T 0751/16 06-03-2017

1. The appeal is admissible.

2. The subject-matter of claim 1 as granted is novel with regard to document D4. Furthermore, the invention as defined in claim 1 is based on inventive step starting from D4, Articles 54(1) and 56 EPC.

2.1 The subject-matter of claim 1 differs from the vehicle interior illumination structure according to D4 at least by feature f) (see point IX above):

a region of said step upper surface adjacent to said step portion has a given ornament to allow said adjacent region to have a higher degree of visibility than that of the remaining region of said step upper surface.

2.2 The respondent argued, as did the Opposition Division, that the rear edge of the step upper surface is in the area between the reference signs 39 and 3 and the front edge of the step upper surface is at the height of reference sign 40. The Board takes a different view. According to the wording of the claim (see feature c) in particular), the illumination member (namely the profile rod 37) is arranged to extend laterally at a position which is adjacent to the front edge of the step lower surface. Even though the term "adjacent" is to be interpreted broadly, it still implies that the illumination member is close to the front edge of the step lower surface. In the context of the prior art disclosure (Fig. 2), the distance between the profile rod 37 and the element 40, which allegedly represents the front edge, can only be reasonably considered as having a substantial amount and thus clearly excluding an interpretation of the illumination member being close to the element 40. In fact, in the Board's view, on a sensible reading of claim 1, it can only be said that the step portion, which is defined essentially by the transition between the bulge 1 and the instrument panel 3, has a rear edge which is the edge beside the reference sign 36 and a front edge which is located just below the illumination member, close to the ornament 39. The region of said step upper surface adjacent to said step portion thus can only be seen in a portion of the upper bulge 1 in Fig. 2 of D4, which is deprived of any ornaments.

2.3 In accordance with the description of the patent in suit, the distinguishing feature f) has the effect of improving the visibility of the manual operation element disposed on the step upper surface. Thus, even though the upper unit of the instrument panel including the step upper surface has the relatively dark tone, the manual operation element can be visually recognized without any problem to effectively avoid driver's discomfort, for example, due to a finger-sprain-like accident. Accordingly, the problem solved is to prevent such driver's discomfort.

2.4 In an alternative line of argument, the respondent stated that feature f) would represent an obvious measure, because it would be within the skilled person's ordinary knowledge to apply a further ornament strip on the dashboard according to D4 in the region of the upper surface near the reference sign 36, thereby directly arriving at the claimed subject-matter. In fact, ornament strips of chrome or the like are generally known by a skilled person.

The Board sees however no motivation for the skilled person to add a further ornament strip in the region of the padding bulge 1. In the embodiment shown in the figures of D4, the operation elements are all in the instrument panel 3 below the padding bulge 1 (cf. figures 1, 2 and 4, gripping handle 41, ash tray 31) and are indirectly illuminated by the rod type light 37, which throws the light on a light-reflecting strip, namely the chromed strip 39. As a result thereof, so much stray light is produced between the profile rod 37 and the strip 39 that the operation elements, e.g. the gripping handle, are sufficiently illuminated (cf. column 3, lines 15 to 23). A further chromed strip in the upper area, near the reference sign 36, would not improve the visibility of the gripping handle or of any other operation elements and would thus represent a modification devoid of technical significance. There is thus no incentive for the skilled person to provide such measure.

2.4.1 Alternatively, the respondent submits that it was obvious to place a further manual operation element, having chromed rings or similar, in the region in front of the rear edge, for example in the area between the reference signs 44 and 1a. In particular, in the 1960s, wiper switches were arranged in this area for wiring reasons, since the wiper motor was just below the dashboard.

However, in the Board's view the arrangement of further operation elements in the region before the windscreen is contrary to the general teaching of D4, which consists in providing all operation elements, such as actuating knobs, levers, etc., in an instrument panel located between two padding bulges (1) and (2; see Fig. 1; see col. 1, lines 15 to 20 and col. 4, lines 3 to 12), so as to shield the operation elements, respectively to protect the passengers, in the case of an accident. For this reason the respondent's argument is based on hindsight.

3. The submissions concerning lack of novelty and inventive step in view of document D2 are not admitted into the proceedings, Article 13(1) RPBA.

3.1 According to Article 12(1) RPBA the appeal proceedings are based on a) the notice of appeal and statement of grounds of appeal and b) any written reply of the respondent to be filed within four months of notification of the grounds of appeal. Article 12(2) RPBA requires that the statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on.

Any amendment to a party's case after it has filed its statement of grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

3.2 In its notice of opposition the respondent/opponent challenged claim 1 as granted with respect to novelty in view of D2. The opposition division stated in the communication of 12 June 2015 that - regarding D2 - the subject-matter of claim 1 was new. Lack of inventive step was not objected by the opponent/respondent in the first instance proceedings in connection with D2.

