T 2978/19 15-06-2023

Reasons for the Decision

1. Admissibility of the appeal - Rule 99(2) EPC

The parties did not put forward any new arguments on the admissibility of the appeal during the oral proceedings. Therefore, the Board remains of the opinion it expressed in the communication under Article 15 RPBA 2020 and does not find the reasons of the respondent persuasive.

The respondent acknowledged that the appellant provided reasons for setting aside the contested decision at least for some of the objections under Article 100(a) EPC (see reply to the statement setting out the grounds of appeal, first and last sentence of the paragraph bridging pages 27 and 28). The fact that for at least one ground for opposition reasons were provided for setting the contested decision aside alone prevents the appeal from being inadmissible since the admissibility of an appeal can only be assessed as a whole (Case Law of the Boards of Appeal, 10th edn., V.A.2.6.8).

In addition, the fact that a submission of the appellant may not be persuasive in substance is no reason for considering the appeal unsubstantiated to the extent that it is inadmissible. It is the right of the appellant to put forward the line of reasoning it sees fit for its interests. The submissions of the appellant in the statement setting out the grounds of appeal concern the objections in dispute and aim at explaining why it considers the reasons given in the contested decision not appropriate. These reasons are, independently of their merits, sufficient for the requirements of Rule 99(2) EPC to be considered fulfilled. The respondent's position on these arguments relates to their suitability for justifying a revision of the decision rather than to the lack of a substantiation of the grounds of appeal.

In view of the above, the appeal is admissible.

2. Admittance of A5

2.1 A5 in the opposition proceedings - Article 12(2) RPBA 2020

Document A5 was filed by the opponent (now appellant) during the opposition proceedings and before the final date fixed by the Opposition Division under Rule 116(1) EPC.

The patent proprietor (now respondent) objected to its admittance during the oral proceedings before the Opposition Division (see point 1.2 of the minutes).

According to the minutes, the discussion on its admittance was made conditional on the use of it by the opponent (see point 1.3 of the minutes). No further use of A5 by the opponent, or of the submissions made in it, is mentioned in the minutes. The decision of the Opposition Division does not contain any reference to A5.

The appellant insists that in the discussion on sufficiency of disclosure, it repeatedly referred to the mathematical considerations in document A5. At least the document's part dealing with sufficiency of disclosure was thus to be considered part of the Opposition Division's decision. It conceded that the other parts of the document did not play a part during the oral proceedings in opposition.

The Board concludes from this that the Opposition Division did at least not explicitly decide on the admittance of A5. In addition, the decision is not based on this document within the meaning of Article 12(2) RPBA 2020, at least for the parts not on sufficiency of disclosure.

2.2 A5 as part of the statement setting out the grounds of appeal - Article 12(3) and (4) RPBA 2020

2.2.1 The appellant referred to A5 in its statement setting out the grounds of appeal. Even if a mere reference to submissions filed during opposition proceedings normally does not suffice for considering the content of these to have been filed in appeal (see point 2.3 below), the mention of section 2.4 of A5 in a mathematical discussion (see statement setting out the grounds of appeal, page 6, fourth paragraph onwards) allows an assessment of this content of A5 without putting an undue burden on the Board and the respondent. This portion of A5 is thus considered to be part of the appellant's complete case within the meaning of Article 12(3) RPBA 2020.

2.2.2 A5 was filed after the opposition period and was thus late filed. As mentioned above, the document's content is not referred to in the decision of the Opposition Division, although the appellant insists that its content was referred to during the oral proceedings and thus had to be taken into account for sufficiency of disclosure. Nevertheless, the technical content of point 2.4 of A5 corresponds to technical considerations related to the discussion about Article 100(b) EPC in opposition proceedings, and while there is not a trace of its content in the decision, there is also no trace that the then opponent did not maintain this submission. Thus, the Board - giving the appellant the benefit of the doubt - accepts that point 2.4 of A5 was admissibly raised and maintained in the proceedings leading to the decision under appeal. Consequently, it is not an amendment within the meaning of Article 12(4) RPBA 2020.

2.2.3 As point 2.4 of A5 is not an amendment and is part of the case presented with the statement setting out the grounds of appeal, there is no reason to exclude this part of A5 from the appeal proceedings.

