T 0083/98 () of 25.9.2000

Summary of Facts and Submissions

I. The opposition division's decision to reject the oppositions against European patent No. 0 221 215 was posted on 16 December 1997.

On 16 January 1998 the appellant (opponent V) filed an appeal with a statement of grounds and paid the appeal fee.

An appeal was also filed by opponent III who however withdrew his opposition by letter of 20 September 2000.

On 21 September 1999 opponent II was struck off the register of companies held by the District Court of Springe in Germany and so ceased to be a party as of right in the appeal proceedings.

II. Claim 1 as granted reads:

"A luggage case (11) of the type which does not have a metal frame running all the way round the case comprising two shells (12, 13), each shell being moulded in one piece from plastics material and having a peripheral side wall (15, 17 respectively), the side walls forming the front (18), back (19) and end walls (20) of the case, one shell (13) constituting a base shell and the other (12) a lid shell, the two shells being hinged together at the back wall (19) and having latching means (26) on the front wall for releasably fastening the edges of the shells together when the case is closed, characterised in that the latching means (26) on the front wall of the case comprises a latch mounted half-way along the front wall and is of the type that pulls the two shells together as the latch is fastened, and in that two further latches (24 and 25) for releasably fastening the edges of the shell together are located one on each of the front portions (27) of the end walls, the two further latches also being of the type that pull the shells together as they are fastened."

III. The appellant and the respondent (proprietor) attended oral proceedings on 25 September 2000.

Although duly summoned, the party as of right (opponent IV) did not attend these oral proceedings which took place without him, in accordance with Rule 71(2) EPC.

IV. During these oral proceedings the respondent submitted a new claim 1 for auxiliary request No. 1 reading:

"A luggage case (11) of the type which does not have a metal frame running all the way round the case comprising two shells (12, 13), each shell being moulded in one piece from plastics material and having a peripheral side wall (15, 17 respectively), the side walls forming the front (18), back (19) and end walls (20) of the case, one shell (13) constituting a base shell and the other (12) a lid shell, the two shells being hinged together at the back wall (19) and having latching means (26) on the front wall for releasably fastening the edges of the shells together when the case is closed, characterised in that the latching means (26) on the front wall of the case comprises a latch mounted halfway along the front wall and is of the type that pulls the two shells together as the latch is fastened, and in that two further latches (24 and 25) for releasably fastening the edges of the shell together are located, one on each of the front portions (27) of the end walls, the two further latches also being of the type that pull the shells together as they are fastened, said latch on the front wall and the said further latches on the end walls being the only means for releasably fastening the edges of the shells together when the case is closed."

V. The appellant cited the following documents in the appeal proceedings:

D2: Japanese Design Patent No. 699 891

D3: US-A-3 967 708

D4: Declaration of Mr Steve Scelba dated "11/12/93" on the American Tourister "Pullman" suitcase range

D5: GB-A-664 899

D6: GB-A-1 544 080

D7a: United Kingdom Registered Design No. 1 016 030

D7b: United Kingdom Registered Design No. 1 016 033

D8: EP-A-0 150 459

D9: FR-A-1 368 150

D10: GB-A-1 271 599

D11: Declaration of Mr Yunis Zekaria dated 13 December 1991 on the Delsey "Visa" range of suitcases

D12: GB-A-2 031 853

D13: US-A-2 415 220

D14: DE-A-2 253 024

D15: FR-A-2 455 552

D16: United Kingdom Registered Design No. 1 021 940

D39: A single sheet showing a suitcase called "Echolac" by Kodama Chemical Industry Co. Ltd and bearing the number "1985"

VI. In the appeal proceedings the appellant argued that the problem of gaping was known and that its solution by providing auxiliary latches was already known. The claimed solution was the combination of the position and the type of the latches. However both elements of this combination were known per se and their combination was obvious and brought no relevant advantage than what was provided by the aggregation of the two elements.

The respondent countered the appellant's arguments.

The party as of right did not comment in the appeal proceedings.

VII. The appellant requested that the decision under appeal be set aside and the patent revoked.

The respondent requested that the appeal be dismissed (i.e. that the patent be maintained as granted).

