T 0681/01 28-11-2006

Summary of Facts and Submissions

I. The appeal is against the decision of the Opposition Division to revoke European patent 0 828 022, which claims a priority date of 20 September 1996, and whose independent claims as granted read as follows:

"1. A fabric material having a first finish on a first side and a second finish on a second side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side; and said second side of said fabric having substantially the same colour as said first side."

"8. A method of treating a fabric to provide a fabric material according to any preceding claim, to obtain a first finish on a first side of said fabric material and a second different finish on an opposite second side of said fabric material, characterised in that said first and second finishes are applied simultaneously by a single operation comprising the steps of:

providing said fabric material having a hydrophilic character;

applying a fluid dispersing medium to the second side of said fabric, said fluid dispersing medium comprising:

first pigment particles for providing said first finish, said first pigment particles having a first size; and

second pigment light reflective particles for providing said second finish, said second pigment particles having a second size larger than said first size;

allowing said first pigment particles to permeate substantially through said fabric to the first side while at least said second pigment particles remain substantially on the second side; and subsequently drying said fabric material."

"28. A window covering product comprising a fabric material according to any one of claims 1 to 7, or a fabric material provided by the method of any one of claims 8 to 27."

II. The patent had originally been opposed on the grounds that the claimed subject-matter lacked novelty and inventive step (Article 100(a) EPC) having regard to various prior uses alleged to have taken place before the priority date of the patent in suit, invoked by opponents 01 against all of the claims as granted, and by opponents 02 to the extent of Claims 1-7, 28 and 29 as granted. The prior uses invoked by opponents 01 were supported inter alia by the following items of evidence:

E3: Sample of fabric material (Article n. 24112/8);

E4: Sample of fabric material (Article n. 25219/9);

E5: Sample of fabric material (Article n. 40535/4325);

E6: Statutory declaration of Mr. Klaus Germes;

E7: Declaration of Dipl.-Ing T. Feicks dated

20 January 2000;

E10: Copy delivery notes n. 9508100089 and 9507200150 of 19 June 1995 concerning the delivery of fabric material corresponding to sample E4 to Aqualona Products Ltd. (GB);

E11: Copy invoices n. 1381 of 20 July 1995 and 1773 of 11 August 1995 addressed to Aqualona Products Ltd. (GB) and concerning the fabric material corresponding to sample E4;

E14: Expert opinion of Prof. Dr. Joachim Hilden on the fabric materials of samples E3 and E4;

E15: Bayer Farben Revue, 1986, 24.Jahrgang, cover page

and pages 2 and 52 to 58;

E16: Production record of fabric material 24112/8 with samples of fabric material (together with a photocopy thereof identified as E16a);

E17: Production record of fabric material 25219/9 with samples of fabric material (together with a photocopy thereof identified as E17a).

E18: Declaration of Dipl.-Ing. T. Feicks, dated

5 February 2001, explaining documentation of

articles sold to Aqualona Products Ltd.

III. The decision under appeal concerned a set of amended claims filed on 28 February 2001 as the Main Request as well as further amended claims according to Auxiliary Requests 1 to 5 submitted during the oral proceedings held on 7 March 2001.

Claim 1 of the Main Request before the Opposition division differed slightly from Claim 1 as granted to read:

"1. A fabric material ...; the particles of the first pigment having [deleted: being capable of permeating ]permeated said fabric to said first side, whereas the particles of the second pigment having remained substantially on [deleted: the ]said second side; and said second side of said fabric having substantially the same colour as said first side."

(For ease of comprehension, the Board has indicated additions compared to claim 1 as granted in bold and underlined, deletions by striking out and some unchanged passages by dots.)

The Opposition division revoked the patent having regard to prior uses invoked by opponents 01, without considering the prior use invoked by opponents 02, on the basis of reasoning which can be summarised as follows:

(a) The amendments to the claims of all the requests fulfilled the requirements of Article 123 EPC.

