T 1818/11 14-05-2014

1. The appeals are admissible.

2. Admissibility - Main Request, Auxiliary Requests 1 to 5 (Article 13(1) RPBA)

The opposition division considered that the replacement of the term "outboard" in granted claim 1 by "overboard" (which term, in contrast to "outboard", was present in the application as filed) in all requests filed by the patent proprietor constituted a correction of an obvious mistake that was allowable under Rule 139 EPC.

As indicated in the contested decision (Reasons 5.1, second paragraph), the two terms do not define exactly the same object and cannot be readily interchanged. Referring to the contested decision, appellant I (opponent) argued in its grounds of appeal and in its reply to the appeal filed by appellant II (patent proprietor) that the replacement of "outboard branch" by "overboard branch" could not be regarded as a correction of an error in the sense of Rule 139 EPC and that it was an amendment that did not meet the requirements of Article 123(3) EPC. However, appellant II (patent proprietor) did not argue in this respect or present further requests when replying to the appeal filed by appellant I (opponent). As required by Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA, OJ EPO 2007, 536), the statement of grounds of appeal and the reply shall contain a party's complete case.

In the present case, appellant II (patent proprietor) filed a new Main Request and new Auxiliary Requests 1 to 5 only in response to the board's communication pursuant to Article 15(1) RPBA, in which the board expressed its preliminary view that the requirements of Article 123(3) EPC were not met. In this communication the board did not raise a new objection since the objection under Article 123(3) EPC had already been raised by appellant I (opponent) in its statement of grounds of appeal. In fact, the board simply expressed a preliminary view on the validity of the objection under Article 123(3) EPC raised by appellant I (opponent). The board cannot recognise in the reference to decision G 1/10 in its communication a new issue being raised that would have justified the filing of new requests.

Therefore, the board finds that the amendments effected by filing the new Main Request and new Auxiliary Requests 1 to 5 were not occasioned by developments during the proceedings because the objection under Article 123(3) EPC was already submitted with the grounds of appeal of appellant I (opponent), and this objection should have been addressed by appellant II (patent proprietor) at the earliest opportunity, i.e. when replying to the grounds of appeal of appellant I (opponent), without waiting for a preliminary view to be expressed by the board.

Moreover, the board considered that the introduction of the term "outboard branch" in claim 1 of the Main Request and Auxiliary Requests 1 to 5, instead of "overboard branch" as originally disclosed, was not prima facie clearly allowable. In particular, the fact that the terms "outboard branch" and "overboard branch" might convey "a similar thought for the purpose of solving the technical problem", as argued by appellant II (patent proprietor), does not necessarily imply that the amendment is directly and unambiguously derivable from the application as filed, as required by Article 123(2) EPC. A "similar" meaning indicates that further embodiments or new technical information might be included, as might be the case when introducing the term "outboard branch" in claim 1 of the Main Request and Auxiliary Requests 1 to 5. Moreover, both parties acknowledged a different meaning of the terms "overboard" and "outboard".

Under these circumstances, the board exercised its discretion not to admit the Main Request and Auxiliary Requests 1 to 5 into the proceedings (Article 13(1) RPBA).

3. Auxiliary Request 6 - correction (Rule 139 EPC)

The board finds that the skilled person, when reading claim 1 as granted comprising the term "outboard branch", cannot recognise an obvious error that would justify a correction of the term "outboard branch", in particular a replacement by the term "overboard branch" as recited in claim 1 of Auxiliary Request 6.

In fact, the claimed "duct (34) having an outboard branch" in granted claim 1 makes sense technically having regard to the undisputed understanding of the term "outboard branch" as presented by the expert opinion A25, according to which an "outboard branch" represents a portion of a duct extending at least partially outside the aircraft, that may be guided into the aircraft's interior (i.e. it may exhaust either inside or outside of the aircraft cabin as pointed out by the opposition division in point 5.1 of the impugned decision). When reading the claimed feature "outboard branch" in conjunction with the preceding feature which specifies a "cooling system for conducting air from outside the aircraft cabin to said video control cabinet (32), said cooling system having a duct (34)", the "outboard branch" might relate to a portion of the duct conducting cool air from the outside to the video control cabinet (see also Figure 2: as indicated by reference sign 42a). When also taking into account the successive feature of "venting heated air from said video control cabinet to an aircraft skin penetration", the "outboard branch" might relate to a portion of the duct conducting air from within the aircraft to the aircraft's exterior and conducting the air back into the aircraft, i.e. re-utilising air cooled by the outside ambient. Finally, when only reading the claimed feature "outboard branch" in conjunction with this successive feature, the "outboard branch" might relate solely to a portion of a duct conducting air from within the aircraft to the aircraft's exterior.