In the letter of reply to the statement of grounds of appeal, novelty was objected in view of document D4 and inventive step was objected taking D4 as the closest prior art.

It is only with the letter of 8 February 2017, after receiving the communication of the Board according to Article 15(1) RPBA, that the respondent filed submissions concerning lack of novelty over D2 and lack of inventive step starting from D2. These submissions cannot be seen as a reaction to the communication (see above point IV), as the opinion of the Board in respect of whether some features of the claim are disclosed or not by D4 does not justify raising a case on novelty and inventive step based on another document. The Board, moreover, did not include any element, such as a new interpretation of the features of the claim, which was not already mentioned in the appellant's statement of grounds. The submissions based on D2 are also not justified by the fact the opinion may suggest that the attack starting from D4 is not successful in the Board's preliminary view, as a communication of the Board to prepare oral proceedings is not an invitation to make further submissions (see e.g. T 1459/11).

Nor can the Board follow the respondent's argument that the objections based on D2 were already in the proceedings since D2 was mentioned in the notice of opposition.

According to the established case law of the Boards of Appeal the appeal proceedings are wholly separate and independent from the proceedings at first instance. This means that the respondent cannot assume that arguments submitted during the proceedings before the opposition division are part of the appeal proceedings.

For this reason the respondent should have presented "the complete case" and should have specified "expressly all the facts, arguments and evidence" in its letter of reply which could challenge the patent even if the first instance decision and consequently the statement of grounds of appeal are not concerned with some of these arguments.

Hence, this amendment to the party's case presented after the Board's communication amounts to a late-filed submission the admittance of which falls under the discretion of the Board (Article 13(1) RPBA). In this context, it has to be emphasised that the inventive step objection starting from D2 is clearly late-filed since it was presented for the first time in the whole proceedings (including the first instance proceedings) with the letter of 8 February 2017, i.e. one month before the date of the oral proceedings.

3.3 Further, the Board considers that the submissions based on D2 represent a fresh case presented at a late stage of the appeal proceedings which would require a substantially different discussion as compared to the case based on D4.

In particular, when evaluating novelty and inventive step, the Board would be faced for the first time with the technical content of document D2 and the related questions such as for example, whether or not the illumination member extends laterally according to feature c), whether or not the step upper surface has a relatively dark tone (feature d)) and whether or not an ornament in the sense of feature f) is an intrinsic feature of an air inlet grille, all features which presence in D2 has been contested by the patent proprietor/appellant.

3.4 Under these circumstances - irrespective of the relevance of D2 - the Board exercised its discretion not to admit the submissions based on D2 into the proceedings in view of the substantial amendment of the case with complex technical issues and for reasons of procedural economy (Article 13(1) RPBA).

4. As a consequence of the Board's decision not to admit the late-filed submissions based on D2, the respondent's request to remit the case to the first instance to examine novelty of the contested invention based on D2 is deprived of significance and thus has to be rejected.

5. The Board dismissed the respondent's objection according to Rule 106 EPC as filed during oral proceedings before the Board of appeal.

5.1 During oral proceedings, after the discussion concerning the admittance of the submissions based on D2, the respondent filed a request to remit the case to the first instance and the objection according to Rule 106 EPC in the case that the remittal to the first instance was not granted.

The respondent stated that document D2 was already filed in first instance proceedings and that the respondent's interpretation of D2 was changed after the communication of the Board. The novelty objection based on D2 was filed immediately (with letter of 8 February 2017) after the communication of the Board.

5.2 The reasons for not admitting the submissions based on D2 into the proceedings have been discussed under point 3 et seq. The respondent explicitly stated that he had the opportunity to comment on the admissibility issue during oral proceedings before the Board (see minutes of the oral proceedings). The Board considers that the right to be heard has been respected (Article 113, Article 112a c) EPC).

The reference to "any other fundamental procedural defect" (Article 112a d) EPC) concerns an alleged departure of the Board from the established case law, in particular, from the criterion of prima facie relevance for the admittance of the submissions based on D2. This objection cannot be followed by the Board. The Board exercised its discretion taken into account the criteria established in Article 13(1) RPBA, in particular, the need for procedural economy. In the Board's view the criterion of prima facie relevance does not prevail over the criteria explicitly mentioned in Article 13(1) RPBA.

Further, for the sake of argument since the respondent mentioned that the submissions on D2 are arguments which are always to be admitted into the proceedings, the view expressed in the decision G4/92 relating to the general admissibility of new arguments in appeal proceedings, has been modified by the amendments of the RPBA introduced with effect from 1 May 2003 (see for example T 1621/09). Thus, the admissibility of new arguments is a matter for the Board's discretion according to Article 13(1) RPBA.

5.3 Thus, the Board cannot identify any deficiency according to Article 112a c) or d) EPC.