2.3 Content of A5 not part of the statement setting out the grounds of appeal - Article 12(3), (5) and (6) RPBA 2020 and Article 13(1) RPBA 2020

2.3.1 The mere reference to A5 "by full reference" in the statement setting out the grounds of appeal (see last paragraph of page 1) cannot substantiate the use of A5 as a whole in the appellant's case (see Case Law of the Boards of Appeal, 10th edn., V.A.3.2.2, in particular R 8/16, Reasons 38). Thus, A5 (excluding section 2.4; see above point 2.2) is not part of the complete case presented by the appellant under Article 12(3) RPBA 2020.

2.3.2 A similar reference "in full" was made in the letter dated 22 February 2021 (see penultimate paragraph of page 1) which cannot amount to a substantiation of the relevant content of A5 on the same grounds as above.

2.3.3 Finally, a reference to pages 6 and 7 of A5 was made in the letter of the appellant dated 13 April 2022 (see second paragraph of page 15) in the discussion about the effect of wall thickness and material properties. However, no reasons were provided in this letter as to why this was only raised after the statement setting out the grounds of appeal. In any case, the technical aspects discussed are not relevant in view of the interpretation of claim 1 by the Board (see point 4.2 below).

For the above reasons, the Board does not admit the content of A5 (apart from section 2.4) into the appeal proceedings since it was either never substantiated - concerning its content apart from pages 6 and 7 and section 2.4 - or late filed and not prima facie relevant (Article 13(1) RPBA 2020).

3. Admittance of L1, L2 and L3 - Article 13(1) RPBA 2020

Documents L1, L2 and L3 were filed after the appellant had filed its statement setting out the grounds of appeal. Thus, the Board has discretion to decide on their admittance under Article 13(1) RPBA 2020.

L1, L2 and L3 were filed in connection with the objection under Article 100(b) EPC. They relate to experiments carried out to show that just replacing a sliding support with a connecting plate cannot result in the effect of axially incurring "the plastic compressive deformation" (feature 1.5.3).

As the Board interprets claim 1 in a way which does not imply that only replacing the sliding supports with connecting plates results in this effect (see point 4.1 below), the content of L1, L2 and L3 is not prima facie relevant for the outcome of the case.

Thus, L1, L2 and L3 are not admitted into the appeal proceedings.

4. Sufficiency of disclosure - Article 100(b) EPC

4.1 Interpretation of feature 1.5.3 (for ensuring that they axially incur the plastic compressive deformation)

The appellant argued that claim 1 defined the effect of feature 1.5.3 as a consequence of replacing some sliding supports with connecting plates (features 1.5 and 1.5.1) such that the connecting plates only separate two consecutive collapsible tubular elements (feature 1.5.2). The claim thus required the connecting plates - and them only - to ensure the axial compression, which was technically not possible, as shown by theoretical considerations and experiments.

As the claim language was clear, it did not need any further interpretation and, in any case, paragraph [0040] of the patent specification merely concerned a preferred embodiment of the invention.

This is not persuasive.

Feature 1.5.3 has to be interpreted in a way which makes technical sense in view of the whole patent specification. The skilled person reading the patent specification understands the guiding role of the sliding supports engaged in the guide rail (features 1.2, 1.2.1 and 1.2.2 to 1.2.5) during the irreversible compressive deformation defined in feature 1.3.6 (i.e. "the plastic compressive deformation" of feature 1.5.3).

Even if the skilled person's common technical knowledge were not enough to allow them to understand this, paragraph [0040] of the patent specification makes it clear that the sliding supports "are still necessary for supporting the plurality of collapsible tubular elements (4) (4), but they can be used in a smaller number, in the amount necessary for guaranteeing an adequate support to the collapsible tubular elements (4)" (see column 6, lines 16 to 21; emphasis added). This has the advantage of being "less unwieldy and less expensive than the sliding supports (3) as they only have to separate two consecutive collapsible tubular elements (4) for ensuring that they axially incur the plastic compressive deformation (folding) which has been discussed in the preceding" (see column 6, lines 21 to 27; emphasis added). In other words, a sufficient number of sliding supports has to be present to ensure that the axial plastic compressive deformation warranted by the guiding of the sliding supports along the guide rail still occurs. Consequently, the effect defined in feature 1.5.3 cannot be attributed only to the substitution of sliding supports with connecting plates (i.e. it is not based on the connecting plates alone).