As agreed by the parties, the terms "outboard" and "overboard" have different meanings (see also expert opinion A25), but the board cannot follow the argument of appellant II (patent proprietor) that both words convey a similar thought in the patent as granted and in the application as filed for the purpose of solving the technical problem. The board acknowledges that the overboard feature is implemented by providing an aircraft skin penetration, as expressed in claim 1 by the feature of the "control means (1,2,3,36) venting heated air from said video control cabinet (32) to an aircraft skin penetration (46)". However, the term "outboard" does not appear in claim 1 as granted in isolation, but in the context of a portion of a duct which is designated as "outboard branch", and the corresponding feature ("duct (34) having an outboard branch (34a)") is not specifically related to the overboard feature indicated in claim 1 by an "aircraft skin penetration". Both features are rather juxtaposed to each other, due to the absence of any clear reference to each other, and in the board's judgment the skilled person would not spot any contradiction which might justify a correction in the sense of Rule 139 EPC (the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction) as proposed by appellant II (patent proprietor). As a consequence, the board judges that the skilled person when reading claim 1 as granted would not recognise an obvious error.

The submissions in proceedings before the examining division filed by the representative of the (then) applicant dated 4th August 2006 might be contradictory. Fact is, however, that the term "outboard branch" has a technical meaning in the relevant field which differs from the meaning of "overboard branch", that this meaning makes sense in the context of claim 1 (as explained above), that the introduction of this term was made by the patent proprietor of its own volition, and that the patent proprietor agreed to the text in which the examining division intended to grant a European patent (communication under Rule 51(4) EPC 1973) which included claim 1 containing the term "outboard branch". Therefore, irrespective of whether it is permissible to refer to the file history to determine whether a correction was obvious in the sense of Rule 139 EPC, as submitted in substance by the appellant II (patent proprietor), the board concludes that even considering the examining proceedings it cannot be excluded, on an objective basis, that the introduction of the term "outboard branch" was not made by mistake but rather as a deliberate choice of the applicant.

Therefore, in the board's view, the replacement of the term "outboard branch" by "overboard branch" in claim 1 according to Auxiliary Request 6, as compared to granted claim 1, cannot be considered as a correction under Rule 139 EPC, but amounts to an amendment. As such, the requirements of Article 123(2) and (3) EPC have to be satisfied.

4. Auxiliary Request 6 - amendment (Article 123 EPC)

4.1 The replacement of the term "outboard branch" in granted claim 1 with the term "overboard branch" in claim 1 of Auxiliary Request 6 does not result in subject-matter extending beyond the application as filed (Article 123(2) EPC). This was not contested by appellant I (opponent). As a matter of fact, the term "overboard branch" is explicitly mentioned in the description of the application as filed.

4.2 Appellant I submitted that the replacement of "outboard branch" by "overboard branch" in claim 1 of Auxiliary Request 6 extended the protection conferred, contrary to the requirements of Article 123(3) EPC.

Claim 1 as granted relates to "an aircraft comprising a cooling system for conducting air from outside the aircraft cabin to a video control cabinet and having a duct, said duct having an outboard branch, said control means venting heated air from said video control cabinet to an aircraft skin penetration". In this context, the duct of the cooling system is only specified further by a portion referred to as "outboard branch". According to the undisputed understanding of the term "outboard branch", this term defines on its own the position of a duct portion with respect to the aircraft, i.e. a duct portion which extends at least partially outside of the aircraft and may exhaust either inside or outside of the aircraft by penetrating the aircraft's skin. In the context of claim 1 as granted, the feature "outboard branch" is followed by the feature that heated air is vented to an aircraft skin penetration, i.e. dumped to the "outside", which suggests that the "outboard branch" has the function of dumping heated air to the outside, as essentially argued by appellant II (patent proprietor).

In accordance with Article 69(1) EPC, the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. As explained above, a strict literal reading of granted claim 1 implies that there is an "outboard branch", i.e. a branch extending at least partially outside of the aircraft, which might have the function of dumping heated air to an aircraft skin penetration and thus to the outside. Still in accordance with Article 69(1) EPC, however, the description and drawings shall be used to interpret the claims.