Alternatively he requested that the decision under appeal be set aside and the patent be maintained on the basis of claim 1 as submitted during the oral proceedings and claims 2 to 20 as granted (auxiliary request No. 1).

As a further alternative he requested that the patent be maintained on the basis of one of the sets of claims submitted as auxiliary requests Nos. 2 to 12 with the letter dated 6 October 1997.

There were no requests in the appeal proceedings from the party as of right (opponent IV).

Reasons for the Decision

1. The appeal is admissible.

2. Interpretation of claim 1 as granted and claim 1 of auxiliary request No. 1

During the oral proceedings the respondent agreed with the board that the features in these claims of "each shell ... having a peripheral side wall (15, 17 respectively), the side walls forming the front (18), back (19) and end walls (20) of the case" meant that each shell had its own side wall that extended all around the periphery of the case.

3. Novelty - the granted claim 1

3.1. D2 and D39

It is clear that D2 was published after the filing date of the present patent while it is not clear when (or even whether) D39 was published.

In the oral proceedings the appellant withdrew the novelty attack based on D2 and D39 because he had been unable to provide evidence that what was shown in these documents had been on the market before the filing date of the present patent and that D39 had been available to the public before that date.

3.2. D6

The travel case of D6 is said on page 1 in lines 59 to 61. to have "metal U strips 10 and 11 secured over the edges of the shells 2 and 3 as best illustrated in Figure 2" i.e. contrary to the granted claim 1 which excludes "a metal frame running all the way round the case".

Contrary to the granted claim 1, D6 does not disclose that the shells are "moulded ... from plastics material", the only shell material disclosed being fibre board, see page 1, lines 42 and 43 and claim 7.

While fastening devices 14 are provided on the end walls (see Figure 1) they are at the centres thereof instead of at their front portions as required by the granted claim 1.

Thus D6 does not disclose all the features of the granted claim 1.

3.3. The board is satisfied that no prior art document on file discloses all the features of the granted claim 1. Moreover in the oral proceedings the appellant stated that he was not aware of any document that would be novelty destroying in the sense that it disclosed all the features of the granted claim 1.

The subject-matter of claim 1 as granted is thus novel within the meaning of Article 54 EPC.

4. Closest prior art, problem and solution - the granted claim 1

4.1. The board agrees with the respondent that the prior art luggage case closest to the present invention is the Delsey Visa suitcase referred to in D11, a suitcase which has the features of the pre-characterising portion of claim 1 as granted.

4.2. The weight of the case according to D11 can be minimised by making the plastics moulded shells thin and by dispensing with a metal frame running all the way round the case. However these weight saving measures will result in the case having a low rigidity which will manifest itself in "a tendency for the case to gape along the end edges when the case is overfilled or when a heavy load is placed in the centre of the lid of the case, for example when someone sits on the case", see column 1, lines 13 to 17 of the description of the patent as granted (page 1, second paragraph of the originally filed application).

This problem of gaping was already clearly disclosed in the original application (see e.g. page 1, lines 10, 17, 22 and 34; page 2, lines 5, 10 and 20; page 5, line 29 and page 9, line 29) and the respondent demonstrated during the oral proceedings that gaping really occurred and so was a problem that really existed and needed to be solved.

4.3. While there are various solutions to this gaping problem, the one adopted in the characterising portion of claim 1 as granted is to provide latches for releasably fastening the edges of the shell together which are of the type that pull the shells together as they are fastened and which are mounted half-way along the front wall and on each of the front portions of the end walls. The end wall latches overcome the gaping problem at the end edges while the front wall latch prevents gaping here. These three latches "are easily accessible from the front of the case and therefore convenient to use", see column 1, lines 34 to 37 of the patent as granted (page 1, last line to page 2, line 2 of the originally filed application).

4.4. Accordingly the board finds that the truly existing problem posed by the prior art case of D11 is solved by the features set out in the characterising portion of claim 1 as granted.

