T 1959/09 20-06-2012

Summary of Facts and Submissions

I. European patent No. 850 833 was maintained in amended form by decision of the Opposition Division posted on 10 August 2009. Against this decision an appeal was filed by the Opponents (joint Opponents acting through a common representative) on 18 September 2009 and the appeal fee was paid at the same time. The statement of grounds of appeal was filed on 10 December 2009.

II. Oral proceedings were held on 20 June 2012. The Appellants (Opponents) requested that the decision under appeal be set aside and that the patent be revoked. The Respondent (Patentee) requested that the appeal be dismissed and that the patent be maintained in the form as upheld by the Opposition Division (main request), or, in the alternative, as amended in one of the first or second auxiliary requests filed with letter dated 10 May 2010, or as amended in one of the 3rd to 5th auxiliary requests filed at the oral proceedings. Furthermore, the Respondent requested the referral of a question to the Enlarged Board of Appeal.

Claim 1 of the main request reads as follows:

"A stowable module lavatory assembly (10) for use in an airplane, comprising:

(a) a lavatory (20), when mounted in the airplane being affixed proximate an exit doorway (15) in said airplane, the lavatory (20) having a side wall (65) capable of receiving a module which is translatable from a stowed position within the said lavatory to a deployed position substantially outside of said lavatory within a doorway space (40) proximate the doorway,

(b) first locking means for securing an upper portion of said module when said module is in said stowed position and when said module is in said deployed position,

(c) second locking means for securing a lower portion of said module when said module is in said stowed position and when said module is in said deployed position;

(d) means for allowing translation of said module out of and into said lavatory;

(e) means acting as a safety brake and impact limiting mechanism during translation of said module;

(f) third locking means for securing a lower portion of said module when it is in said stowed position and when it is in said deployed position."

Claim 1 of the first auxiliary request reads as follows:

"A stowable module lavatory assembly (10) for use in an airplane, comprising:

(a) a module (25) comprising a storage container,

(b) a lavatory (20), which when mounted in the airplane is affixed proximate an exit doorway (15) in said airplane, the lavatory (20) having a side wall (65) capable of receiving said module which is translatable from a stowed position within the said lavatory to a deployed position outside of said lavatory within a doorway space (40) proximate the doorway, access to an inside of the module being available in both the stowed and deployed positions,

(c) first locking means for securing an upper portion of said module when said module is in said stowed position and when said module is in said deployed position;

(d) second locking means for securing a lower portion of said module when said module is in said stowed position and when said module is in said deployed position;

(e) means for allowing translation of said module out of and into said lavatory;

(f) means acting as a safety brake and impact limiting mechanism during translation of said module; and

(g) third locking means for securing a lower portion of said module when it is in said stowed position and when it is in said deployed position."

Claim 1 of the second auxiliary request reads as follows:

"An airplane comprising a stowable module lavatory assembly (10) for use in an airplane, comprising:

(a) a module (25) comprising a storage container,

(b) a lavatory (20) affixed proximate an exit doorway (15) in said airplane, the lavatory (20) having a side wall (65) capable of receiving said module which is translatable from a stowed position within the said lavatory to a deployed position outside of said lavatory within a doorway space (40) proximate the doorway,

(c) first locking means for securing an upper portion of said module when said module is in said stowed position and when said module is in said deployed position;

(d) second locking means for securing a lower portion of said module when said module is in said stowed position and when said module is in said deployed position;

(e) means for allowing translation of said module out of and into said lavatory;

(f) means acting as a safety brake and impact limiting mechanism during translation of said module; and

(g) third locking means for securing a lower portion of said module hen it is inn said stowed position and when it is in said deployed position."

Claim 1 of the third auxiliary request differs from claim 1 of the main request in that the wording "A stowable module lavatory assembly (10) for use in an airplane, comprising:" is replaced by the wording "An airplane with a stowable module lavatory assembly (10), comprising:".

Claim 1 of the fourth auxiliary request reads as follows:

"A stowable module lavatory assembly (10) for use in an airplane, comprising:

(a) a lavatory (20), when mounted in the airplane being affixed proximate an exit doorway (15) in said airplane, the lavatory (20) having a side wall (65) capable of receiving a module which is translatable from a stowed position within the said lavatory to a deployed position substantially outside of said lavatory within a doorway space (40) proximate the doorway,

(b) first and second locking means for securing said module when said module is in said stowed position and when said module is in said deployed position, said first and second locking means comprising spring-biased locking pins (110) supported by the lavatory (20) which spring into forward and aft receptacles (115) disposed in a top roller rail or slide (120) and a bottom lower rail or slide (125) disposed on the module;

(c) means for allowing translation of said module out of and into said lavatory;

(d) means acting as a safety brake and impact limiting mechanism during translation of said module; and

(e) third locking means for securing said module when it is in said stowed position and when it is in said deployed position, said third locking means comprising an additional latching system (145) disposed at the front of the lavatory floorpan (70)."