In view of this interpretation of feature 1.5.3, the arguments of the appellant based on an alleged lack of disclosure of how to achieve the axial plastic compressive deformation by means of only substituting sliding supports with connecting plates must fail.

4.2 Disclosure of the substitution of sliding supports

4.2.1 The appellant argued that the patent did not provide any guidance for the skilled person as to how to substitute sliding supports with connecting plates. Therefore, the enormous number of possibilities for replacing sliding supports in a road crash cushion represented an undue burden for the skilled person.

4.2.2 However, this is based on an incorrect interpretation of claim 1 as a whole. The argument of the appellant amounts to saying that the invention consists of the modification of a known roadside crash cushion comprising tubular elements fulfilling feature 1.3.6 fixed to an optimised minimal number of sliding supports. According to the appellant, the skilled person would not be able to substitute some of these sliding supports in the known roadside crash cushion with connecting plates (as defined in features 1.5 to 1.5.3) without incurring lateral bending of the tubular elements connected by a connecting plate in an impact - as allegedly proved by the mathematical considerations supported by, among others, A5, L1, L2 and L3.

This interpretation is not convincing.

4.2.3 Claim 1 defines a set of conditions which must be simultaneously fulfilled by the invention. In this case, considering first the invention of the preamble of claim 1 and then attempting to modify it along the lines of the characterising portion, similar to a kind of "problem-solution approach", is not appropriate.

Feature 1.3 defines collapsible tubular elements supported by a plurality of sliding supports (features 1.2 and 1.3.3).

Feature 1.3.6 defines some properties of each collapsible tubular element.

Features 1.5 to 1.5.3 define connecting plates arranged "in substitution in a certain corresponding number of sliding supports" (1.5.1) that separate two consecutive collapsible tubular elements (1.5.2). The skilled person understands from the ensemble of features 1.5.1, 1.5.2 and 1.3.3 that some consecutive tubular elements are connected by connecting plates, while the ensemble of the tubular elements is still supported by sliding supports. This does not mean that the number of sliding supports is already at its absolute minimum possible so that any replacement of a sliding support with a connecting plate will render the cushion instable when a crash occurs. Instead, the skilled person learns from paragraph [0040] to use both connecting plates and sliding supports together - with the sliding supports being used in smaller numbers but still in the amount required to ensure adequate support. The term "adequate" in this context has to be read with a mind willing to understand the invention and thus means "adequate to ensure proper behaviour during compressive deformation" and not just - as argued by the appellant - to prevent the cushion from falling to the ground.

Feature 1.5.3 defines that the claimed arrangement results in that the tubular elements "axially incur the plastic compressive deformation" (emphasis added). This plastic deformation can only be the one defined in feature 1.3.6 (irreversible compressive deformation which determines the collapse of each tubular element along its development axis). Irrespective of the clarity aspects of this feature (which are not a ground for opposition), a limitation is defined by this feature. The resulting structure must be such that a deformation as defined in feature 1.3.6 takes place (see preceding point 4.1). In this context, the description of the patent specification repeatedly refers to a "folding deformation" of the collapsible tubular element. According to paragraph [0020], it is known to design collapsible tubular elements such that an axial force determines a plastic compressive deformation (folding) without any need to use any support or guide bars (see column 3, line 54 to column 4, line 1 and also column 4, lines 6 to 10), the collapsible tubular elements of the invention being designed in line with this principle (see column 4, lines 1 to 3). Furthermore, according to paragraph [0025], ribs developing along a perpendicular pathway with respect to the development axis of the collapsible tubular element can be used, which are "conformed" to guide the plastic deformation of the collapsible tubular element. Such collapsible tubular elements are shown in the figures with repetitive inwardly curved annular wall sections prone to collapse. This information of the patent specification is sufficient to enable the skilled person to put the invention into practice. Axially compressible elements are known to the skilled person, a fact which is consistent with such elements being also disclosed, for example, in prior-art documents D2, Figures 10 to 13 and D9, Figure 1D.

4.3 Feature 1.3.6 (collapse when subjected to a critical force value)

4.3.1 With respect to feature 1.3.6, the appellant argued firstly that any tubular element would collapse when a sufficient axial force was applied.

This cannot support an objection of lack of disclosure since the argument inherently implies that any tubular element behaves in the claimed way. Thus, as soon as the skilled person arranged any tubular element, this feature of the invention would be automatically implemented. No lack of disclosure can be seen in this.

