T 0216/14 () of 19.7.2018

Summary of Facts and Submissions

I. The appellant (patent proprietor) lodged an appeal in the prescribed time period and in the prescribed form against the decision of the Opposition Division to maintain European patent No. 2 206 656 in amended form.

The opposition had been filed against the patent as a whole and was based on Article 100(a) EPC (lack of novelty and lack of inventive step).

The Opposition Division held:

- that the documents D1 (=EP 0 220 980 B) and D2 (=EP 1 321 382 A) were both regarded as neither anticipating nor leading in an obvious manner to the claimed subject-matter of the independent claims 1, 15 and 17 of the then main request (patent as granted);

- that the subject-matter of claim 1 of the then main request (patent as granted) was not novel over each of the two sufficiently proven public prior uses in Poland and in Belgium/The Netherlands and the subject-matter of claims 15 and 17 was not novel over the public prior use in Poland;

- that the subject-matter of claims 1 of the then auxiliary requests I, II and III was not inventive over said prior uses, each taken as closest prior art, in view of the skilled person's common general knowledge, and the subject-matter of claim 15 of the then auxiliary request I was not novel over the public prior use in Poland; and

- that the then auxiliary request IV, filed as auxiliary request X with letter dated 30 August 2013 fulfilled the requirements of the EPC.

II. Prior to the oral proceedings the Board provided the parties with its preliminary non-binding opinion on the main request (patent as granted) and on the auxiliary requests I to XI which had been filed by the appellant with its statement setting out the grounds of appeal and its letter dated 12 February 2016. As a reaction, the appellant filed further requests (main request a and auxiliary requests Ia to XIa) with letter of 26 June 2018.

At the oral proceedings, which took place on 19 July 2018, the appellant filed a new request IVb and withdrew all its other requests.

For further details of the course of the oral proceedings, reference is made to the minutes.

The order of the present decision was announced at the end of the oral proceedings.

III. The appellant requested

that the decision under appeal be set aside and

that the patent be maintained on the basis of the set of claims of the (single) request IVb and the corresponding amended description filed during the oral proceedings on 19 July 2018.

IV. The respondent requested

that the appeal be dismissed.

V. Claims

Independent claims 1, 16 and 18 of the appellant's single request IVb correspond to the alternative relating to rolls in claims 1, 14 and 16, respectively, of the then auxiliary request IV upheld by the Opposition Division, see impugned decision, point 14. Since the patent proprietor is the only appellant and the subject-matters of these claims 1, 16 and 18 of request IVb are present in the patent as upheld by the Opposition Division, said claims cannot be reviewed in appeal proceedings in view of the prohibition of reformatio in peius (G 1/99, OJ EPO 2001, 381).

As a consequence, as also acknowledged by the parties, only a discussion about independent claim 2 of request IVb is relevant for the present decision.

Claim 2 corresponds to claim 1 of the patent as granted limited to the alternative of packages of panels and reads as follows:

"Package (10) comprising a multitude of packages of panels (22a, 22b, 22c, 22d, 22e, 22f, 22g, 22h) of mineral wool, especially fibre glass insulating material, wherein

- each package (22a, 22b, 22c, 22d, 22e, 22f, 22g, 22h) of panels is held in a compressed state;

- a plurality of packages of panels (22a, 22b, 22c, 22d, 22e, 22f, 22g, 22h) are grouped into one module (6);

- a plurality of modules (6a, 6b,6c) are arranged on a support surface (8) of the package (10) such that the modules are in an upright position with the front surfaces of the packages of panels of one row standing on the support surface;

- the modules (6; 6a, 6b, 6c) are in a compressed state and packed in a wrapping (3) of plastic film; and

- the modules (6a, 6b, 6c) are arranged next to each other on the support surface (8) and being held together on the support surface (8), preferably packed in a further plastic film wrapping (9);

characterized in that

- each module (6; 6a, 6b, 6c) is formed by at least two rows (13) of packages of panels (22a, 22b, 22c, 22d, 22e, 22f, 22g, 22h), at least two such rows (13) being arranged on top of each other such that the packages of panels touch one another at one of their front surfaces."