5. Inventive step - the granted claim 1

5.1. If the skilled person was concerned that, because of its thin moulded shells and lack of a metal frame, the prior art case referred to in D11 suffered from gaping then he could simply rigidify the shells by making them thicker and/or providing them with ribs and/or providing a metal frame.

5.2. If he wished to avoid these solutions then he would look at other prior art cases, such as the case of D6 which was already briefly discussed in the above section 3.2.

While this is a fibre board case with metal U strips 10 and 11, the skilled person would immediately realise that its front wall and end wall fastening devices 14 might be of use in the D11 case. The gaping problem of the D11 case is due to its lack of rigidity and D6 explains in lines 34 to 39 of page 2 that "the provision of the fastening devices which apply a predetermined amount of compression between the abutting edges of the shells at spaced apart points along those edges further increases the rigidity of the case when closed."

Moreover the sentence bridging pages 1 and 2 of D6 explains that "as well as being provided with lockable fastening means 7, the case is provided with further fastening devices 14 spaced apart around the edges of the shells which assist in maintaining the edges of the shells in a butt joint when the case is closed by urging the abutting faces of the edges into engagement with each other."

It would be clear to the skilled person that the increase in rigidity of the D6 case is due to

- the over-centre toggle latches pulling the shells together as they are fastened (see page 2, lines 5 to 19 and 34 to 39), and

- the positioning of these latches (see page 2, lines 34 to 39),

and that it would be advantageous to make use of these latches and their positioning to solve the problem arising from the D11 case.

5.3. Lines 52 to 55 of page 1, lines 1 to 4 of page 2 and Figure 1 of D6 disclose "lockable fastening means 7 ... each side of the handle to enable the shells to be locked together when the case is closed" and that "In the illustrated case three fastening devices 14 are provided, one on the front of the case (as viewed) and two (only one shown) on the sides of the case." Lines 40 to 42 of page 2 add that "Of course, more than three fastening members 14 may be provided depending upon inter alia the size of the case."

If the skilled person decided to provide the case of D11 with more than three fastening devices 14 of D6 then he might put two more on the front but, since the two fastening means 7 when locked already help to hold the shells together, it seems more likely that he would put extra fastening devices 14 on the sides. If he chose to have two on each side then it would be obvious to have one towards the back of the case and one towards the front, the latter fastening device then being located on the front portion of the side (corresponding to the end wall in the present patent). Put another way, if the skilled person carried out the instruction in lines 40 to 42 of page 2 of D6 to use more than three fastening devices 14 shown in Figure 1 of D6, then he would be likely to land up with a fastening device 14 in the front portion of the side (i.e. end wall).

5.4. This obvious modification of the D11 case using the teaching of D6 falls within the scope of claim 1 as granted which therefore lacks inventive step.

It does not matter that, in addition to the "latch mounted half-way along the front wall" and the "two further latches ... on each of the front portions ... of the end walls" specified in the granted claim 1, the modified case would have two lockable fastening means (numbered 7 in D6 near the ends of the front wall and present in the same positions also in D11) and a number of other toggle latches (numbered 14 in D6) because the granted claim 1 does not say that the three specified latches are the only latches.

5.5. Thus the subject-matter of the granted claim 1 is not inventive (Articles 52(1) and 56 EPC) and the main request must be refused.

5.6. The board also notes that a luggage case having latches in addition to the three latches in the positions specified in the granted claim 1 would not have all the advantages that the respondent attributes to the inventive luggage case. The weight and cost of the case would be increased by the additional latches and these additional latches might be in inconvenient positions which are "difficult to reach from the front of the case for fastening and unfastening particularly on large cases", see column 1, lines 22 to 27 of the granted patent (page 1, lines 18 and 19 of the originally filed application).

6. Auxiliary request No. 1 - amendments

6.1. Claim 1 of auxiliary request No. 1 adds the feature of "said latch on the front wall and the said further latches on the end walls being the only means for releasably fastening the edges of the shells together when the case is closed" at the end of claim 1 as granted.