According to the specification of the granted patent, the sole embodiment of the invention as described (using the term "overboard branch") and represented in the drawings (see Figures 1 and 2) shows a duct within the aircraft which ends at the aircraft's skin penetration in order to vent air to the outside. Considering that a function of the "outboard branch" in claim 1 as granted is that of venting heated air to the outside, that this function is realised if the "outside branch" extends from within the aircraft's interior to the aircraft's exterior but does not necessarily require the "outboard branch" to extend to the outside substantially beyond the aircraft skin penetration, and that this is the case in the sole embodiment disclosed in the patent in suit, the board judges that claim 1 as granted (using the term "outboard branch") must be construed as encompassing an "outboard branch" which ends at the aircraft's skin penetration for dumping air to the outside of the aircraft, and which corresponds to an "overboard branch" as understood by the parties.

Consequently, by explicitly specifying a duct having an "overboard branch" in claim 1 of Auxiliary Request 6 instead of using the broader term "outboard branch" as in granted claim 1, the extent of protection has been restricted. In particular, the board cannot recognise a shift in the extent of protection conferred, in particular no shift to an "aliud" when replacing "outboard branch" by "overboard branch" as alleged by appellant I.

The board notes that, even when considering that the terms "outboard" and "overboard" on their own have different meanings and as a consequence the terms "outboard branch" and "overboard branch" are not identical, one has to give sense to the claimed subject-matter as defined by the claim, taken as a whole, with due regard to the description and the drawings of the patent specification. In particular, the board considers that in the present case it is not justified to read claim 1 in a strict literal manner such as to exclude the sole specific embodiment described in the patent specification.

Accordingly, the board is satisfied that the scope of protection has not been extended and that claim 1 according to Auxiliary Request 6 complies with the requirements of Article 123(3) EPC. The same applies to claim 1 according to Auxiliary Requests 7 to 11 which also comprise the feature "overboard branch".

4.3 According to appellant I (opponent), Auxiliary Request 6 shows further deficiencies with regard to Article 123(2) EPC.

4.3.1 Appellant I alleges that an "aircraft" as claimed according to claim 1 of Auxiliary Request 6 was not originally disclosed. The introductory part of the description as filed already states that the invention relates to "aircraft conditioning systems, and more particular to a cooling system for in flight entertainment system electronics". Moreover, on page 3 of the description as filed, and further supported by Figure 2, the installation of the cooling system within an aircraft is described, as indicated by the "bilge of the cargo compartment 42(b)" or the "aircraft skin penetration 46". Therefore, by explicitly referring to components of an aircraft in this context, the aircraft per se is also disclosed in the application as filed, i.e. claim 1 does not show deficiencies with respect to Article 123(2) EPC with respect to the "aircraft" as claimed.

4.3.2 Claim 1 according to Auxiliary Request 6 specifies the condition ("when the aircraft is on the ground and the outside ambient temperature is above said predetermined value") for venting heated air from the video control cabinet to an aircraft skin penetration.

According to the description or dependent claims 2 or 3 of the application as filed, a condition for venting heated air overboard is only disclosed for a dedicated value of the outside ambient temperature of 8°C in combination with the aircraft located on the ground. Claim 1 of the application as filed specifies rather generally that heated air is vented "from said video control cabinet to the outside of the aircraft cabin or to said aircraft cabin depending upon the location of the aircraft and the outside aircraft temperature", leaving open which specific value of ambient temperature is selected.

It can be accepted, as submitted by appellant II (patent proprietor), that the application as originally filed discloses that switching between venting inside and venting outside takes place at a predetermined outside temperature (see original claim 1). However, according to original claim 1, such switching is further dependent upon the location of the aircraft, i.e. in accordance with the generic disclosure in the application as filed, the combination of two parameters, namely location of the aircraft and outside temperature, has to be considered when switching between venting inside and outside. When it comes to more specific embodiments, the application as filed only shows one specific combination of parameters where heated air is vented to an aircraft skin penetration, depending on the outside ambient temperature exceeding a threshold value, namely when the aircraft is on the ground and the temperature exceeds 45°F or 8°C (page 3, lines 22 to 24; also Figure 3). Not specifying the temperature value in this context would neglect that the two parameters "location" and "temperature" are functionally related with regard to the function of switching between venting inside and outside, since for an aircraft located on the ground values of reasonable outside ambient temperature thresholds exist with respect to said switching of air flow which are different from those for an aircraft flying at high altitude. According to the established jurisprudence of the boards of appeal with regard to intermediate generalisation, characteristics from a specific embodiment may not be combined with characteristics disclosed in a more general context when there exists a close relationship between these characteristics in the specific embodiment. Moreover, taking isolated features from the description of a specific embodiment is not allowable under Article 123(2) EPC if it is not clear beyond any doubt for a skilled reader from the application documents as filed that the subject-matter of the claim thus amended provides a complete solution to the technical problem unambiguously recognisable from the application (see T 284/94).