VI. Documents

The following documents of the opposition proceedings are of relevance for the present decision:

D1: EP 0 220 980 B;

A1 to A5b: public prior use in Poland; and

A6 to A11: public prior use in Belgium/The Netherlands.

The documents A1 to A5b concerning the public prior use in Poland are as follows:

A1: "Uni-Mata 50" and "Uni-Mata Mini" dated

19 April 2002, one page;

A2: "Piccolo 100", dated 15 January 2003, one page;

A3: "Piccolo 50", dated 15 January 2003, one page;

A4: (A5.1, A5.2 and A5a): flyer "Moja zólta Mini", Uni-Mata from ISOVER Gullfiber, dated 31 June 2001 (documents 5.1 and 5.2, one page each), in Polish with a translation into German of A5.2 (document A5a, one page);

A5b: Screenshot showing bill number 90148349, "Piccolo 5 MPS 48 ROL 1300Ca600x50 mm; 1 PAL", to BAUMAX in Ljubljana, Slovenia, in July 2002, one page; and

TC: Testimony of Mr Cognard on 1 October 2013 before the Opposition Division.

The documents A6 to A11 concerning the public prior use in Belgium/The Netherlands are as follows:

A6: "Material 40348 ROLLISOL PLUS @150X0450X08000 (01X36)", undated, two pages;

A7: Email from Huibert van Wensen on 24 June 2008, four pages;

A8: "Material 40347 ROLLISOL PLUS 150X0450X08000 (01X00)", undated, one page;

A9: Screenshot delivery document number 81540663,

"35817 ROLLISOL PLUS @150X0450X08000(02X18) 17 PAL", to WAEYAERT VERMEERSCH ISOLATIE in Kortemark, Belgium, in July 2008 or 2000(the year is illegible), one page.

A10: "Artikel 34052 XROLLISOL PLUS @060X0600X12000(01X36", undated, two pages

A11: "Factuur" to Adimat C.V.B.A. in Belgium, dated 24 January 2008 (A11.1 and A11.2, one page each); "Facture" to Plan-it Messancy in Belgium, dated 13 May 2008 (A11.3, one page) and "Kopie Factuur" to Gamma Belgie NV in the Netherlands, dated 6 March 2008, one page; and

TR: Testimony of Mr Rops on 1 October 2013 before the Opposition Division.

Late-filed documents A10-A11 were admitted into the proceedings by the Opposition Division, see impugned decision, point 11.3.1. This has not been contested by the appellant in the appeal proceedings.

The following document A13 was filed for the first time in appeal proceedings by the respondent with letter dated 18 August 2014:

A13: "I35003 XROLLISOL PLUS @060X0600X12000(01X60", undated, three pages.

VII. The appellant argued essentially as follows:

Public prior uses

Both witnesses Mr Cognard and Mr Rops made clear that the packages were done in many different configurations depending on the customers' requirements, even for the products at stake in the two alleged public prior uses. Both witnesses merely described the standard ways, not the configuration of the packages of the specific sales under consideration. It is unlikely that they could remember how the package configurations of said specific sales had been actually done. In particular, none of the witnesses was involved in the marketing or the sale of the products. Hence, the alleged public prior uses should be considered as not having taken place beyond any reasonable doubts.

Claim 2 - novelty

D1 does not disclose features (5), (7), (8) and (9) of claim 2 according to the feature analysis presented in annex A12 of respondent's letter of 18 August 2014, having in mind that a person skilled in the art would interpret feature (6) as that each module is packed individually in a respective film wrapping. The configuration that the package comprises a plurality of modules, each module being individually wrapped in a film and formed by at least two rows of packages of panels is not disclosed in D1. Hence novelty of the claimed subject-matter should be acknowledged.