6.2. The preferred embodiment in the granted patent clearly has only the three specified latches, see e.g. Figures 1 to 3 and 12; column 3, lines 11 to 13 of the patent as granted (page 4, lines 1 and 2 of the originally filed application) ("Three latches 24, 25 and 26 are provided ...") and column 3, lines 29 and 30 of the patent as granted (page 4, lines 15 to 17 of the originally filed application) ("Two of the latches 24 and 25 ... The other latch 26 ...").

Thus the added feature referred to in the above section 6.1. is not objectionable under Article 123(2) EPC and, since it restricts the scope of the claim, there is no objection under Article 123(3) EPC either.

6.3. The dependent claims, description and Figures of auxiliary request No. 1 are the same as those of the granted patent.

6.4. Thus there are no objections under Article 123 EPC to the patent documents of auxiliary request No. 1.

7. Claim 1 of auxiliary request No. 1 - novelty, closest prior art, problem and solution

7.1. In section 3.3 above the subject-matter of claim 1 as granted was found to be novel. Since a feature (see section 6.1 above) has been added to arrive at claim 1 of auxiliary request No. 1, the latter's subject-matter must also be novel within the meaning of Article 54 EPC.

7.2. The comments made in the above section 4 regarding the closest prior art, problem and solution apply also to claim 1 of auxiliary request No. 1. However the criticism in the above section 5.6 that a luggage case according to claim 1 as granted would not have all the advantages maintained by the respondent obviously no longer applies now that the number of latches has been restricted to three.

8. Claim 1 of auxiliary request No. 1 - inventive step

8.1. While, as explained in the above section 5.2, the skilled person wishing to solve the problems arising from the D11 case would look at the prior art case of D6, this would not lead him to the solution set out in claim 1 of auxiliary request No. 1.

The inventive step argument advanced in the above section 5.3 against claim 1 as granted relied on the skilled person using the teaching of lines 40 to 42 of page 2 of D6 that "more than three fastening members 14 may be provided depending upon inter alia the size of the case" to add latches to the case of D11 and so automatically land up with latches in the claimed positions.

The particular embodiment shown in Figure 1 of D6 has five latches. While claim 1 of D6 does not specify the number of latches but specifies the presence of lockable fastening means as well as further fastening means, and while claim 11 specifies that "each fastening device comprises a hook member and an over-centre toggle member", nowhere in D6 is it disclosed that there are only three latches and that two of these are half-way along the end walls.

The appellant cited T 939/92 (OJ EPO 1996, 309) to support his view that, since the two lockable fastening means 7 in D6 do not draw the shells together, they do not contribute to the solution and so can be disregarded. The board disagrees, the flaps of these lockable fastening means obviously have to be shut when the case is closed and, even if not locked, do help to hold the shells together. Furthermore their presence on the case of D6 is essential as indicated in claim 1 (page 2, line 50 and page 1, lines 52 to 55).

Thus D6 would not teach the skilled person to provide only three latches and would not teach him to move the side latches from half-way along the end wall as shown in Figure 1 of D6 to the front portion as required by the claim.

Accordingly the skilled person making use of the teachings of D11 and D6 would not arrive at the subject-matter of claim 1 of auxiliary request No. 1 in an obvious way.

8.2. The appellant argued that the invention was merely the optimum positioning of latches for a case having three latches and that if the skilled person wished to provide a case with three latches then he would space them around the case periphery so as to achieve even compression. This would be achieved by a first latch half-way along the front wall and the other two each half-way between the first latch and the hinge on the back wall.

The board disagrees because the appellant's argument presupposes that the case has the same stiffness around its periphery whereas plainly the corners are stiffer than the walls. This would lead the skilled person to place the other two latches half-way between the corners (as shown on Figure 1 of D6).

8.3. The other prior art documents referred to by the appellant now need to be considered, starting with D3.

8.3.1. While Figure 7 of D3 shows and lines 36 and 37 of column 2 state that the second case section 12 is fabricated from two preformed parts 21 and 22, it is explained in lines 48 and 49 of column 4 that "optionally, the parts 21 and 22 may be manufactured as one item." However, whether in one part or two, this second case section 12 does not have a wall that corresponds to the back wall in the terminology of the opposed patent. This is apparent from Figure 7; from the list in column 2, lines 38 and 39 of what it does have, namely "a back panel 23, two end panels 24 and 25 and a top panel 26" (thereby implying the absence of a bottom panel); and from lines 48 to 52 of column 2, namely "a continuous flange 28 ... lacking that portion extending along the bottom panel edge."

