T 0116/98 09-04-2003

Reasons for the Decision

1. Admissibility of the appeal

The appeal complies with the provisions mentioned in Rule 65(1) EPC and is therefore admissible.

2. Amendments - Article 123 EPC

2.1. In comparison with claim 1 as granted, minor clarifying amendments have been made to claim 1, which has also been restricted in substance by inclusion of the features of granted claim 8. No objection was raised by the appellant in relation to Article 123(3) EPC, the requirements concerned also being considered satisfied by the board.

2.2. Claim 1 requires that the range of rotation of the movable housing portion be limited such that the majority of the bundle of rays which pass through the outgoing pupil of the stationary housing portion to contribute in forming an image will also pass through the incident pupil of the movable housing portion. The bundle of light rays is from an object according to the eighth line of the claim and of these, those rays which further down the optical train pass through both pupils to contribute in forming an image are those concerned in the limitation of the movable range according to claim 1. Dependent claim 2 specifies that the radius of the outgoing pupil of the stationary housing portion be larger than that of the incident pupil of the movable housing portion. This situation can be seen in Figures 8 or 9 as filed for example. There is no doubt that the majority of the bundle of rays contributing to the image pass through both pupils. The same situation also exists in the case of for example Figure 10 as filed, where the incident pupil is larger than the outgoing pupil, a configuration claimed in claim 5. The board is therefore satisfied that the amendment to the granted claim 1 to incorporate features of granted claim 8 did not give rise to addition of subject matter as a result of interaction between the amended independent claim and the dependent claims. A similar conclusion applies to consequential amendments effected to the description.

2.3. The submission of the appellant that subject matter has been added in the combination of claims 1 and 2 relies on understanding the claims to mean that the majority of the bundle of rays leaving the stationary housing also pass the incident pupil of the movable housing. This understanding is flawed, because as correctly pointed out by the respondent, the rays concerned are just those which contribute towards forming an image and this qualification was overlooked in the analysis of the appellant. Consequently, the submissions of the appellant did not persuade the board.

3. Summary of pertinent points in evidence

Document C1

3.1. This brochure is entitled Operationsmikroskop OPMI-MD and shows various configurations of microscope and, in particular in the figures at the top of page 5, a rotational movement of binocular tubes. The German term "Schwenktubus" is used for example at the top of the last page.

Document C5

3.2. A delivery note of the appellant company to the hospital in Chur containing amongst others, item number 1, Mikroskopkörper (=microscope body) OPMI MD and item number 7, binokularer "Schwenktubus" 180 Grad.

Document C10

3.3. The invention report concerns a rotatable dovetail joint for an operation microscope. A negative answer is given to question 7 in this report concerning whether the invention had been published in any form.

Document C11

3.4. Dr Sander was employed by the appellant company as microscope developer and was involved in the demonstration at the hospital in Chur. A pre-production model was demonstrated, which was later called OPMI MD. The binocular tubes could be rotated. Dr Sander assumed knowledge of this rotation could be passed on to the potential customer (see page 7, bottom).

Document C12

3.5. Dr Sander explained the relative movements of the binocular tubes and the definition of the German term "Schwenktubus" with reference to document D1. In reply to the question of whether the demonstration at the hospital in Chur was confidential or not, Dr Sander replied that it was usual to refer in preceding meetings to preserving confidentiality at such demonstrations, when, as in the present case, the device was not on the market. He could not remember a specific confidentiality agreement in the present case.

Document C13

3.6. Mr Wolf was employed by Carl Zeiss in functions relating to marketing engineering from 1971 to 1996. He was responsible for discussion of the technical requirements in relation to the microscope for the hospital in Chur. He was responsible for the sales negotiation at the demonstration. He was instructed by the sales manager to mention the possibilities of a new microscope in development only if a matter of not losing an order. He was never told the new microscope should be kept secret and assumed this was not the case and so did not refer to maintaining secrecy at the hospital in Chur. He remembered assembling a microscope with a body, a stereo bridge and two binocular tubes at the hospital in Chur in the summer of 1987. Mr Wolf saw on 23 March 2003 that the microscope delivered is still in use in the hospital in Chur.