4.3.2 In the alternative, the appellant argued that if this were not the case, the patent specification would fail to disclose what rendered the collapse possible when the "critical force value" was applied.

This argument is likewise not persuasive. The skilled person with knowledge of mechanics is well aware of how to produce a collapsible tubular element which behaves as defined in feature 1.3.6, as discussed above. Furthermore, one way of implementing this feature is disclosed in the patent specification (see paragraphs [0020] and [0025] and the disclosure of ribs (9) in the figures).

5. Added subject-matter - Article 100(c) EPC

5.1 Alleged non-limiting character of feature 1.3.6

The appellant argued in the first place that feature 1.3.6 did not represent a limitation of the scope of protection since all tubular elements complied with the requirements of this feature.

However, even if this were the case, the Board cannot see any implication for the issue of added subject-matter. It is only relevant in this respect whether the feature was disclosed in the originally filed application.

5.2 Basis of feature 1.3.6

The arguments of the appellant on the alleged absence of a necessary collapse in feature 1.3.6 of granted claim 1 are not convincing since feature 1.3.6 has an almost literal basis in lines 16 to 22 of originally filed page 4 (i.e. of the A1 publication of the PCT application). The correspondence of this passage with feature 1.3.6 has not been disputed.

5.3 Alleged unallowable intermediate generalisation

5.3.1 Thus, the only relevant question for the discussion about added subject-matter is whether feature 1.3.6 was originally disclosed only in connection with other inextricably linked features missing from granted claim 1.

The Board concludes that this is not the case for the following reasons.

5.3.2 The appellant argued that feature 1.3.6 was originally disclosed only in combination with:

- the absence of support and guide bars

- collapsible tubular elements defining a hexagonal cell

These two features were not disclosed as "preferable" in the originally filed description and were therefore to be regarded as compulsory in the embodiment from which feature 1.3.6 was extracted.

This is not persuasive.

5.3.3 Originally filed claim 1, which disclosed the invention in its broadest terms, did not define the absence of guide and support bars as a feature of the invention. Thus, the skilled person reading the original disclosure is aware that the invention concerns a roadside crash cushion as defined in originally filed claim 1 and that although the absence of support and guide bars is mentioned as an advantage of the invention (see page 3, lines 7 to 9) and is also mentioned in the context of the example (page 4, lines 23), the invention was claimed without this feature. Thus, when reading line 23 of page 4, they would immediately understand that the information presented corresponds to this advantage, as correctly considered by the Opposition Division. As a consequence, even if not including the feature "does not comprise support and guide bars" in the definition of the claim were to be seen as an intermediate generalisation over the disclosure of the embodiment, it would be an allowable intermediate generalisation as this level of generalisation was originally disclosed in the wording of claim 1 as filed.

5.3.4 Concerning the "hexagonal cell", this feature is originally disclosed in connection with a collapsible tubular element formed by a first and a second portion (see page 6, lines 5 to 7). As the first and second portions are explicitly disclosed as optional (see page 5, lines 20 to 22), the hexagonal shape used for them is likewise to be seen as optional.

Originally filed page 3, lines 23 to 25 states that "specific embodiments of the invention will be described in the following description [...] with the aid of the appended tables of drawings" (emphasis added). Nothing in this sentence implies that the general invention must comprise all features disclosed in the drawings, let alone the hexagonal cell feature.

6. Novelty - Article 54(2) EPC

6.1 D1

6.1.1 Granted claim 1 defines "connecting plates" (feature 1.5) used in substitution in a certain corresponding number of sliding supports of the plurality of sliding supports (feature 1.5.1) that only have to separate two consecutive collapsible tubular elements (feature 1.5.2). Features 1.3.7a, 1.3.7b, 1.3.8a and 1.3.8b further specify that an end of the collapsible tubular element can be fixed to the fixing plate of a sliding support or to a connecting plate.

Thus, the connecting plate in claim 1 must be a separate and distinguishable element that provides the same fixing function as the fixing plate of the sliding supports. Furthermore, it must be a plate by definition, as the skilled person understands from the mere reading of claim 1.

6.1.2 Document D1 discloses modules comprising a series of expanded plastic sheets (22) sandwiched in face-to-face contact (see column 2, lines 38 to 40 and also Figure 8 reproduced below).