(b) The evidence supplied by opponent 01 was sufficient to establish that fabric materials corresponding to samples E3 and E4 had been made available to the public in 1995, thus before the priority date of the patent.

(c) As explained in document E14, microscopic analysis of samples E3 and E4 showed that these samples had a first finish of pigment on a first side, and a second finish comprising a mixture of the same pigment particles and larger pearlescent particles on the second side. According to point 3.2 of E14 from the exact correlation of the printing pattern on both sides and the slightly lower colour intensity of the first side both particles had been applied in one coating or printing step, the smaller pigment particles having permeated the fabric. Since samples E3 and E4 presented surface areas having substantially the same colour on both sides all the features required by Claim 1 were present and the claim lacked novelty.

(d) The further amendments made to the respective Claims 1 of the First and Second Auxiliary Requests did not remove the novelty objection.

(e) Claim 1 of the Third Auxiliary Request was directed to "A window covering comprising a fabric material". The term "window covering" could not be considered as implying any specific technical limitation, and samples E3 and E4 had to be regarded as suitable for window coverings. Neither this change or other changes made compared to Claim 1 as granted served to establish novelty of the Claim 1 of this request over samples E3 and E4.

(f) In Auxiliary Request 4, Claim 1 was directed to a "Reflective window covering comprising a fabric material ... having substantially equal heat and light reflective properties as a metallized fabric." As this did not prescribe any degree of heat and light reflection it could not render the claimed subject matter novel over samples E3 and E4.

(g) The Fifth Auxiliary Request had a Claim 1 based on Claim 8 as granted and directed to a method of treating a fabric. This was considered to lack inventive step over what the skilled man would learn from inspection of samples E3 and E4 and from consideration of document E15.

IV. The patent proprietors lodged an appeal against that decision and paid the appeal fee. In their statement setting out the grounds of appeal, the appellants inter alia enclosed a new Main Request and a new Auxiliary Request 1.

The respondents (opponents 01 and 02) countered the arguments in the statement setting out the grounds of appeal and raised objections against the claims of the auxiliary requests submitted therewith, and respondents 02 (opponents 02) pointed out that they had not yet had the opportunity to be heard in respect of their alleged prior use at oral proceedings before any instance.

Then, in a letter dated 8 May 2002 in response to the arguments submitted by the opponents during the appeal proceedings, the appellants enclosed further amended claims as Auxiliary Request 2.

Finally, in response to a communication of the Board in preparation of the oral proceedings (see Point VI, infra), the appellants enclosed in their letter dated 27 October 2006 a new Main Request and new First to Eighth Auxiliary Requests for consideration by the Board.

V. Oral proceedings were held on 28 November 2006, at which the appellants in response to formal objections raised by the Board to the previous main request, made the claims as granted their Main Request. After an initial debate on the subject-matter claimed in the Main Request and the First and Second Auxiliary Requests, the appellants declared that they deleted each Claim 29 from the First and the Second Auxiliary Requests filed with letter dated 27 October 2006. Then, they submitted a set of seven amended claims as the new Third Auxiliary Request.

VI. The respective Claim 1 of requests on which a decision was asked for at the closure of the debate of the oral proceedings before the Board of Appeal were as follows (for ease of comprehension, the Board has indicated additions compared to claim 1 as granted by bold and underlined, deletions by striking out and unchanged passages by dots):

Main request:

Claim 1 as granted (see point I. above).

First Auxiliary Request:

"1. A window covering product comprising a fabric material having .... side."

Second Auxiliary Request:

"1. A pleated blind or roller shade comprising a fabric material having .... side."

Third Auxiliary Request:

"1. A pleated blind or roller shade comprising a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side; and said second side of said fabric having substantially the same colour as said first side."

Claims 2 to 7 of the Third Auxiliary Request were dependent claims also directed to a pleated blind or roller shade.

