T 0478/99 07-12-2000

1. Admissibility of the appeals.

1.1. The appeal of appellant I is admissible.

1.2. As regards the appeal of appellant II, it should be recalled that the specific requirements concerning the person entitled to appeal (appellant) are contained in Article 107, first sentence, EPC. This provision requires that the appellant was a party to the first instance proceedings and that he is adversely affected by the decision under appeal. These requirements are fulfilled by appellant II.

The more general question whether a proprietor may remain party to opposition or appeal proceedings before the EPO after he has assigned the patent to another person is answered by Rules 20(3) and 61 EPC according to which a transfer of the patent shall have effect vis-a-vis the EPO only at request and on production of documents that the transfer has taken place (see T 870/92, section 3.1, first paragraph). Since, in the present case, the registration of the transfer of the patent had still not been requested at the date of filing of appellant II's appeal, appellant II was entitled to exercise the rights of the proprietor. Also with respect to this condition the appeal of appellant II is admissible.

2. Alleged public prior use

2.1. According to the established case law of the Boards of Appeal of the EPO (see for example Decisions T 194/86 and T 300/86), in order to establish whether the gas mask described in D2 has been made available to the public before the priority date of the opposed patent and, therefore, whether it can be considered to form part of the state of the art in the meaning of Article 54(2) EPC, the following general questions must be answered with certainty:

a. on which date the alleged public prior use occurred?

b. what was exactly used? and

c. under what circumstances the alleged use occurred (i.e. in particular where did the alleged public prior use took place and whether a secrecy agreement existed with those who were present at the presentation)?

All the answers to the above questions must be proven unequivocally.

2.2. The questions concerning the date (question a) and the place (question c) of the alleged public prior use can be answered without any doubt, particularly since, in paragraph 3 of the patentee's statement setting out the grounds of appeal, appellant II himself acknowledged that the presentation of a gas mask were effected by G. Gutman at the premises of respectively Boeing and United Airlines on 14 to 15 October 1987. Also the Board has no reason to doubt this.

2.3. As regards the question of confidentiality (question c) at the aforementioned demonstrations, the following must be pointed out:

In his declaration of 9 April 1995, G. Gutman stated that no confidentiality was required at said demonstrations since: "le but de la réunion étant d'inciter BOEING à l'adoption du masque "confort" sur ses longs courriers." (page 3, last sentence).

Although M. R. Kaletta did not attend the demonstrations, he confirmed Gutman's contention in his affidavit of 26 April 1995 and to justify lack of confidentiality he explained that the presentation was "for the purpose of attracting orders" (section 8 of the Affidavit). However, M. R. Kaletta being employed by Scott Aviation, had to handle the information, which he got from the firm EROS representing the opponent's firm, as confidential (sections 2 and 10 of his Affidavit; sections 3 and 7 of the declaration of G. Gutman).

John Overstreet, who attended both demonstrations at the premises of Boeing and United Airlines, also stated in his declaration of 2 June 1995 that no confidentiality was required (sections 3 and 5 of his so-called Affidavit. However, also J. Overstreet, being employed by Scott Aviation had to handle the information as confidential (see above).

Moreover, according to the declaration of L. Erxleben, who was employed by Boeing, the presentations made by G. Gutman were commercial demonstrations and L. Erxleben has never heard of any request by appellant I that the information be confidential.

Although three of the above-mentioned declarations were from people being in connection with appellant I, it can be reasonably assumed that no confidentiality was required at the presentations made by G. Gutman in October 1987.

However, no express release of confidentiality has been proven. Furthermore, an ex-Boeing employee (D. Coughlin) and a Boeing employee (H. Alguard) made the following statements:

- "at Boeing, both the company and the employees to whom the disclosures were made, would have regarded the demonstration as confidential" (see the declaration of D. Coughlin dated 8 April 1997, last sentence) and,

- "it was our usual and standard practice within the Boeing Material organization to treat as confidential and proprietary information gained through a supplier's demonstration of its product" (see the declaration of H. Alguard dated 8. December 1998, section 3).

These declarations of Boeing-employees are in contradiction to the statement of L. Erxleben who also was a Boeing-employee at the time of the demonstration.

Therefore, in the light of the foregoing, the sole absence of an explicit request of confidentiality is not sufficient for concluding with certainty that there was no confidentiality at the demonstrations because secrecy may result from an ethical conduct of the employees of big companies like Boeing and United Airlines (see in particular the declaration of D. Coughlin).

Moreover, the abovementioned declarations of G. Gutman, M. R. Kaletta and L. Erxleben about the commercial aspect of the demonstrations which suggest that those who were present were encouraged to disseminate the informations are contradicted by the facts that the presented mask was still a prototype under development and not at a stage of being commercialised, so that no pricing was mentioned and no documentary material was available at the demonstrations and that the following contention of appellant II: "the product was not actually launched until three years later" (see appellant II's statement of grounds of appeal) was not contradicted by appellant I.