FORMULA/TABLE/GRAPHIC

Even if the plastic sheets (22) could be considered "collapsible tubular elements" within the meaning of claim 1, the mere mutual contact of their faces does not represent a "connecting plate" within the meaning of claim 1 since no separate and distinguishable element can be seen to which the collapsible tubular elements are fixed in a similar manner to the fixing plates (60, 64, 66, 68) of the sliding supports (80).

6.1.3 Thus, the subject-matter of claim 1 differs from D1 at least in the features related to the connecting plates (1.5, 1.5.1, 1.5.2, 1.3.7b and 1.3.8b).

6.2 D2

D2 discloses barrels (14) containing a crushable module (64) (see paragraph bridging columns 3 and 4 and Figure 8 reproduced below). The argument of the appellant according to which the strengthened end faces of the barrels represented "connecting plates" within the meaning of claim 1 cannot be accepted in view of the interpretation of this feature that the Board has adopted (see point 6.1.1 above). Even if the barrels (14) could be regarded as "collapsible tubular elements" and comprised strengthened ends - and even if the barrels were connected to each other, these ends would not be a separate and distinguishable element to which the barrels (14) - as a whole - would be fixed in a similar way as to the sliding supports (38).

FORMULA/TABLE/GRAPHIC

6.3 D6

6.3.1 D6 discloses a roadside crash cushion (see D6a, page 1, "Background of the invention"), comprising:

a guide rail (Figure 7; 200) fixed to a road surface;

a plurality of sliding supports (130) which slidably engage along the guide rail (200);

a plurality of collapsible tubular elements (101),which are made of a plastic material, which are arranged horizontally one following another (see Figure 10a), which are supported by the plurality of sliding supports (130) and which each have a straight development axis and are fixed to the plurality of sliding supports (130);

wherein each sliding support (130) of the plurality of sliding supports (130) comprises a fixing plate (120, 121) and a carriage (210) which is connected to the fixing plate (120, 121) and which engages with the guide rail (200);

the road side crash cushion comprising a plurality of connecting plates (400) that only have to separate two consecutive collapsible tubular elements (101);

each collapsible tubular element (101) of the plurality of collapsible tubular elements (101) being provided with:

a first end fixed to the fixing plate (120, 121) of a first sliding support (130) of the plurality of sliding supports (130) or to a first connecting plate (400) of the plurality of connecting plates (400);

a second end fixed to the fixing plate (120, 121) of a second sliding support (130) of the plurality of sliding supports (130) or a second connecting plate (400) of the plurality of connecting plates (400).

This was not contested.

Thus, D6 discloses features 1, 1.1, 1.1.1, 1.2, 1.2.1, 1.3, 1.3.1, 1.3.2, 1.3.3, 1.3.4, 1.3.5, 1.2.2, 1.2.3, 1.2.4, 1.2.5, 1.5, 1.5.2, 1.5.3, 1.3.7a, 1.3.7b, 1.3.8a and 1.3.8b.

6.3.2 The respondent argued that the plates (400) of D6 were not disclosed as substituting sliding supports (130) (feature 1.5.1).

However, this is not persuasive since the only requirement for the connecting plates within the meaning of claim 1 is that they can be used for fixing the collapsible tubular elements in a similar manner to the fixing plates of the sliding support (see point 6.1.1 above).

Since the collapsible tubular elements (waste tyres (101)) of D6 are fixed to the plates (400) - see fixing bars (102), bolts (103) and nuts (104) in Figure 10a reproduced below - and to the fixing plates (120, 121) basically in the same way, the plates (400) represent connecting plates used to substitute a certain corresponding number of sliding supports (130) of the plurality of sliding supports (130) as defined in feature 1.5.1. This feature is thus disclosed by D6.

FORMULA/TABLE/GRAPHIC

6.3.3 The appellant argued that claim 1 encompassed embodiments in which the "critical force value" causing an irreversible compressive deformation (feature 1.3.6) did not have to be the result of the normal use of a road crash cushion but could be a higher value.

The Board is not persuaded by this argument.

The literal reading of the claim proposed by the appellant does not make technical sense in the technical field of the invention. The claimed invention is a roadside crash cushion (feature 1). The skilled person reading claim 1 understands that the forces causing the deformation defined in the claim must be in the order of magnitude encountered during normal use of the roadside crash cushion since the deformation is responsible for absorbing the energy associated with these forces. This energy absorption during a vehicle crash is the inherent aim of a roadside crash cushion.