VII. The appellants essentially argued as follows:

Main Request (Claims as granted)

(a) The fabric material defined in Claim 1 as granted was novel over the fabric material underlying the prior use invoked by opponents 01, in particular over that of samples E3 and E4. The distinguishing feature defined in Claim 1 as granted was "said second side of said fabric having substantially the same colour as said first side". That feature meant that a side had the same single colour as the other side and not merely that the corresponding parts on each side matched each other in colour as in samples E3 and E4. This distinction clearly appeared if the claimed feature was interpreted not literally but in the light of the description, as required by Article 69 EPC and its protocol. Since the correct interpretation of the claims should be the same whatever issue was being assessed, whether novelty, inventive step or infringement, and in the present case the appellants could not amend the invoked feature to bring out the sought-for distinction, because a more specific fall-back position was missing in the description, it was appropriate to rely on Article 69 EPC to interpret the claim in the light of the description and its purposes. From the description, in particular from Figures 3 and 4 which showed the use of doctor knives and screen printing, it was apparent that multicoloured patterns were not supported, and hence also to be excluded from the protection conferred by Claim 1 as granted. To fulfil the purpose of the invention it was essential that a substantial area of the fabric was light- and heat-reflective, which was obtainable with pigments of a single colour on both sides. Any construction of Claim 1 which ignored that would not be considered by the skilled person.

Since the feature "said second side of said fabric having substantially the same colour as said first side" had been inserted in Claim 1 in suit during the examination proceedings to achieve novelty, the description should have been adapted to the new claims. If any passages in the description still referred to multicoloured patterns, they should be deleted, and ignored for the purpose of interpreting the claim.

Contrary to the arguments of the respondents, cut-out pieces of the multicoloured patterns of fabric materials according to samples E3 and E4 having both sides of the same colour had not been made available.

(b) If novelty was nevertheless not acknowledged by the Board, then the prior use should in any case be disregarded as not proven. The evidence submitted by opponents 01 to back the invoked prior use did not comply with the standard of proof established by the case law of the boards of appeal, namely certain "up to the hilt" as in T 472/92 (OJ EPO 1998, 161). In particular, three reasonable doubts arose:

(i) whether any fabric material had actually been delivered to Aqualona before the priority date of the patent in suit;

(ii) whether that delivery was free from restrictions;

(iii) whether any of the fabric materials delivered to Aqualona was identical to the samples which were analysed as described in E14.

(b)(i) As regards the first doubt: The assertions in Declaration E6 that an order had been fulfilled and that the materials should have been received after some days from the delivery dates, had not been corroborated by sufficient evidence and thus had not been proven; the delivery notes were not the original pieces, nor were they signed; it was apparent that invoices had been prepared, not however that they had been paid; the invoices concerned several consumer goods and it had not been demonstrated whether all of them had actually been delivered; since the ordered goods were not sent directly to Aqualona Products Ltd. but to an agent, a confirmation of the receipt of the goods by the final client should have been provided. Further, the exact date on which the fabric material underlying the prior use invoked had actually been made available to the public could not be gathered from the evidence on file, because several dates were mentioned in the documents, which in any case related to the delivery of the ordered material, if any, to the agent, not to Aqualona. Hence, actual delivery of fabric materials corresponding to those of samples E3 and E4 before the priority date of the patent in suit had not been proven.

(b)(ii) If fabric materials such as those of samples E3 and E4 had been delivered to Aqualona, it had not been proven either that they were made available free of restrictions. No copy of any brochures of Aqualona promoting the delivered fabric materials for shower curtains had ever been available, let alone any copies of the standard conditions of sale between the appellants and Aqualona or a copy of the request by Aqualona for the allegedly sold materials. There was a reasonable doubt whether this was a transaction which made the material available to the public, especially because it was not contested that the opponents made the fabric materials corresponding to samples E3 and E4 for the first time for Aqualona. Since the quantities of the fabric material alleged to have been delivered was not too big a quantity for a sample, the selling of the products was implicitly confidential as established in T 472/92 (supra). If there was any doubt about confidentiality, it should be exercised in favour of the appellants, since the onus of proof of the alleged public prior use was on the respondents.