As a matter of fact, the Board considers that the purpose of the demonstrations seemed to be rather to obtain from the potential customers an "input on the desirability of the concept and suggestions on how it might be improved", as stated in section 3 of D. Coughlin's declaration of 8 April 1997, than to attract orders.

For all the abovementioned reasons, the essential question of confidentiality cannot be considered as properly and undoubtedly answered by the parties so that, with respect to this essential point, no conclusion can be drawn with certainty by the Board.

2.4. Consequently, the Board considers this alleged public prior use not to be proven and thus not to be comprised in the state of the art.

2.5. Independently of the fact that said prior use might or might not be incorporated in the state of the art, the following must be remarked as regards the content of the disclosure made during the presentation of the mask (question b). G. Gutman who made the demonstrations of October 1987 and was therefore in the best position to identify what has been actually disclosed, has made the following statements in his declaration of 9 April 1995:

- see page 2, section 4, third paragraph:

"Il m'a ensuite présenté le harnais modifié. Ce dernier, démuni de son couvre face, est encore disponible à IN. Une photographie récente, prise après remontage du couvre face, constitue l'annexe 2. Il s'agit d'une maquette en état de fonctionnement, mais non commercialisable du fait que les modifications avaient été faites à la main. La constitution était celle donnée en Figure 3 de la demande de brevet FR ultérieurement déposée sous le N 87 05682 (annexe 3)", and

- see page 3, section 11, second paragraph:

"Cette présentation a été faite le mercredi 14 octobre 1987 en utilisant la maquette que j'avais apportée, à l'aide d'une bouteille d'oxygène sous pression fournie par John Overstreet".

Since, in Gutman's declaration there is absolutely no indication that the model used for the demonstration mentioned on page 3 and the model mentioned on page 2 might be different, it seems reasonable to assume that G. Gutman referred to the same model and that, according to G. Gutman himself, its structure was as represented on Figure 3 of patent FR-A-2 614 208 (8 705 682) which corresponds to D2 (which refers to 8. 705 682 as priority document). In that case, the prototype presented at the demonstrations would have had no means for selectively establishing by partial reinflation an intermediate strap pressure and no means for maintaining said intermediate pressure without manual manipulation.

Such an assumption seems to be confirmed by the following statement at the end of the declaration of L. Erxleben (which was prepared by the patent attorney of appellant I):

"For the comfort position, partial deflation to a variable level depending on the position of the cam occurred",

which acknowledges that the intermediate pressure for the comfort position of the prototype presented at the demonstrations was obtained by partially deflating the strap of the harness and not, according to Claim 1 of the opposed patent, by partially inflating the strap element.

Therefore, the safety apparatus according to the invention and the mask presented by G. Gutman on October 1987, appear to be structurally different by the fact that they function differently.

3. The state of the art

The alleged public prior use being not considered as comprised in the state of the art, said state of the art brought forward during the oral proceedings comprises solely the safety gas masks described in D1 (Article 52(2) EPC) and D2 (Article 52(3)(4) EPC for the designated contracting states DE, GB, IT, NL and SE).

4. Main request and auxiliary requests 1 to 4

As already stated in sections VI 1B and VI 2.2 above, the independent Claims 8 for the following contracting states: DE, FR, GB, IT, NL, SE of the main and auxiliary requests 1 to 4 comprise the same following feature:

"which safety apparatus further comprises a pair of springs (46, 56), both situated within said chamber-defining structure (38) and operatively engaging said valve member (36, 52)".

In WO-A-89/07961 (see from page 6, line 27 to page 7, line 17 and Figures 2, 4 and 5) the springs (46, 56) are described and represented as components of a shiftable valve assembly 28 composed of a supply plunger, a first helical compression spring, a comfort plunger and a second helical compression spring, all of these cooperating components being functionally not dissociable from each other and being aligned in a bore in the aforementioned order from the left toward the right when viewing Figures 2, 4 and 5 of the application. The "pair of springs" being not disclosed in the application in its generality as an entity as such but solely in combination with the other components of the shiftable assembly 28, the mere introduction in claims 8 of the main request and auxiliary requests 1 to 4 of such an entity extracted and isolated from the assembly 28 infringes the requirements of Article 100(c), 123(2) EPC.

Therefore, the introduction of the feature "pair of springs" into the independent claims 8 was not allowable and the corresponding main request and auxiliary requests 1 to 4 based on these claims 8 must be refused.

5. Fifth request

5.1. Claim 1 for the contracting states: AT, BE, CH, LI and LU.

5.1.1. Modifications:

Claim 1 of auxiliary request 5 differs from Claim 1 as granted as follows:

- Column 9, line 36 of the specification:

The sentence: "in that the inflation control means further comprises a" has been added between the words "characterized" and "comfort", the word "by" having been deleted.

