T 0986/93 25-04-1995

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rules 1(1) and 64 EPC. It is therefore admissible.

2. Objection under Article 100(c) EPC

2.1. The objection under Article 100(c) EPC was raised first in the oral proceedings before the Opposition Division, which making use of the discretion given to it by Article 114(2) EPC decided to disregard that objection.

The question therefore arises whether, as argued by the Respondents, the Board having regard to what has been established in G 10/91 (supra) is barred from considering this ground of opposition without the approval of the patentee.

2.2. According to point 3 of the Opinion of the the Enlarged Board of Appeal in case G 10/91 fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

2.3. The first contention of the Respondents is that the "fresh" grounds referred to in point 3 of G 10/91 comprise any ground of opposition not covered by the statement under Rule 55(c) EPC.

However, in point 18 of the reasons, which contains the legal arguments justifying point 3 of the opinion, it is stated that

"In particular with regard to fresh grounds for opposition ... the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage."

From that statement it seems clear that the Enlarged Board did not intend that the term "fresh ground" as used in point 3 of its Opinion to be given the wide meaning contended by the Respondent but was concerned instead with a ground of opposition relied upon for the first time during the appeal proceedings.

That view is confirmed by the first sentence of point 18 of the reasons in case G 10/91 where it is stated that

"The purpose of the appeal procedure inter partes is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits."

Thus on that basis a patentee can challenge the merits of a decision to revoke his patent on the basis of a ground of opposition which was belatedly introduced into the opposition proceedings but cannot, which would be the paradoxical effect if the Respondents' contention were correct, have that decision set aside simply by the expedient of filing an appeal and then denying the Board's competence to consider that "fresh" ground of opposition.

A similar view on the obligation of a Board of Appeal to consider a ground of opposition belatedly introduced into the opposition proceedings was reached in decision T 931/91 of 20 April 1993, see point 2.1 of the reasons (decision not published in OJ EPO).

2.4. In the alternative to their broad first contention dealt with above the Respondents argue that "fresh" grounds of opposition within the meaning of point 3 of the opinion of the Enlarged Board would include a ground which although referred to by an opponent in the opposition proceedings had been disregarded by the Opposition Division pursuant to Article 114(2) EPC so that if the Board of Appeal were to consider that ground it would effectively be introducing it at the appeal stage.

Again, the Board can find no basis for that second, more limited, contention of the Respondents in the reasoning contained in G 10/91. Firstly, if an Opposition Division chooses to disregard the belated submissions concerning a new ground of opposition, that cannot detract from the fact that the ground was relied upon, i.e. introduced, during the opposition proceedings. Secondly, the procedural decision of an Opposition Division to disregard submissions forms an essential element of its decision making process and as such belongs to one of the issues subject to review when the final decision of the Opposition Division is challenged on its merits.

2.5. Although a Board of Appeal will reluctantly interfere with a discretionary decision of an Opposition Division pursuant to Article 114(2) EPC, it will do so where necessary and appropriate, see for example decision T 122/84, point 13 of the reasons (OJ EPO 1987, 177).

According to point 16 of the reasons given in opinion G 10/91 the Enlarged Board emphasised that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC should only take place before the Opposition Division in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent. A Board of Appeal in considering whether an Opposition Division exercised its discretion properly with respect to disregarding such a ground is limited in the extent of its investigations in the same way as the Opposition Division, as follows from Article 111(1) EPC. The concern expressed by the Respondents that the eventual consideration of such a ground in the appeal proceedings would mean that an opponent would be at liberty to make belated submissions in the opposition proceedings in the safe knowledge that even if the Opposition Division chose to disregard them they would in any case be taken into account by the Board of Appeal is accordingly not justified.

2.6. In the present case it is readily apparent from a comparison of Claim 1 as granted and as originally filed that in the former the features relating to the isolation of a badly damaged tire and the enhanced frequency of activating the check mode in a hazard zone had been omitted. Such an omission does not of course in itself constitute an inadmissible extension of subject- matter. However, when account is taken of the introductory description of the patent, which is identical with that of the original application, it can readily be seen that here the invention is presented as being a modification of the system known from document D1, which included means for isolating a badly damaged tire, and was intended, see column 2, lines 32 to 39, to enable by frequent sensing the quick identification of such a tire so that it could be supplied with sufficient air to delay or avoid the tire from being isolated. Thus it does indeed appear to the Board that there are strong prima facie reasons for believing that the features mentioned above which had been omitted from granted Claim 1 were essential features of the invention as originally disclosed so that the granted claim could well effectively disclose matter extending beyond the content of the original application. Thus the Board comes to the conclusion that the Opposition Division erred in deciding to disregard, under Article 114(2) EPC, the ground of opposition according to Article 100(c) EPC.

In these circumstances it is necessary to consider whether the prima facie reasons identified above are indeed supported by a detailed investigation of the original disclosure.