(b)(iii) Even assuming that the fabric materials were delivered to Aqualona free of restrictions, there was no conclusive evidence on file that the fabric materials of samples E3 and E4 were identical to the fabric material delivered, hence that the material sold was identical to the samples analyzed in E14. It had been declared that samples E3 and E4 were taken from a sample store, but no evidence of the content of that store, let alone of the allegation that for every new material a sample was placed in that store, had ever been provided. Hence, the origin had not been proven either. Since samples E3 and E4 were not labelled, as were samples E16 and E17 for instance, they could have been made and replaced at any time in that store. Also the argument that a single sample number (24112/8) ensured the continuity and identical correspondence of the characteristics of the fabric material was not convincing in the absence of any proof thereof. In any case, internal documents of the opponents would not be sufficient to inevitably prove a prior use, as established in T 595/89 (not published in the OJ; Reasons, 3.1). Summing up it was impossible to know from E14 or from any other item of evidence on file whether the fabric materials alleged to have been made available to the public by opponents 01 in 1995 possessed all of the features of Claim 1 in suit.

(c) As regards samples E16 and E17, nobody had ever argued that those fabric materials were supplied to Aqualona nor that they were identical to the fabric materials claimed in the patent in suit. Some delivery dates had in fact been changed, showing that it would have been possible to change the dates mentioned in the cards accompanying the samples. In any case, samples E3 and E4 differed from those attached to E16 and E17. And there was no trace left of any individual numbers and dates normally allocated to any single roll of any prepared fabric materials.

First Auxiliary Request

(a) The amendments to the claims of the First Auxiliary Request had a basis in Claims 1 and 28 as granted, which were based on those as filed. In particular, the protection conferred had not been extended. The amendments aimed at overcoming the grounds of opposition lack of novelty and lack of an inventive step.

(b) The appellants did not consent to the introduction of a fresh ground of opposition under Article 100(b) EPC against Claim 8, in view of the feature "having a hydrophilic character", which was present in the claims as granted and had not been objected to during the opposition proceedings.

(c) As to novelty, the feature "window covering product" differed from the feature "a product suitable for window covering", because the former actually stood ready as a window covering product that should simply be put on the window, whereas the latter only was suitable for that purpose. As regards the purpose of the covering action, it was the reflection of heat and light as described in the patent in suit. Since the fabric materials for shower curtains corresponding to those of samples E3 and E4 were not suitable for heat and light reflection, the claimed subject-matter was novel.

Second Auxiliary Request

(a) The amendments to the claims of the Second Auxiliary Request had a basis in the application as filed. Claim 8 was clear, since the feature "to provide a pleated blind or roller shade" included the making of pleats and roller shades.

(b) Claim 1 according to the Second Auxiliary Request was restricted to a pleated blind or roller shade. A pleated blind required that at least one pleat was present, and a roller shade required the presence of a roller. Since the fabric materials of E3 and E4 did not contain any of pleats and rollers, the objection of lack of novelty had been overcome.

Third Auxiliary Request

(a) The amendments to the claims of the Third Auxiliary Request had a basis in the application as filed and aimed at overcoming the grounds of opposition lack of novelty and lack of an inventive step.

VIII. The respondents 01 and 02 essentially argued as follows:

Main request

(a) Fabric materials having a single colour on both sides were not sought-for by the appellants themselves, who had neither excluded multicolour patterns in the application as filed nor restricted the claims to that during the examination proceedings. The approach to claim interpretation of the appellants was not acceptable, so that multi-coloured patterns on both sides of the fabric materials fell under the scope of Claim 1 in suit and destroyed its novelty.