Claim 2 - inventive step

In view of the technical effects associated with the way the modules are arranged, i.e. at least two rows of packages of panels arranged on top of each other, to be regarded as distinguishing features over D1 taken as closest prior art, the problem to be solved can be seen as to improve the alignment of rows of packages of panels in the package and increase the capacity of a packing machine. Since the solution to this problem is not disclosed or suggested in the available prior art documents, nor does it belong to the skilled person's common general knowledge, the skilled person would not arrive at the claimed subject-matter in an obvious manner starting from D1 as closest prior art. There is no proof of the skilled person's common general knowledge on packing panels disclosing the above-mentioned differentiating features over D1. Furthermore, it is clear from D1 that packing panels involves specific issues which do not occur when packing rolls. Hence, the skilled person would not think of combining the disclosure of the public prior uses which concern rolls with that of D1 which concerns packages of panels.

Starting from the public prior uses as closest prior art, the distinguishing feature of claim 2 is that it concerns packing packages of panels instead of rolls. There is no proof of the skilled person's common general knowledge on packing panels, in particular on how to provide modules of packages of panels. Only the patent document D1 is concerned with packages of panels and it makes clear that it raises specific issues. Hence, should the skilled person consider to apply the teaching of D1 to the public prior uses, he would contemplate to take its complete teaching, i.e. also the configuration of the modules of packages of panels disclosed therein. By doing so he would not arrive at the claimed subject-matter in an obvious manner.

In view of the above, inventive step of the subject-matter of claim 2 should be acknowledged.

VIII. The respondent argued essentially as follows:

Public prior uses

Both witnesses confirmed that the configurations of the packages described were in accordance with the sales. There were no objective reasons to cast doubt on the witnesses' recollections and both witnesses were fully acquainted with the information given in the relevant bills (A5b or A9). Hence, the alleged public prior uses should be considered to have taken place beyond any reasonable doubts.

Claim 2 - novelty

Feature (6) of claim 2 according to the feature analysis presented in annex A12 of respondent's letter of 18 August 2014 is broadly formulated and should not be considered limited in any way by the description. It merely reads that the package comprises a film wrapping, not necessarily that each module is wrapped individually, since this wording is not specified in the claim. Claim 2 requires only one plastic wrapping film.

The package ("fardeau") of D1 is wrapped in a plastic film ("banderolage") and is formed by at least two rows of packages of panels ("colis"), at least two such rows being arranged on top of each other such that the packages of panels touch one another at one of their front surfaces. Hence, D1 discloses all the features of claim 2 and, hence, its subject-matter lacks novelty over D1.

This also applies when considering that the package ("fardeau") of D1 as a whole corresponds to the module specified in claim 2.

Claim 2 - inventive step

The skilled person would immediately think of combining the teaching of the public prior uses relating to rolls with that of D1 relating to packages of panels taken as closest prior art. He would see no difficulties in this combination since in D1 the same apparatuses are used for manufacturing both types of packages. Furthermore, the teaching in D1 regarding the configurations of the packages, i.e. the modules being either vertically or horizontally arranged, see column 10, lines 11-20 and column 14, lines 2-11, is the same in both cases: rolls or packages of panels. No specific issues are to be derived from D1 for packing packages of panels. Hence, the skilled person would think of combining the teaching of the public prior uses with that of D1 and, by doing so, would arrive at the claimed subject-matter in an obvious manner.

Starting from the public prior uses as closest prior art, the only distinguishing feature is that claim 2 relates to packages of panels instead of rolls. The objective technical problem to be solved in view of this distinguishing feature can be seen as to provide an alternative package to the one of the public prior uses. Faced with the problem, the skilled person would consider the teaching of D1 which relates to packing such packages of panels. He would see no difficulties in applying the teaching of D1 while keeping the configurations of packages as disclosed in the public prior uses, since the method and apparatuses for packing rolls and packages of panels are the same in D1. This can also be regarded as belonging to his common general knowledge. Consequently, starting from the public prior uses the skilled person applying his common general knowledge or the teaching of D1 would arrive at the claimed subject-matter in an obvious manner.

In view of the above, inventive step should not be acknowledged for the subject-matter of claim 2.

Reasons for the Decision

1. Late-filed document A13 - admission

In its above mentioned non-binding preliminary opinion, point 4.4.5, the Board informed the parties that it considered the late-filed document A13 (see point VI above) admissible, contrary to the appellant's view, since it was seen as a reaction to the finding of the impugned decision, point 11.3.2, second paragraph (Articles 12(2) and (4) RPBA). Since this has not been commented on or contested subsequently by the parties, either in writing or orally at the oral proceedings, the Board admits A13 into the appeal proceedings.