Document C14

3.7. Mr Ammann works as head of technical services at the hospital in Chur. He confirms that an operating microscope was entered into the inventory on the 24. August 1987. This information derives from the computer system.

Document C15

3.8. The operation microscope OPMI 6 SDFC delivered to the hospital in Chur was later exchanged for the operation microscope OPMI MD. The stereo bridge with binocular tubes could be attached to the OPMI 6 SDFC exactly as for the OPMI MD as shown in document C1. The technical differences between the OPMI 6 SDFC and the OPMI MD (4 times and 6 times zoom) are insignificant with respect to the subject matter of the patent. In order to prove this, an offer is made to take evidence from Mr Martin Wolf, who is available at the second oral proceedings.

4. Article 114(2) - Disregarding of facts or evidence not submitted in due time

4.1. A major feature of the appellant's case involved proving both delivery of a microscope to the hospital in Chur before the priority date of the patent in issue and exactly what the structure of this microscope was. Since activities of the appellant company itself were concerned, it is possible to imagine the appellant could and indeed should have been able to find out right from the start of the opposition procedure when and what had been delivered. It was therefore a surprise that right at the last moment, i.e. during the second oral proceedings in the appeal stage, the appellant submitted that a different microscope to that specified in delivery note to the hospital had in fact been delivered, which meant that the appellant itself showed that the delivery note was not accurate. Therefore, in order to have established exactly what had been delivered, further investigative work would have had to be undertaken by the board to resolve a fresh issue. For example, a technical examination of the microscopes brought along by the appellant and testimony from Mr Wolf would have been needed in an attempt to determine any differences existing between the OPMI 6 SDFC microscope which was "on loan" and the OPMI MD for which it was subsequently exchanged. Moreover, since the actual microscope concerned is apparently still in the hospital in Chur (see C13), it would have been necessary, at the oral proceedings, to have established the exact relationship between all the microscopes concerned. The position of the appellant therefore entailed so complicating the issues that just the kind of situation arose, concerning which the board warned in its summons to oral proceedings may give rise to disregarding submissions, as it was impossible to deal in a fair way with the fresh issue within the time frame of the oral proceedings. Therefore the board exercised its option under Article 114(2) EPC and declined at that late stage both to hear Mr Wolf on the differences between the OPMI MD and the OPMI 6 SDFC and to look at the microscopes brought along by the representative of the appellant.

5. Hearing the witnesses

5.1. As part of its preliminary assessment, the board examined the evidence presented, especially the brochure C1 and the delivery note C5, the declaration of invention C11 and the statement of Dr Sander C12. This examination caused the board to question the reasoning at the centre of the decision of the opposition division with respect to the German term "Schwenktubus", which is used for example in brochure C1 and delivery note C5. The doubts of the board led to a decision, subject to alteration, to hear witnesses. It is, of course, never possible in advance to be completely sure exactly how circumstances will develop following such a decision nor what testimony will result therefrom. This is why the decision is issued subject to alteration. In the present case, the matter developed in the following way.

Dr Sander - heard by the board

5.2. At the first oral proceedings, the testimony of Dr Sander put the board in a position where it was satisfied that it could decide what was understood by the German term "Schwenktubus" in the context both of the demonstration and of delivery note C5. In other words, the statement of Dr Sander enabled the board to resolve its doubts about the reasoning of the opposition division

Mr Wolf - not heard by the board

5.3. Consequent to the statement of Dr Sander, the board thus had, in advance of the second oral proceedings, no further need to hear Mr Wolf, either by requiring his attendance in Switzerland or at the EPO. Therefore, after the first oral proceedings, as the testimony offered was no longer necessary for deciding the case, the board did not pursue the matter.

Only during the second oral proceedings did it become apparent that Mr Wolf might be able to give evidence in relation to obscurities arising from the fresh issue involving newly introduced discrepancies between document C5 and what was actually delivered to the hospital in Chur. However, such evidence would no longer have concerned questions pertaining to the reasoning of the opposition division, but instead pertained to the discrepancies referred to above. At the second oral proceedings it was too late to begin to unwrap this new issue and pursue these discrepancies for the reasons given in section 5 above.