This modification makes clear that the comfort control structure is a component of the inflation control system or means for inflating the strap element (see Figures 2, 4 and 5).

- Column 9, lines 37 to 38:

The following expression: "by partial reinflation" has been added between the words "establishing" and "and maintaining" in order to clarify and restrict the meaning of the word "establishing".

These two modifications are supported by the description and Figures 2, 4 and 5 of WO-A-89/07961 and they limit the protection conferred. Therefore, they fulfill the requirements of Article 123(2) and (3) EPC and are allowable.

5.1.2. Novelty (Article 54 EPC).

Against this Claim 1 appellant I raised no novelty objection. The Board also has no reason to doubt the novelty of the subject-matter of claim 1.

5.1.3. Inventive step (Article 56 EPC).

Appellant I objected solely lack of inventive step in view of the alleged public prior use made by G. Gutman in October 1987. Since that alleged public prior use has been considered not to be comprised in the state of the art (see section 2.4 above), appellant I's objection is not valid anymore.

D2 being a document that also can not be considered for assessing inventive step (Article 56 EPC, second sentence), the subject-matter of Claim 1 must be declared inventive within the meaning of Article 56 EPC in the absence of a relevant state of the art, since D1 does not provide a person skilled in the art with a teaching which could lead him to the claimed subject-matter.

5.2. Claim 1 for the contracting states: DE, FR, GB, IT, NL and SE

5.2.1. Modifications:

The same modifications as described in section 5.1.1 above have been made in Claim 1 for the contracting states: DE, FR, GB, IT, NL and SE.

In addition, column 12:

- line 10: the word "and", between the words "face" and "a rod", has been replaced by the words: "said means (74) including"; and

- line 13: the phrase "which safety apparatus further comprises a" has been replaced by the following: "and said means (74) further comprising a".

These modifications clarify the claim and are supported by the description and Figures 2, 4 and 5 of WO-A-89/07961 (see page 8, line 8 to 19 and from page 12, line 30 to page 13, line 9). These modifications therefore satisfy the requirements of Article 123 EPC and are allowable.

5.2.2. Novelty (Article 54 EPC)

The alleged public prior use by G. Gutman in October 1987 being not comprised in the state of the art (see section 2.4 above), no novelty objection can be raised on this basis. On the contrary, for the contracting states (DE, GB, IT, NL and SE - not FR) designated in both the patent in suit and D2 (Article 54(3)(4) EPC), the latter can be considered for assessing novelty of the subject-matter of Claim 1.

The comparison between the apparatus claimed in Claim 1 and the gas mask disclosed by D2 shows the following differences:

- The apparatus of Claim 1 comprises means for delivery a breathable gas mixture and means for delivery of pressurised oxygen (see Claim 1, column 11 of the specification, lines 33 to 36) which is operatively interconnected with the strap element for selective oxygen flow in the strap (see Claim 1, column 11, lines 41 to 43) whereas, in D2, it seems that the strap is inflated by the breathable gas of the regulator (see D2: column 1, lines 30 to 33) i.e. a mixture of air and oxygen (that means that there is a direct communication between the strap on the one hand and a reservoir of pressurised oxygen on the other hand).

- Also, as already pointed out in section 2.5 above, it is clear from the description corresponding to Figure 2A of D2 (see column 4, lines 27 to 33) that the comfort control structure of the known mask establishes and maintains the intermediate pressure in the strap element of the harness by partial deflation of the strap through the calibrate valve 32 whereas, according to the invention, the pressure for the comfort position is obtained by partially inflating the strap element.

- Moreover, the emergency system of the mask of D2 for use in the event of a drop of pressure in the cabin (see Figure 4A) comprises a valve 52 associated to a sealed bellow device (capsule altimétrique) but no spring means as according to the apparatus of claim 1 and, even if such a bellow device may be considered as an equivalent to spring means, it is a constant practice of the EPO's Boards of appeal not to consider equivalents when assessing novelty. Therefore, in comparison with the sole relevant prior art disclosed by D2, the subject-matter of Claim 1 is novel in the meaning of Article 54 EPC. This is also the case with respect to the available prior art.

5.2.3. Inventive step (Article 56 EPC)

Since neither the not proven public prior use nor D2, which is a document within the meaning of Article 54(3)(4) EPC for the designated contracting states DE, GB, IT, NL and SE, can be considered to be comprised in the state of the art for assessing inventive step, the subject-matter of Claim 1 does not follow plainly and logically from the state of the art and involves an inventive step in the meaning of Article 56 EPC. The Board furthermore sees prima facie no reason why a person skilled in the art would be guided to the claimed subject-matter.

6. Conclusion

For the foregoing reasons, the Board considers that the reasons stated by appellant I did not prejudice the maintenance of the patent in the amended version submitted as a basis for the fifth auxiliary request filed at the oral proceedings.