Thus the requirement in the pre-characterising portion of claim 1 of auxiliary request No. 1 of each shell having a back wall (see the above section 2) is not satisfied by the shell 12 of D3 (the back panel 23 of this shell of course corresponds to the bottom wall 16 of the present patent not to its back wall 19).

8.3.2. This unusual construction of D3 seems to have been dictated by the case being for "relatively long apparel, e.g. suits, dresses and coats, ... avoiding tight folding of such long apparel", see column 1, lines 20 to 23.

Plainly, if someone knew of the present invention, then he would be struck by the similarity of the claimed positions for the two further latches "one on each of the front portions (27) of the end walls" and the positions shown on Figures 1, 5 and 6 of D3 of the latch mechanisms 30 on the end panels 24 and 25.

However the board cannot see that the skilled person (at the filing date of the present patent and therefore ignorant of the present invention) starting from either the Delsey Visa suitcase referred to in D11 or from the case known from D6 would pay much attention to D3 because the case of D3 is of such an unusual construction, completely different to that of D11 or D6.

If, on the other hand, the skilled person were to start from the case of D3 and modify it, then he would still retain the main features of D3's unusual construction. It would not be obvious for him to change the basic type of the D3 case into the type defined by the pre-characterising portion of claim 1 of auxiliary request No. 1.

8.3.3. Lines 40 to 48 of column 3 of D3 state that "a locking apparatus 44, such as a combination lock, for example, is incorporated into the top panel substantially midway between the end panels ... When the case is closed, a clasp or hook 46 ... coacts with the locking apparatus in a known manner to provide selective locking of the case sections together." The locking apparatus 44 is shown in Figures 1, 3, 5 and 6.

Starting from the Figure 5 position, the user pushes the first case section 11 down onto the second case section 12 so that the case sections are held together by the side latch mechanisms 30 and the clasp 46 takes up the position shown in Figure 3. However D3 does not disclose whether merely closing the case sections will cause the clasp 40 to be held (i.e. self-latching) or whether it is necessary to turn the combination wheels to hold the clasp 40.

According to column 1, lines 43 to 45 of D3 "A locking-latch apparatus is provided on the top panel adjacent the handle, e.g., combination or key lock" which at first sight implies the self-latching possibility. However no explanation is given of the term "locking-latch apparatus" and claim 6 of D3 lists the latching means on the end panels separately from the means on the top panel for locking the case sections together. The board considers it probable that locking is necessary for holding the clasp since there does not appear to be a release button on Figures 1, 5 and 6 that would be necessary to release the clasp if it were self-latching.

It is clear from claim 1 of auxiliary request No. 1 that the means on the front wall must comprise a latch and that this must be of the type that will pull the shells together as the latch is fastened. Once secured (by self-latching - if the first possibility is the correct one - and/or by turning the combination wheels), the locking apparatus 44 of D3 will help the side latch mechanisms 30 to hold the case sections shut but there is no suggestion that this locking apparatus will pull the case sections together as the latch is fastened.

8.3.4. A latch mechanism 30 is provided on the front portion of each end panel 24, 25 "which cooperates with an associated T-shaped hasp 31 affixed to the inner surface of flange 16 for releasably securing the case sections together", see column 3, lines 1 to 5 and Figure 1 of D3. It can be seen from the shape of the hasp 31 and hook 42 on Figure 4 that, unlike the latches specified in claim 1 of auxiliary request No. 1, the D3 latches do not pull the shells together as they are fastened.

8.3.5. In view of the comments in sections 8.3.3 and 8.3.4 above, it is clear that, even if it were obvious to combine the teachings of D11 and D3, the result would not include latches pulling the shells together as they are fastened.

There is also no reason to suppose, if the skilled person were trying to combine the teaching of D3 with the teaching of either D6 or D11, that he would cherry-pick just those features necessary to arrive at the claimed case.