Consequently, when interpreting claim 1 in a way which makes technical sense, the irreversible compressive deformation defined in feature 1.3.6 must be the consequence of the normal use of a roadside crash cushion (i.e. due to a vehicle impact).

6.3.4 D6 discloses that the waste tyres (101) recover their shape after a collision thanks to the openings (101a), which allow air to be expelled or absorbed (see D6a, page 5, second paragraph; page 6, lines 22 to 24; and also paragraph bridging pages 7 and 8). This represents a reversible deformation of the "collapsible tubular elements" (101) and not an "irreversible compressive deformation" as defined in feature 1.3.6.

As there is no clear and unambiguous disclosure of an "irreversible compressive deformation" of the waste tyres (101) of D6 during normal use of the roadside crash cushion, feature 1.3.6 is not disclosed in this document.

6.4 D7

6.4.1 The appellant argued that claim 1 did not define that the straight development axis of the tubular elements defined in features 1.3.4 and 1.3.6 had to be arranged horizontally during use.

This is not persuasive in view of the interpretation of claim 1 from the viewpoint of the skilled person.

Claim 1 relates to a road crash cushion in which several features are defined concerning a deformation resulting in the absorption of energy typical for roadside crash cushions (see point 6.3.3 above). It would run against any logic from a technical point of view that the skilled person interpreted feature 1.3.6 as if the deformation defined (i.e. along the development axis of the collapsible tubular element) could occur as a consequence of any forces, including even those not arising from the normal use of the roadside crash cushion.

Thus, feature 1.3.6 has to be interpreted as a deformation (collapse) taking place along the development axis during normal use of the roadside crash cushion (i.e. a vehicle impact).

6.4.2 The tubular buffer elements (14) of D7 are arranged with their development axis in a vertical direction (see Figure 1 reproduced below). Consequently, they are not deformed along their development axis during the normal use of the device. Thus, feature 1.3.6 is not disclosed in D7.

FORMULA/TABLE/GRAPHIC

6.4.3 Furthermore, the reinforced apertures (50) provided with holes in the diaphragm members (24) are not regarded as "carriages" by the skilled person since they do not fit the usual technical meaning of the term (i.e. a wheeled element).

6.4.4 The Board also disagrees with the alleged disclosure of the "fixed" feature (features 1.3.7a, 1.3.7b, 1.3.8a and 1.3.8b) by the wording "mounted upon" (lines 27 to 30 of column 3). The skilled person, looking at Figure 1 of D7 when reading the description, would not understand that there is a fixation of the buffer elements (14) to the diaphragm members (24) or interior panels (22). On the contrary, in light of the whole disclosure of D7, the expression "mounted upon" must be interpreted as a mere containment of the buffer elements (24) within the space defined by the diaphragm members (24) and interior panels (22) with the assistance of the restraining cables (48). Thus, features 1.3.7a, 1.3.7b, 1.3.8a and 1.3.8b are not disclosed in D7.

6.5 D3, D4 and D5

6.5.1 The appellant did not put forward any new arguments against the novelty of claim 1 over D3, D4 or D5. Thus, the Board maintains the opinion expressed in its communication under Article 15(1) RPBA 2020.

6.5.2 The appellant did not explain where the features of claim 1 can be found in D3.

The Board agrees with the respondent in that at least the following features cannot be identified in D3:

- The "sliding supports" comprising a "fixing plate" (rib 38) do not comprise a carriage as in features 1.2.3, 1.2.4 and 1.2.5 but directly engage the rail (20) thanks to a correspondingly shaped recess (34).

- No connecting plates (feature 1.5) in substitution of a certain corresponding number of sliding supports of the plurality of sliding supports can be found in D3 (feature 1.5.1). (Note: ribs 38 are slidably connected to rail 20 and thus are fixing plates of sliding supports rather than connecting plates.)

- Consequently, the related features 1.5.2 to 1.3.8b are missing as well.

- In view of the interpretation of the feature "along the development axis of the collapsible tubular element" explained above (see point 6.4.1), feature 1.3.6 is also not disclosed in D3 (see Figure 1).

6.5.3 The appellant did not put forward any argument for objections of lack of novelty based on D4 or D5 in spite of the heading of point 14.6 of the statement setting out the grounds of appeal.