According to Claim 1 as originally filed it is stated that the run flat mode selector causes monitoring of tire pressure "at least several times a minute". In granted Claim 1 on the other hand it is stated that in normal operation the tire pressure is checked "several times per hour" and that in a combat zone the frequency of checking is selectively increased "for automatically more quickly detecting low tire pressure conditions, and for automatically more quickly activating the inflation modes to prevent flat tire conditions". In the opinion of the Board that functional statement in granted Claim 1, particularly when read in conjunction with the description from which it is clear that very rapid detection of a damaged tire is required, implies a checking frequency in the enhanced mode which is significantly higher than that in normal operation. In the context of the original application the reference to a frequency of several times a minute, which term is in any case of rather imprecise ambit, can be seen as being exemplary of such a higher frequency and not definitive. Thus the Board comes to the conclusion that the omission of this feature does not constitute an objectionable addition of subject-matter.

The situation with respect to the means for isolating a badly damaged tire is however different. From a reading of the original application as a whole it is apparent that these means are consistently presented throughout as an essential component of the system as originally disclosed. There is nothing there which could suggest to the skilled person that these means could be omitted or that a system without such means would be properly functional. Thus granted Claim 1 includes subject-matter extending beyond the content of the application as filed and the ground of opposition under Article 100(c) EPC holds good.

In coming to that conclusion the Board cannot accept that it has unwarrantedly curtailed the possibility of the Respondents to argue their case before two levels of jurisdiction. As is clear from point 3 of the minutes of the oral proceedings before the Opposition Division the Respondents indeed had the opportunity there to argue the matter at least to the extent necessary to convince the Opposition Division of the rightness of their case.

The main request of the Respondents must therefore be refused.

With regard to their auxiliary request it is to be noted that the feature relating to the isolation means included in Claim 1 is in somewhat more general terms than that included in Claim 1 as originally filed. That generalisation is however admissible having regard to what is said in column 5, lines 3 to 13, of the description. Thus the amendment made is sufficient to dispose of the objection under Article 100(c) EPC.

3. Novelty

The novelty of the subject-matter of Claim 1 according to the auxiliary request of the Respondents is not in dispute. It is distinguished from the closest state of the art according to document D1 by the features specified in the characterising clause of the claim.

4. Inventive step

Central tire inflation systems wherein the tire pressures of a vehicle are monitored and the tires are inflated from a central air supply or deflated as and when the need arises are well-known. The system disclosed in document D1 is primarily designed to allow the operator of the vehicle to choose tire pressures best adapted to running of the vehicle on a highway, cross-country or in sand and mud. It is also indicated that the system can supply air to a damaged tire to keep it at least partially inflated and thus maintain vehicle manoeuvrability for as long as possible. This is particularly important in the context of a military vehicle under enemy attack. Document D1 proposes a system in which the tire pressures are checked at regular intervals with the air supply lines to the tires normally being exhausted so that the rotary seal members in the line are not subjected to a differential pressure in steady state operation of the system thereby reducing wear of these components. The frequency of the checks is not specifically mentioned in the document itself but the Respondents, who are also proprietors of document D1, stated that the checks were performed at 15. minute intervals. In the case of a badly damaged tire the tire is automatically isolated from the system as soon as its pressure falls below a pre-set minimum value.

The present invention is concerned with maintaining manoeuvrability of the vehicle for as long as possible in the event of a tire being badly damaged in a hazardous operating zone for the vehicle, for example when a military vehicle is operating in a combat zone. To this end the operator of the vehicle can in such a zone select a special higher frequency check mode in which the tire pressures are checked for example several times a minute. Thus in this mode the possibility of severe damage to a tire being recognised before the pressure in that tire falls to the value that initiates isolation of the tire to the system is greatly increased and air can then be supplied more or less immediately to the tire in order to maintain it partially inflated at least for a short period of time. Although that period of time may indeed be short it is evident that the improved manoeuvrability obtained can be of significant advantage when the vehicle is say under fire or is to be brought into a firing position.

The insight underlying the present invention lies in the recognition that even if the tire is badly damaged and the full capacity of the inflation system can only prevent total deflation for a short time, then there could nevertheless be an advantage in activating the inflation mode. There is nothing in document D1 which can suggest this to the skilled person since that document teaches him that the way to deal with a badly damaged tire is to isolate it automatically from the inflation system so as to prevent unnecessary loss of air and ensure that the system can still operate with respect to the other tires. The other state of the art originally relied upon by the Appellants, document D2, is concerned with a central tire inflation system in which tire pressure is automatically adjusted as a function of vehicle velocity and can also give no lead to the skilled person in the direction of the claimed invention.

Thus the argument of the Appellants that it was a self- evident measure to check the tire pressures more frequently when the vehicle is operating in a hazard zone can only be seen as being based on hindsight knowledge of the invention and it need not be considered if, once the basic idea of the invention had been conceived, the means specified in Claim 1 for putting it into effect, i.e. in particular the use of a further switch means for selecting a mode in which the frequency of pressure checking is automatically increased, are inventive in themselves.

The Board therefore comes to the conclusion that the subject-matter of Claim 1 according to the auxiliary request cannot be derived in an obvious manner from the state of the art and involves an inventive step (Article 56 EPC). Thus this claim together with its dependent Claim 2 and the description and drawings as granted constitute a suitable basis for maintenance of the patent in amended form.