2. Public prior uses

2.1 As is clear from the parties' submissions at the oral proceedings, the disclosures of the two alleged public prior uses in Poland and in Belgium/The Netherlands are equivalent for assessing the patentability of the subject-matter of claim 2 at stake of the single appellant's request IVb. As a matter of fact, both concern packing rolls, rather than packing packages of panels as in claim 2, with similar configurations of their respective packages. Consequently, there is no need to discuss both public prior uses so that the present decision focuses only on the alleged public prior use in Belgium/The Netherlands.

2.2 As is also clear from the discussions at the oral proceedings, the parties agree that the public prior use in Belgium/The Netherlands is based on A9 and the testimony of Mr Rops (TR), see also impugned decision, point 11.3.2, third paragraph, in this respect and minutes before the Opposition Division, point 9.

2.3 The appellant contests that the public prior use in Belgium/The Netherlands took place beyond any reasonable doubts. For the Board, this issue does not need, however, to be dealt with in the present decision since the Board comes to the conclusion, even taking into account the alleged public prior use(s), that the subject-matter of claim 2 is novel and inventive. Hence, in the following it is assumed that the public prior use in Belgium/The Netherlands took actually place (impugned decision, point 11.3.2).

3. Claim 2

Since the subject-matter of claim 2 of the appellant's request IVb corresponds to the alternative of package of panels of claim 1 of the patent as granted, there is no need to discuss whether it fulfils the requirements of Articles 83, 123(2) and (3) EPC, as the grounds for opposition according to Articles 100(b) and (c) EPC have not been raised. Furthermore, the compliance with the requirements of Article 84 EPC may not be examined either (G 3/14, OJ EPO 2015, A102).

3.1 Feature analysis

The following feature analysis of claim 2 is used in the following (see annex A12 of respondent's letter of 18 August 2014):

(1) Package comprising a multitude of packages of panels of mineral wool, [optional: especially fibre glass insulating material], wherein

(2) each package of panels is held in a compressed state;

(3) a plurality of packages of panels are grouped into one module;

(4) a plurality of modules are arranged on a support surface of the package

(5) such that the modules are in an upright position with the front surfaces of the packages of panels of one row standing on the support surface;

(6) the modules are in a compressed state and packed in a wrapping of plastic film; and

(7) the modules are arranged next to each other on the support surface and being held together on the support surface, [optional: preferably packed in a further plastic film wrapping];

[characterized in that]

(8) each module is formed by at least two rows of packages of panels,

(9) at least two such rows being arranged on top of each other such that the packages of panels touch one another at one of their front surfaces.

3.2 Novelty

The respondent contests that the subject-matter of claim 2 of request IVb is novel vis-à-vis D1.

3.2.1 D1 (column 12, line 20 to column 14, line 30; figures 5-8) discloses a package ("fardeau") comprising a multitude of packages ("colis") of panels of mineral wool ("panneaux de feutre rectangulaires" 34), especially fibre glass insulating material ("isolants fibreux compressibles", "feutre d'isolation en fibres de verre", see column 1, lines 1-2, column 5, lines 56-60), wherein

- each package of panels ("colis") is held in a compressed state ("Ces panneaux sont regroupés en colis unitaires dans lesquels ils sont comprimés", see column 12, lines 26-27);

- a plurality of packages of panels ("colis") are grouped into one module ("élément modulaire" 32);

- a plurality of modules 32 are arranged on a support surface ("palette") of the package ("fardeau");

- the modules 32 are in a compressed state and packed in a wrapping of plastic film ("film" 16 ", "...de polyéthylène", see column 7, line 49 to column 9, line 23 and also column 13 lines 13-24, where it is stated that the same apparatus, i.e. "empileuse" 7, is used for constituting the modules 32 in figures 2, 6 and 9; "à la formation du module...compression supplémentaire des panneaux", see column 13, lines 21-24; column 5, lines 52-55); and

- the modules 32 are arranged next to each other on the support surface ("palette") and being held together on the support surface ("palette"), preferably packed in a further plastic film wrapping ("dévidoir 27...permettant d'appliquer le film avec une tension déterminée sur le fardeau", see column 10, lines 45-53; "banderolage", column 14, lines 16-23; see also column 5, lines 48-51, where it is stated that figures 5-8 for panels are similar to figures 1-4 for rolls).