(b) The evidence put forward showed conclusively that material in accordance with samples E3 and E4 had been manufactured and delivered to Aqualona, without any obligation of confidentiality, well before the priority date, and the analysis of samples E3 and E4 given in document E14 showed that all features required by claim 1 were met. In particular, the identity between the material of samples E3 and E4 and that delivered to Aqualona was proven by their same identification number. samples E16 and E17, found during further searches in the premises of the opponents, anyhow showed the actual production of fabric materials corresponding to those of samples E3 and E4 at the time the order from Aqualona was placed.

(c) As regards the many objections raised by the appellants, the position of the respondents was:

(i) since the numbering of the fabric materials was consistent, more information on the sample store was not necessary;

(ii) the dates of 1998 on the delivery notes had automatically been printed by the electronic system and were not related to the actual dates of the orders;

(iii) the numbering VAL 81.13.00 on E11 was not a date;

(iv) the data on E16 and E17 corresponded to the data on the delivery notes and invoices;

(v) the lapse of time between the dates on the delivery note E10 and those on invoice E11 was not longer than a normal one;

(vi) the quantities of the fabric materials processed were clear indication that the delivery did not concern samples;

(vii) the material was delivered to the client many months before the priority date of the patent in suit, such that it must have been available to the public before that date.

First Auxiliary Request

(a) Claim 1 of the First Auxiliary Request had been limited to a window covering product, the meaning of which was however not clear. The amendment thus contravened the requirements of Articles 123(3) and 84 EPC.

(b) Opponents 02 voiced for the first time a new ground of opposition under Article 100(b) EPC against Claim 8, in view of the presence of the feature "having a hydrophilic character".

(c) As to novelty, if the claims were allowable, since the term "window covering" merely designated the intended use of the fabric material, that restriction could be disregarded. In particular, it was contested that a window covering product was in a form having only the function of heat and light reflection. Instead many other functions such as ensuring privacy, providing decoration, sight protection, obscuring, etc. fell under the term "window covering" in Claim 1. Therefore, the feature introduced in Claim 1 did not bring any new distinction and the claim still lacked novelty over the prior use invoked by opponents 01.

Second Auxiliary Request

(a) Since according to the sole embodiment described in the application as filed pleated blinds and roller shades required a pearlescent side to replace the metallised side of known products, the amendments to the claims of the Second Auxiliary Request, which did not include the further limitation "pearlescent side", had no basis in the application as filed and did not comply with Article 123(2) EPC.

(b) Also, Claim 8 referred to a method of treating a fabric to provide a pleated blind or roller shade but did not define any steps of making a pleated blind and roller shade. Moreover, in the application as filed, there was no basis for a process where the fabric material was then converted to a pleated blind or roller shade. Therefore, Claim 8 was open to an objection of lack of clarity or of added subject-matter.

(c) Consequently, the Second Auxiliary Request was not allowable.

Third Auxiliary Request

(a) No objections were voiced against the amendments to the claims of the new Third Auxiliary Request filed during the oral proceedings before the Board.

(b) Opponents 01 objected that the fabric material of sample E5 was still prejudicial to novelty. Since that objection had not been dealt with in the decision under appeal, it would however be pursued upon remittal to the first instance.

(c) Opponents 02 objected to lack of an inventive step over a brochure included in the evidence of the prior use invoked by them. However, they acknowledged that also that point had not been dealt with in the decision under appeal, and thus would be pursued upon remittal of the case to the first instance.

IX. The appellants (patent proprietors) requested that the decision under appeal be set aside and that the patent be maintained as granted as Main Request or on the basis of the set of claims submitted as First or Second Auxiliary Request claims filed on 27 October 2006 or as Third Auxiliary Request on the basis of the seven claims submitted at the oral proceedings on 28 November 2006.

X. The respondents 01 and 02 (opponents 01 and 02) requested that the appeal be dismissed.