Thus for instance it would not be obvious for him to select from D3 and D6 a case whose shells each have a back wall (like D6) but not a frame (unlike at least D6), one latch having the position of one of the three latches of D6, two latches having the positions of the latches of D3 but being of the type disclosed by D6 and so on - unless impermissibly he knew of the present invention.

8.3.6. Thus D3, alone or in combination with other teachings, would not lead the skilled person to the present invention.

8.4. The board cannot agree with the appellant that D7a and D7b, being filed on the same day by the same applicant and relating to features of the same luggage case, are to be seen as a single prior art disclosure. In particular there is no proof that the latch which is the subject of D7b is the same as the latch used on the case shown in D7a.

In any case, D7a and D7b, whether taken together or separately, would not help the skilled person arrive at the present invention, particularly because they merely depict a design of a case and a design of a latch without disclosing specific technical features.

The latches on the case shown in D7a do not correspond to those of the invention in either position or number but the appellant, citing section 3 of T 15/81 (OJ EPO 1982, 002), maintained that "If a designer working on the development of such apparatus does not possess the technical knowledge to overcome such difficulties, he can be expected to consult the relevant prior art for components which perform the same function and are better able to meet the requirements." However the board does not see that any of the other prior art disclosures on file (and in particular D6 which was discussed in section 8.1 above) would lead him to the present invention.

D7b shows a latch but, like D5, D8 and D9, contains nothing of relevance for the present invention as claimed that is not already known from D6, in particular none of these documents discloses either the positioning of the latches specified in claim 1 of auxiliary request No. 1 or the above indicated problem which is to be solved.

8.5. D4 concerns a fibreboard framed suitcase and was merely cited by number by the appellant in the statement of grounds of appeal with no supporting arguments during the appeal proceedings. The board accordingly considers that the appellant accepted the finding in the last paragraph on page 8 of the opposition division's decision that D4 was more remote than other cited prior art.

8.6. Similarly the appellant cited D10 by number in the statement of grounds of appeal but gave no supporting arguments during the appeal proceedings. The board finds also this document is less relevant than the other cited prior art.

8.7. The appellant cited D12 to D16 merely against dependent claims. As far as claim 1 of auxiliary request No. 1 is concerned, these documents are no more relevant than the other documents considered above.

8.8. The appellant referred to the headnote of T 130/89 (OJ EPO 1991, 514) which states that "the use of a known material on the basis of its known properties and in a known manner to obtain a known effect in a new combination is not normally inventive." However while the material (the latches e.g. of D6) and the properties (pulling the shells together as they are fastened) are known, the manner of their use (i.e. the positioning of merely three latches as specified in claim 1 of auxiliary request No. 1) is not known from any cited prior art document.

8.9. Thus the board cannot see that the prior art documents on file, on their own or in combination, could lead the skilled person in an obvious manner to arrive at the luggage case specified in claim 1 of auxiliary request No. 1.

9. Section 11 of T 1/81 (OJ EPO 1981, 439) states that "patents granted under the EPC should have inventive step sufficient to ensure to the patentees a fair degree of certainty that if contested the validity of the patents will be upheld by national courts."

The appellant concluded from this, since the Court of Milan in Italy had declared the nullity of the European patent with effect for Italy, that the board should revoke the European patent.

However the appellant did not dispute the respondent's statement that the Italian decision was not a final decision and the appellant did not provide the board with any information as to what claims were concerned, what prior art was cited and what reasoning the Italian court used. The Italian decision cannot therefore influence the board in taking its decision.

10. The subject-matter of independent claim 1 of auxiliary request No. 1 is thus patentable as required by Article 52 EPC. Its dependent claims 2 to 20 are also patentable.

The patent may therefore be maintained amended in the version according to auxiliary request No. 1 and thus there is no need to look at the auxiliary requests Nos. 2 to 12.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance with the order to maintain the patent in the following version:

Claims: Claim 1 of auxiliary request No. 1 submitted during the oral proceedings, and Claims 2 to 20 as granted

Description: Columns 1 to 8 as granted

Drawings: Figures 1 to 12 as granted