Claim 1 of the fifth auxiliary request differs from claim 1 of the fourth auxiliary in that the wording "A stowable module lavatory assembly (10) for use in an airplane, comprising:" is replaced by the wording "An airplane with a stowable module lavatory assembly (10), comprising:".

III. The Appellants' submissions may be summarized as follows:

Claim 1 of the main request does not comply with the requirements of Article 123(2) EPC since its features

(b), (c) and (f) extend beyond the content of the application as originally filed. Claim 1 of the application as filed (see published patent application, hereinafter designated as EP-A) defines in feature (b) "first locking means for securing said module within said lavatory in said stowed position" and in features (c) and (f) "second locking means for securing said module within said lavatory in said stowed position" and "second locking means for securing said module when it is out of said lavatory" respectively. Thus, claim 1 as filed does not provide any basis for the inclusion of the features "upper portion of said module" and "lower portion of said module" in claim 1 of the main request, nor does it provide a basis for the inclusion of the feature "third locking means". The description of EP-A likewise does not include a support for the amendments according to features (b) and (c) of present claim 1, since the description (see EP-A, column 4, lines 39-52; column 4, line 53-column 5, line 23) merely discloses a specific embodiment of the invention comprising "locking pins 110, suitably supported in the lavatory subassembly 20, which spring into forward and aft receptacles 115 disposed in at top roller rail or slide 120 and a bottom lower rail or slide 125 disposed on the module subassembly (see FIGS. 3-5)". Feature (f) of present claim 1 cannot be derived from the description of EP-A either, given that the description (see EP-A, column 4, line 53, column 5, line 4) discloses an "additional latching system 45" which "comprises a latch 150 which may be received in a recess 155 formed in the lower portion of the lavatory door 30". Consequently, said features (b), (c) and (f) of claim 1 of the main request rely on an impermissible generalization of a particular embodiment of the invention as disclosed in the description of EP-A, in contravention of Article 123(2) EPC.

The same objections apply to claim 1 of the first and second auxiliary request and therefore these requests must fail for the same reasons as stated hereinabove.

Claim 1 of the third auxiliary request does not meet the requirements of Article 123(2) EPC for the same reasons as above, for it includes the same features (b), (c) and (f) of claim 1 of the main request. It is perfectly legitimate to raise an objection pursuant to Article 123(2) EPC against this claim, given that the ground of opposition based on Article 100(c) EPC was introduced into the opposition proceedings by the Opposition Division and the compliance of amended independent claims 1 and 17 of the main request as well as of granted claim 18 with Article 123(2) EPC was considered by the Opposition Division in the impugned decision. Therefore, claim 1 of the present third auxiliary request, which is identical with claim 17 of the main request, both being based on claim 18 of the contested patent, was examined by the Opposition Division as to its compliance with Article 123(2) EPC (see impugned decision, point 3 (pages 6,7)). Hence any allegation that the aforesaid objections relating to Article 123(2) EPC against claim 17 of the third auxiliary request amount to the introduction of a fresh ground of opposition is manifestly untenable.

The fourth and fifth auxiliary requests were filed during the oral proceedings, i.e. at a very late stage of the appeal proceedings, and apparently claim 1 of these requests includes deficiencies with respect to Article 123(2) EPC. Therefore these requests should be held to be inadmissible.

IV. The Respondent's arguments may be summarized as follows:

Claim 1 of the main request does not extend beyond the subject-matter of the application as originally filed. Even though the amendments introduced into claim 1 do not literally result from the corresponding parts in the description of EP-A, nonetheless features (b), (c) and (f) of claim 1 are equivalent to the corresponding features disclosed in the description. To begin with, features (b) and (c) of claim 1 of the main request are evidently based on features (b) and (c) of claim 1 as filed (see EP-A), which respectively mention "first locking means for securing said module within said lavatory in said stowed position" and "second locking means for securing said module within said lavatory in said stowed position". Further, the features "upper portion" and "lower portion" are derived from the description of EP-A insofar as therein the terms "upper" and "lower" are used interchangeably with "top" and "bottom". In effect, the first and second locking means take the form "spring-biased locking means 110, suitably supported in the lavatory sub-assembly 20, which spring into forward and aft receptacles 115 disposed in a top roller rail or slide 120 and a bottom lower rail or slide 125 disposed on the module sub-assembly 25" (see EP-A, column 4, lines 41-47). The locking pins 110 are best shown in figure 3 adjacent, "upper and lower roller tracks 85, 95". By contrast, the forward and aft receptacles 115 into which the locking pins 110 spring forward are best shown in fig. 4 in conjunction with "upper guide rollers 165 and lower guide rollers 170" (see EP-A, column 5, lines 15-19). The Opposition Division was therefore correct in concluding that the terms "upper portion" and "lower portion", although added, found support in the application as originally filed. Finally, as to feature (f) of claim 1 as filed it appears that an obvious error has occurred, in that the term "second locking means" was erroneously used in place of the correct term "third locking means". This is supported by the disclosure of EP-A (see column 4, line 53-column 5, line 4), where it is stated that an "additional latching system 145 comprises a latch 150 which may be received in a recess 155 formed in the lower portion of the lavatory door 30". Thus, the "additional latching system" is indeed nothing else but said "third locking means". At the same time this passage likewise confirms that the terms "lower portion" and "upper portion" find a support in the application as filed.