Thus, no such objection has been substantiated based on these documents, and the Board has not taken them into consideration.

6.6 D9

6.6.1 The appellant argued that the only requirements of a "fixing plate" within the meaning of claim 1 were that the fixing plate was connected to a carriage (feature 1.2.4) and that it was connected to an end of the tubular element (features 1.3.7 and 1.3.8). Since the "structural frames" disclosed in paragraphs [0031] and [0032] of D9 fulfilled these conditions, they represented such fixing plates.

This is not persuasive in view of the common technical understanding of the "plate" feature.

The Board agrees with the respondent that a fixing plate is a type of structural frame. Thus, the general disclosure of a frame (or the specific disclosure of "angle irons", see [0031] of D9) cannot take away the novelty of the particular case of a plate. Thus, feature 1.2.2 (fixing plate) and its related features 1.2.4 (carriage connected to the fixing plate) and 1.3.7a/1.3.8a (tubular elements connected to the fixing plate) are not disclosed in D9.

6.6.2 The appellant also argued that the tubular elements of D9 not supported by support posts were connected to other tubular elements at their ends, thus forming connecting plates.

This is not persuasive either.

Firstly, paragraphs [0031] and [0032] do not disclose in a clear and unambiguous manner an embodiment in which some energy-absorbing devices (310) are supported by support posts (312), whereas some other energy-absorbing devices are connected end-to-end without such support posts. They instead disclose one possibility (all devices connected by support posts) or the other (all devices connected end-to-end without any support post).

Secondly, the same considerations on the absence of a distinguishable connecting plate within the meaning of claim 1 as in point 6.1.1 above apply mutatis mutandis. Even if holes for receiving some kind of connecting means are disclosed in Figure 2, no plate is disclosed in this figure. The holes could also be envisaged for fixing the energy-absorbing device (200) to the undefined frames mentioned above, the disclosed angle irons or even another energy-absorbing device.

Finally, Figure 3A discloses an end plate (without a reference number) on the left side of the roadside crash cushion, but it does not disclose that this plate forms part of the sliding support, let alone that other plates form part of the subsequent sliding supports comprising support posts (312). The description does not explain the role of this end plate.

6.7 In view of the above, the subject-matter of claim 1 is novel over the cited prior art (Article 54(2) EPC).

7. Inventive step - Article 56 EPC

7.1 D6 as the closest prior art

Even if the objective technical problem defined by the appellant were accepted (how to modify D6 such that the road crash cushion could not be reused), and even if the skilled person were to resort to D8 - concerning a roadside crash cushion based on a completely different working principle - when looking for a solution to this problem, the skilled person would still not arrive at the claimed invention.

The only teaching of D8 relevant to the proposed technical problem is that "in applications where reusability is not required it may be preferable to substitute deformable sheets such as metal sheets for the elastomeric sheets shown" (column 4, lines 55 to 58). Thus, the skilled person understands that for a device like the one of D8, based on providing elastomeric sheets in a substantially horizontal direction (see Figure 3 reproduced below), the elastomeric sheets (50) can be replaced by metal sheets.

FORMULA/TABLE/GRAPHIC

D8 does not disclose which other elements could replace the waste tyres (101) of D6 and, at most, the skilled person could potentially think of replacing the waste tyres (101) with elastomeric sheets arranged as in D8 when consulting this document since this is the only working solution disclosed.

A hypothetical replacement of the waste tyres (101) with some undefined metal element resembling a tyre or forming a tubular element is pure speculation tainted by an ex post facto analysis of the prior art.

7.2 D7 as the closest prior art

The arguments of the appellant - presented only in writing - are based, on the one hand, on an interpretation of features 1.3.6 and 1.5.3 which is not convincing (see points 6.4.1 and 6.4.2 above) and, on the other hand, on a reasoning about the obviousness of the "fixed" feature which is tainted by an ex post facto analysis. In fact, no objective technical problem has been defined for this last distinguishing feature by the appellant, let alone a reasoning why the skilled person would consider it obvious to solve the posed problem by the claimed means.