6. Alleged Prior Use - Demonstration at the hospital in Chur

6.1. The demonstration in the hospital in Chur took place before the priority date of the patent in dispute and thus can be considered "prior". The demonstration cannot however be considered public because in the view of the board there was an implied confidentiality. The board reached this view because the testimony of Dr Sander (see second paragraph on page 4 or page 6 of document C12, for example) indicates that confidentiality is usually involved where a demonstration of a microscope was concerned, where it was not definite it would come onto the market. This position of Dr Sander is also consistent with his a few months later signing the declaration of invention C10, containing a reply in the negative to the question of whether there had been a pre-publication of the invention. The temporally close answer in document C10 carries more weight in the view of the board than the statement made years later in C12 that Dr Sander could not remember a specific confidentiality agreement.

6.2. According to document C13, Mr Wolf was instructed to reveal new possibilities of the microscope only when a matter of not losing the sale. This does not amount to an instruction to make an unconditional disclosure of the technical details of the microscope as a potential commercial relationship is a precondition. He was never informed that the new microscope was to be kept secret at that time and assumed the microscope was not to be kept secret, his not indicating during negotiations at the hospital in Chur that the microscope shown was to be kept secret. This tallies with the fact that the hospital in Chur became a customer. In the board's view, not specifically indicating secrecy thus does not in itself amount to publication and thus document C13 does not amount to an unequivocal indication of an unconditional disclosure of what was demonstrated by Dr Sander. The combination of documents C11, C12 and 13 leads to the conclusion that the demonstration had an implied confidentiality and thus was not public and therefore does not constitute prior art within the meaning of Article 54(2) EPC.

7. Alleged Prior Use - Delivery to the hospital in Chur

7.1. During the entire first instance and the appeal proceedings, the appellant failed to confirm exactly what was delivered to the hospital in Chur, relying only on a delivery note of the appellant company. During the second oral proceedings in the appeal stage the appellant finally made clear its knowledge that the items delivered did not in fact even correspond exactly to the delivery note document C5. The appellant thus introduced a further and serious doubt about what had actually been delivered at a very late stage in the proceedings, which doubt called into question its entire previous submission that equipment corresponding to document C5 had been delivered before the priority date of the patent. There was no more time available for the board itself to resolve this doubt at this very late stage of the proceedings. Statement document C14 furnished just in advance of the second oral proceedings also could not heal this defect because it did not identify any details of the delivery, such as by confirming receipt of any specifically itemised post on the delivery note. Accordingly, in view of the doubt, the board had little option within the constraints of established procedural law but to reach the conclusion that delivery of a microscope corresponding to delivery note C5 could not be considered proven. The case of the appellant in this respect therefore collapsed because the board reached the conclusion that the alleged delivery has not been shown to constitute prior art within the meaning of Article 54(2) EPC.

8. Substantive Patentability

8.1. The line of argument advanced by the appellant in the appeal proceedings with respect to inventive step relied on taking into account the disclosure of the OPMI-MD microscope. The other document mentioned in the statement of appeal, document D1, played only a subordinate role in the submissions as an illustration of the appellant's view of standard practice. Accordingly, once the alleged prior use is no longer available as prior art within the meaning of Article 52(1) EPC, the entire technical assessment of the microscope involved in this alleged prior use becomes irrelevant to substantive patentability. In other words, the line of argument of the appellant falls apart because the premise upon which it is based is not valid. In consequence, no persuasive reason for challenging inventive step of the subject matter of claim 1 has been presented by the appellant. The board has thus not been presented with any reason for diverging from the position of the opposition division in relation to substantive patentability and therefore does not so do, the change effected to claim 2 not bearing on this issue.

8.2. Accordingly, the case advanced by the appellant failed to convince the board that the independent claims are directed to subject matter which cannot be considered to involve an inventive step according to Article 56 EPC.