeed, since suitable vermiculite is disclosed in EP-B (see paragraph [0012]) as being available under the registered trademark Microlite 963 (see e.g. documents D7 (EP-A1-601 877) and D4 (US-A-4 655 842)), there is no necessity and no requirement that the patent specification (EP-B) or claim 1 include further details about its manufacturing.

The evidence provided by Opponent 2 (with its notice of opposition) relating to the alleged non-reproducibility of examples 1 and 2 in EP-B is not sufficient to prove the Opponents' allegations. Specifically, as noted in the appealed decision, the experiments provided by Opponent 2 employ PEEK as polymeric film, instead of PEKK as required by examples 1 and 2 in EP-B. Moreover, also no indication was given in these experiments about the pressure used in the press at said temperature of 180° C to produce the composite laminate. Even if, admittedly, EP-B does not disclose a specific pressure value, the Board nonetheless follows the conclusions of the Opposition Division in the appealed decision, in that the selection and optimization of the pressure parameter is considered to lie within the skilled person's common capabilities and general knowledge.

Finally, it is true that claim 7 and the description of EP-B include burnthrough tests for an inorganic or organic core (of a thermal insulation and acoustic blanket) according to the internal standard BSS7230 Method F1 of the Boeing Company, whose public availability cannot be confirmed or denied since no conclusive evidence was provided, the Patentee likewise not making any definitive statement to this effect.

Nevertheless, the Board does not see that for this reason the skilled person would not be able to put the invention into effect, given that the Patentee explicitly declared (during oral proceedings) and accepted that said internal test be considered entirely equivalent to ASTM F501 (see D17), as likewise indicated by D16.

Therefore, the question concerning the extent to which this method is equivalent to ASTM F501 (D7) is only a question of clarity (Article 84 EPC), which the Board is not empowered to examine, since these features were already included in the granted claims (see G 3/14). Consequently, for all practical purposes, particularly in case of doubt or missing information, said features should be constructed broadly, e.g. by adopting the standard test method according to ASTM F501.

3. The subject-matter of claim 1 is new over D1 (Article 54 EPC), as the combination of the claimed features is not disclosed in D1. Specifically, the Appellants' arguments and citations of D1 are based on distinct and different parts and passages of D1, such that no direct explicit or implicit link between specific features in these parts can be shown to exist. For instance, there is no explicit disclosure in D1 for the second layer having a thickness of 75 micrometers and a third layer, which is actually only optional (see D1, page 16), being also present and moreover being selected as consisting of the same polymeric material as the first layer and having the same thickness.

4. The subject-matter of claim 1 is not inventive over D2, particularly in view of the skilled person's common capabilities and knowledge or in view of D1.

First, it is noted that a composite laminate having a first layer according to feature (a) of claim 1 is undisputedly known from e.g. example 2 of D2.

Further, contrary to the Patentee's view, feature (b) of claim 1 is evidently disclosed in example 2 of D2, which indicates that mica paper is used as second layer, including mica platelets (or "flakes", see paragraph [0028])) having an aspect ratio ("form factor") greater than 1000, said layer having a thickness of 14 (or 16) micrometers (see D22, paragraphs [0045], [0076] to [0078]). Therefore, as these are the same mica platelets as disclosed in EP-B (see paragraph [0012], lines 23-25), they inherently have a UL 94 flame classification of V-0, as required by feature (b) of claim 1. Moreover, given that D2 discloses a composite laminate for application as a fire protective barrier in an aircraft cockpit (i.e. the same technical field as EP-B), and therefore mentions specific safety standards and corresponding test methods (see D2, paragraphs [0007] to [0010]), the skilled person would necessarily and inevitably use a mica paper complying with existing official standards and regulations. Thus, this requirement could not possibly contribute to inventive step.

As to feature (c), this is the sole feature missing in example 2 of D2. However, the possible presence of a third layer is clearly disclosed in D2 (see e.g. paragraphs [0022], [0023], [0037], claim 5), indicating that a "second support" can be provided for the mica paper, this "second support" clearly constituting a third layer such as a film to which the mica paper is laminated (see [0023], [0037]).

Therefore, starting from example 2 of D2, the skilled person would as an obvious alternative (disclosed in D2) provide a third layer as a support for the mica paper.

The skilled person would likewise select in an obvious manner the same polymeric film as used for the first layer (a PVF polymeric film, such as e.g. registered trademark Tedlar TFM05AL2; see D2, [0004], example 2), and this for several reasons: said PVF polymeric film is known from D2 to comply with known regulations and to act as a fire resistant sheet (see also e.g. D1, page 3, first paragraph; page 8, lines 14-21), a symmetrical structure would reduce difficulties resulting from different expansion coefficients and temperature changes and only one item in stock would be needed.

Additionally, selecting for the third layer the same polymeric film as for the first layer is explicitly indicated and suggested in D1 (see page 16, first paragraph), where the first layer is e.g. chosen as generally including a polyvinyl fluoride (PVF) polymeric material (D1, page 8, lines 18-21; see also page 9, second paragraph), acting as a fire barrier (D1, page 3 first paragraph; page 8, lines 14-21).

In conclusion, as discussed hereinabove, the skilled person would arrive in an obvious manner at feature (c) of claim 1, given that the further requirement or specific feature entailing "an average elongation to break no greater than 150%" has no technical effect and thus cannot contribute to inventive step (Article 56 EPC). Indeed no such technical effect is explicitly or implicitly disclosed in or is derivable from EP-B and no valid and convincing arguments were provided by the Patentee. Specifically, it is not clear how said requirement should facilitate inserting and positioning a core (see EP-B, e.g. claim 7) into a sheath consisting of said composite laminate (thereby assisting the core gliding into the sheath), taking into account that the ease or difficulties in performing said insertion is primarily determined by the friction coefficients (as noted by the Opponents during oral proceedings), which depend exclusively on material surface, bearing evidently no relation to said "elongation to break".

Anyway and more importantly, even if said parameter range were taken into account for the assessment of inventive step, the same conclusions would be arrived at. In effect, the skilled person starting from D2 (see above) would obviously select as "second support" (D2, [0022], [0023], [0037]) for the mica paper a polymeric polyvinyl fluoride appropriately acting as a support and having sufficient stiffness or rigidity. Thus, the skilled person would look for a polyvinyl fluoride material having optimal and adequate stiffness or rigidity. Such an optimization does not involve an inventive step and would necessarily and inevitably lead to suitable PVF polymers, as is also confirmed by the patent specification (see EP-B, paragraph [0013]). Evidently, the features relating to fire resistance remain substantially unaffected thereby, since these depend on chemical composition and not on mechanical properties of the polymeric material.

5. The considerably high number of auxiliary requests (49 in total) filed by the Patentee (most of these were already filed during opposition proceedings) is not compatible with general legal principles of the appeal proceedings. Appeal proceedings are by their very nature a judicial procedure, which is less investigative than opposition proceedings before the department of first instance (see decision of the Enlarged Board of Appeal G 9/91). In the present case the high number of auxiliary requests is tantamount to seeking protection for a subject-matter which is to be defined by tentatively selecting a multitude of combinations of different features to be introduced into claim 1, without a convergence criterion or a common concept being apparently recognizable. Discussing each of these requests and deciding on it would therefore amount to a renewed examination of the application by the first instance department. However, this is not the intended purpose of the appeal proceedings. Consequently, the Board decided to remit the case to the department of first instance (Article 111(1) EPC).