7.3 D9 as the closest prior art

7.3.1 The appellant did not provide during the oral proceedings any further reasoning as to how the skilled person would arrive at the "plates" distinguishing feature. The appellant actually based its line of attack starting from D9 on the alleged fact that this document disclosed fixing plates. As this is not the case (see point 6.6.1 above), the attack must fail for this reason alone since even if the reasoning of the appellant about how the skilled person would reduce the number of parts were accepted, all features related to the presence of plates would still be missing from the resulting device (features 1.2.2, 1.2.4, 1.5, 1.3.7a, 1.3.7b, 1.3.8a and 1.3.8b).

For the sake of completeness, even if - as alleged by the appellant - the invention did not solve the objective technical problem and was only associated with a "foreseeable worsening", this would not imply that the subject-matter was not inventive. It would instead mean that a less ambitious problem had to be formulated. In this case, even if the problem were to be formulated as developing an alternative cushion, it cannot be considered obvious - without knowledge of the current invention - to simply dispense with, or "cut", structural important elements like the posts of the D9 embodiments.

7.3.2 The reasoning provided in the written submissions about the obviousness of the "plates" feature is not persuasive either. This was already explained in the communication of the Board under Article 15(1) RPBA 2020.

The appellant argued that the patent did not disclose any technical effect of the fixing plates. Thus, the objective technical problem was to find an alternative for connecting the tubular elements (310) to the supporting elements (312).

However, a plate has the inherent technical effect of providing a more regular load distribution and a higher resistance to deformation. Thus, the objective technical problem for the "fixing plates" feature would be to improve the robustness of the connection between tubular elements (310) and supporting elements (312).

None of the prior-art documents discloses the advantage of using fixing plates in a device like the one of D9, i.e. where the tubular elements are rigidly fixed to the supporting elements. D3, D7 and D10 concern roadside crash cushions in which the tubular elements are not connected in the same way to any plate. D1 and D6 appear to disclose similar fixing plates but do not disclose any advantage in using these. In the absence of any citation of D4, D5, D8, D12, D13 or D16 by the appellant, the combinations proposed in the statement setting out the grounds of appeal are not sufficiently substantiated.

The appellant argued as well that D9 itself hinted at how to implement the "connecting plates" feature since it disclosed that tubular elements might be connected to each other.

This argument cannot succeed.

Even if the skilled person had any incentive to bolt the tubular elements of D9 to each other as proposed by the appellant, this would not result in "connecting plates" within the meaning of claim 1 (see point 6.6.1 above).

7.4 Combination of D10, D12 or D13 with any of D2 or D14

7.4.1 The appellant did not add anything to the arguments provided in written form. Consequently, the Board maintains its opinion expressed in the communication under Article 15(1) RPBA 2020.

7.4.2 Concerning D10, the appellant argued that the irreversible plastic compression deformation could not represent a difference since this was not a limitation of claim 1.

This is not persuasive.

Feature 1.3.6 defines an irreversible compressive deformation of the collapsible tubular element which determines its collapse along its development axis. This is an irreversible plastic compression deformation, and therefore claim 1 is limited by this deformation.

D10 does not disclose in a clear and unambiguous manner an irreversible plastic compression deformation leading to a collapse as required by feature 1.3.6. The appellant agrees (see statement setting out the grounds of appeal, page 22) that the energy cells (36, 37, 38) are powdered upon impact (see column 3, lines 62 to 66 and column 4, lines 29 to 31) and that the container (34) - made of plywood panels according to column 3, lines 20 to 22 - is shattered (see column 4, lines 3 to 6). Although irreversible, none of this corresponds to the deformation defined in feature 1.3.6.

Thus, the invention of claim 1 differs from D10 (at least) in features 1.3.6/1.5.3 (irreversible plastic compression deformation). Since the appellant has not provided any arguments about how the skilled person would arrive at these features starting from D10, the objection fails for this reason alone.

Furthermore, neither D2 nor D14 discloses the advantage of using a guide rail as in feature 1.2.1, which is a further distinguishing feature for which the appellant considered the technical problem of "improving axial incurring of an axial force and preventing displacement of the crash cushion".

7.4.3 The appellant did not provide any substantiation for the inventive-step objections starting from D12 or D13 in the statement setting out the grounds of appeal. These objections are therefore disregarded.

7.5 In view of the above, the subject-matter of claim 1 involves an inventive step over the proposed combinations.

8. Conclusion

As none of the objections raised prejudices the maintenance of the European patent, the Board sees no reason to revise the decision of the Opposition Division to reject the opposition (Article 101(2) EPC).