The same arguments as set out hereinbefore apply to the objections raised against claim 1 of the first and second auxiliary request pursuant to Article 123 (2) EPC.

Claim 1 of the third auxiliary request is identical with amended claim 17 of the main request as upheld by the Opposition Division. Against this claim Article 123 (2) EPC or Article 100(c) EPC was not invoked by the Opponents nor were objections based on these grounds dealt with in the impugned decision. In particular, in the impugned decision objections based on the aforesaid grounds relating to said features (b), (c) and (f) were considered exclusively in relation to claim 1, whereas independent claim 17 was erroneously regarded as depending on claim 1 (see decision, page 6, last paragraph; page 7, first paragraph; page 15, first paragraph) and therefore no discussion at all of any of the above objections took place with respect to this independent claim. Moreover, said features (b), (c) and (f) were already included in granted claim 18 on which amended claim 17 was based. Against this background it is clear that the mentioned objections raised by the Opponents against claim 17 during the appeal proceedings amount to the introduction of a fresh ground of opposition under Article 100(c) EPC and this is not permitted without the consent of the Patentee according to the Enlarged Board of Appeal decision G 10/91 (OJ EPO 1993, 420). This was confirmed in the Board of Appeal decision T 514/04, a case in which the same legal situation occurred.

Therefore the Respondent submits the following request: "It is hereby requested that the question as to whether an existing ground of opposition raised in respect of a different independent claim amounts to a fresh ground of opposition as set out in G 10/91 be referred to the Enlarged Board of Appeal. Reference is made to T 514/04 where it was stated that "in the Board's judgement, the extent and ground for opposition mentioned in Rule 55 (c) EPC are connected in the sense that a specific claim(s) is/are objected to under a specific ground or grounds. It is inadmissible without the approval of the patentee to extend the opposition over and above this basic concept which defines both the extent to which the patent was originally opposed (cf G9/91) and the grounds originally submitted with respect to subject-matter opposed under Article 99 (1) and Rule 55 (c) EPC (cf G 10/91).

In view of the fundamental importance of this question and the clear divergence between the reasoning of the Board in T 514/04 as compared to the Board in the present proceedings, it is requested that this question be referred to the Enlarged Board of Appeal pursuant to Art. 112(1)(a) EPC in order to ensure uniform application of the law".

The fourth and fifth auxiliary requests should be admitted to the appeal proceedings since they are filed in response to the objections raised by the Appellants only during the oral proceedings against independent claim 17. Moreover respective claim 1 of these requests is prima facie allowable in view of Article 123(2) EPC and no new features possibly requiring a new search have been introduced. Therefore these requests appear to be admissible in view of Article 13(1) and (3) RPBA (Rules of procedure of the Boards of Appeal), given that in particular no case can be made out for added complexity or for the necessity of a remittal to the first instance.

V. During the oral proceedings the Respondent raised the following objection pursuant to Rule 106 EPC:

"The Patentee hereby objects under Rule 106 EPC that the procedure of the Board of Appeal at the oral proceedings on 20 June 2012 in relation to the above patent is contrary to the EPC on the grounds set out in Art. 112a(2)(c) and Art. 112a(2)(d).

In particular a ground of opposition under Art. 123(2) EPC was not raised by the Opponent or the Opposition Division in the earlier opposition proceedings in respect of claim 17 of the main request neither was it raised by the Opponent in the present Appeal. Such a ground represents a "Fresh Ground" within the meaning of G 10/91 and so should not be admitted into the proceedings without the approval of the patentee".

The Respondent further stated that said objection under Rule 106 EPC would be withdrawn in the event that the Board would remit the case to the first instance for further prosecution prior to taking any decision on the admissibility of said fresh ground of opposition raised against claim 1 of the third auxiliary request. The Board asked the Respondent whether it had been given enough opportunities and time to put its case during the oral proceedings, particularly with respect to the issue of said fresh ground of opposition, and the Respondent answered in the affirmative. The objection under Rule 106 EPC was dismissed by the Board.