3.2.2 As a result of the above, the Board, following in part the appellant's view, considers that D1 does not disclose at least the following features of claim 2 :

- each module is formed by at least two rows of packages of panels, at least two such rows being arranged on top of each other.

3.2.3 Referring to the wording of claim 2 that a plurality of packages of panels are grouped into one module (feature (3)), the respondent builds up in figure 8 of D1 (two) distinct modules, each of the modules being made up of (six) packages of panels ("colis"). According to the respondent, said modules are arranged next to each other and all wrapped together by a plastic film ("banderolage") so as to form a package ("fardeau") in accordance with feature (7). Due to this plastic film, the respondent argues that said modules are in a compressed state and wrapped so as to fulfil the requirements of feature (6) of claim 2.

In this respect the respondent considers that feature (6) is broadly formulated and should not be considered as being limited in any way by the description. It should merely be interpreted in that the package comprises a film wrapping, not necessarily that each module is wrapped individually, since these two words are not specified in the claim. In fact, claim 2 would require only one plastic wrapping film which can be the one of the package ("banderolage").

Hence, two distinct modules can be derived in figure 8. The respondent then concludes that each of said modules of the package ("fardeau") of D1 are formed by two rows of packages of panels ("colis"), said rows of packages of panels being arranged on the top of each other in accordance with features (8) and (9) of the characterising portion of claim 2.

Since the other features of claim 2 are also known from D1, the subject-matter of claim 2 would not be novel over D1.

The above reasoning also applies in case the package ("fardeau") of D1 as a whole corresponds to the module in accordance with claim 2, see figure 8. The package ("fardeau") of D1 is wrapped by a film ("banderolage") and is formed by at least two rows of packages of panels ("colis"), at least two such rows being arranged on top of each other.

3.2.4 The Board cannot share this view for the following reasons discussed at the oral proceedings.

Contrary to the respondent's view, the Board follows the appellant's interpretation of feature (6) that each module is packed individually in a respective film wrapping since this is the way the skilled person will understand in the present technical field the term "module" used in claim 2. This is illustrated for instance by D1 which uses a similar expression ("élément modulaire" 32) in order to designate such grouping obtained after the wrapping step in apparatus 7 ("empileuse"). This interpretation is further supported by feature (3) of claim 2 which specifies that a plurality of packages of panels are grouped into one module, i.e. they are held together by physical means to be understood as being a wrapping film according to feature (6).

The package of claim 2 comprises a plurality of such modules (feature (4)), each module being individually wrapped in a film and formed by at least two rows of packages of panels (feature 8). Such claimed construction is not to be found in D1. In figure 8 of D1 the package comprises four distinct modules, each module being individually wrapped in a film, the modules being formed by a single row of three packages of panels and arranged on the top of each other.

3.2.5 Hence, the subject-matter of claim 2 is novel.

3.3 Inventive step

The respondent contests that the subject-matter of claim 2 lacks inventive step starting from either D1 or the public prior use in Belgium/The Netherlands as closest prior art, on the basis of arguments discussed hereafter and put forward for the first time at the oral proceedings before the Board.

3.3.1 Starting from D1

The Board shares the appellant's opinion that in view of the technical effects associated with the distinguishing features discussed under point 3.2.2 above, the objective technical problem to be solved can be seen as to improve the alignment of rows of packages of panels in the package and increase the capacity of a packing machine, see contested patent, paragraph 8.

The claimed solution to this problem is not disclosed or suggested in D1 or in the other available prior art disclosures, nor does it belong to the skilled person's common general knowledge.