Therefore, by not specifying a predetermined temperature of 8°C , claim 1 of Auxiliary Request 6 introduces subject-matter extending beyond the content of the application as filed and thus does not comply with the requirements of Article 123(2) EPC. | |

5. Auxiliary Requests 7, 9, 10

Claim 1 according to Auxiliary Requests 7, 9 or 10 contains the same condition for venting heated air as defined in claim 1 of Auxiliary Request 6. Therefore, for the reasons set out above, the amendments provided with claim 1 according these requests are also not allowable under Article 123(2) EPC.

6. Auxiliary Request 8

Claim 3 according to Auxiliary Request 8 specifies a "cooling system status indication (50) for displaying failure of ground exhaust valves single component failure and/or smoke detection".

The board follows appellant I (opponent) in that the claimed "and"-combination was not disclosed in the application as filed, showing only (see page 3, lines 28 to 30) that a status for "single component failure or smoke detection in the system is displayed". Moreover, with regard to valve failures, only an "advisory for failure of both ground exhaust valves" is originally disclosed (page 3, lines 27 to 28), i.e. an indication for a failure of both valves.

Accordingly, the board finds that the subject-matter of claim 3 of Auxiliary Request 8 extends beyond the application as filed so that the requirements of Article 123(2) EPC are not fulfilled.

7. Eleventh Auxiliary Request - inventive step (Article 56 EPC 1973)

7.1 Amendments (Article 123 EPC)

Claim 1 according to the Eleventh Auxiliary Request is amended by specifying the temperature value of 8°C for switching between venting heated air to the cargo compartment or to the aircraft skin penetration. Accordingly, the objection under Article 123(2) EPC discussed above in respect of claim 1 according to Auxiliary Request 6 no longer applies. A further objection of appellant I (opponent) with regard to the definition of the location for venting heated air into the cargo department has been overcome by specifying that heated air is vented "under the aft cargo door into the bilge of the aircraft cargo compartment (42b) downstream from shutoff valve (3)", as disclosed in the description of the application as filed in combination. Moreover, claim 3 is amended to take into account the above-mentioned objection raised with regard to Auxiliary Request 8 by referring to the failure of both ground exhaust valves and specifying only an "or"-combination. Finally, an erroneous reference to preceding claims in claim 2 of previous Auxiliary Request 8 is removed. Therefore, the board finds that the requirements of Article 123(2) EPC are met. This was not contested by appellant I (opponent).

As to the term "overboard branch" used in claim 1, the requirements of Article 123(3) EPC are also satisfied, as explained above with respect to Auxiliary Request 6.

7.2 Inventive step (Article 56 EPC)

In the present case, only inventive step is at issue because novelty was never disputed by the parties.

The board agrees with appellant I (opponent) that document A1 represents the closest prior art for the subject-matter of claim 1, showing that waste heat of a chiller device is exhausted to the outside, but also used to heat the aircraft's interior, increasing the passengers comfort by switching a control valve depending on various parameters, e.g. flight altitude, cabin temperature and cooling status of the cargo compartment.

The subject-matter of claim 1 differs from the disclosure of A1 at least in that heated air is vented either to the exterior or the interior of the aircraft depending on whether the aircraft is on the ground or in the air and on whether the outside ambient temperature is below or above 8°C.

The person skilled in the art might be tempted to consult document A6, disclosing a cooling system for a pod (an external structure attached to the underside of an aircraft) of an aircraft, applicable also for cooling any non-pressurised volume within an aircraft, as alleged by appellant I (opponent). However, A6 is silent on any condition for venting heated air to the cargo compartment. In particular, A6 does not disclose that for an aircraft on the ground an outside ambient temperature lower than 8°C is chosen for venting heated air into the cargo compartment. Moreover, as stated in A6 explicitly (column 5, lines 20 to 26), no air is vented outside in a portion of the flight envelope which includes the aircraft located on the ground. Therefore, the skilled person taking into consideration the teaching of A6 would not arrive at the subject-matter of claim 1.

Therefore, the board finds that the subject-matter of claim 1 according to the Eleventh Auxiliary Request involves an inventive step (Article 56 EPC 1973).

8. Dependent claims 2 to 4 concern particular embodiments of claim 1 and are therefore likewise allowable.