Contrary to the respondent's view, it is derivable for the skilled reader of D1 that packing panels do not equate to packing rolls. As a matter of fact, specific issues are related with packing panels such as the packages of panels may become oval which does not occur when packing rolls, see column 12, lines 26-51. As further taught in D1, column 14, lines 2-11, the packages of panels are to be arranged in the modules such that the thickness of the panels are on the side of the module lying on the pallet in order to obtain a stable pile up of the modules on top of each other. Such an arrangement cannot obviously be compared with rolls. In particular, D1, column 10, lines 11-20, discloses that in case of a package of rolls, the rolls can be arranged horizontally or vertically in the package, vertically being nevertheless preferable for stability reasons. Contrary to the respondent, such a disclosure with the two alternative arrangements is not to be found in D1 in case of panels, nor derivable from the above mentioned passage in column 14, lines 2-11 relating to the orientation of the thicknesses of the panels. The fact that in this very specific passage of D1 a clear disclosure for arranging the panels in the package is provided, cannot be the basis for an implicit a contrario disclosure of a different arrangement. Hence, as clearly appearing from D1, packing panels is linked with specific issues leading to a specific configuration of the package, independently from whether or not the same method and/or apparatuses are used for packing rolls or packages of panels.

In view of the above, the skilled person would not combine the the disclosure of D1, which concerns packing packages of panels, with the teaching of the public prior use in Belgium/The Netherlands which concerns packing rolls.

Hence, the skilled person would not arrive at the claimed subject-matter in an obvious manner starting from D1.

3.3.2 Starting from the public prior use in Belgium/The Netherlands

The public prior use in Belgium/The Netherlands discloses a pallet of the product "Rollisol Plus" with a width of 450 mm, packed in a 2 x 18 configuration, i.e. two layers of three modules, each module comprising two rows of three rolls (six rolls in each module), the rows being arranged on the top of each other such that the rolls touch one another at one of their front surfaces (impugned decision, point 11.3.2, third paragraph; minutes of the oral proceedings before the Opposition Division, point 9).

As a consequence, as also agreed with by the parties at the oral proceedings, the only distinguishing feature of claim 2 over the public prior use in Belgium/The Netherlands is that the claimed package comprises packages of panels instead of rolls.

The Board cannot follow the respondent's opinion that, in view of providing an alternative package, the skilled person starting from the public prior use in Belgium/The Netherlands and applying his common general knowledge will merely replace the rolls of the package of the prior use in Belgium/The Netherlands by panels so as to arrive at the claimed subject-matter in an obvious manner.

As a matter of fact, this amounts to a mere allegation as there is no proof on file of the skilled person's common general knowledge disclosing the way modules of packages of panels are configurated and assembled together according to claim 2.

The only available prior art disclosure on file dealing with packing panels is D1, which cannot be regarded as representing the skilled person's common general knowledge since it concerns a patent document, i.e. not a standard text book. Should the skilled person consider its disclosure, as also argued by the respondent, he will realise that, as already discussed under point 3.3.1 above, special issues are related to packing panels. Hence, he will certainly take this into consideration when applying the teaching of D1 to the public prior use in Belgium/The Netherlands. By doing so, he will configurate the modules as in D1, i.e. comprising only one row of packages of panels, as there is no disclosure nor any suggestion in D1 on how to make modules comprising two rows of packages of panels and to assemble them into a package. Therefore, when applying the teaching of D1 to the public prior use in Belgium/The Netherlands, he would come up with modules as in D1. By doing so, he would fall outside the scope of claim 2 (see features (8) and (9)).

Hence, the skilled person would not arrive at the claimed subject-matter in an obvious manner starting from the public prior use in Belgium/the Netherlands either.

3.3.3 In view of the above, the subject-matter of claim 2 is inventive.

4. Description

The appellant filed an adapted description to auxiliary request IVb in the oral proceedings against which no objections were raised from the respondent or the Board.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division with the order to maintain the patent in amended form on the basis of the following documents:

Description:

Pages 2, 3, 4 filed during oral proceedings of 19 July 2018;

Pages 5, 6 of the patent specification of the patent as granted;

Claims:

claims 1-21 of auxiliary request IVb filed during oral proceedings of 19 July 2018;

Drawings:

figures 1-5 of the patent as granted.