T 0703/12 08-06-2015

1. Admissibility of the appeal

During the oral proceedings before the Board, the respondent withdrew their objection to the admissibility of the appeal. Nor indeed is any deficiency apparent to the Board that might warrant the rejection of the appeal as inadmissible under Rule 101 EPC. Therefore the Board concludes that the appeal is admissible.

2. Background

The patent relates to a jug for filtering liquids, in accordance with its title. Such jugs typically have a filter cartridge which must be changed after a certain number of filtering cycles, see patent specification paragraph [0003]. The jug is said to have the advantage that the number of filtering cycles are counted automatically by introducing water into the jug, see patent specification paragraph [0029]. To this end the lid of the jug has inter alia a filling aperture and a counting device for counting opening/closing of an aperture blocking means, see claim 1.

3. Prior use: issue of proof

3.1 In appeal the appellant only contests the decision's finding that the subject matter of claim 1 as granted involves an inventive step in the light of prior art document D1 combined with the alleged prior uses (see grounds of appeal, page 3, second to fourth complete paragraphs).

3.2 The question of inventive step therefore depends, inter alia, on whether or not the alleged prior uses are proven to the necessary standard of proof.

3.3 According to established jurisprudence of the Boards, in cases of alleged prior use where all evidence in support of the alleged public prior use lies within the power and knowledge of the opponent, while the patentee has barely any or no access to it at all, it is incumbent upon the opponent to prove the alleged prior use to the standard of proof "beyond any reasonable doubt", see Case Law of the Boards of Appeal, 7th edition, 2013 (CLBA), III.G.4.3.2, and the decisions cited therein. In particular to establish a prior use to this standard, the questions "what was disclosed", "when", "where" and "under which circumstances" must be answered, see for example T 2010/08.

3.4 In the present case the appellant alleges the prior public disclosure, by use, of a jug that is described in the statutory declaration D2 as having a lid with an opening closed by a sliding cover, whereby the sliding cover is provided with a magnet which interacts with a reed switch of an electronic circuit to count opening operations of the sliding cover (2nd and 3rd paragraphs of D2).

3.5 D2 further states that the water filter jug was presented at the Ambiente trade fair, Frankfurt, from 10-14 February 2006 (i.e. prior to the patent's claimed priority date of 15 November 2006); delivered to customers shortly after 21 September 2006; and that product samples were sent to companies BHL in Leeds, UK and Gurris, Mannheim, Germany before 21 September 2006.

3.5.1 It is common ground that all the evidence in support of the alleged public prior uses lies within the power and knowledge of the appellant. Thus, as is evident from the packaging, see photographs D2b, the jug of the alleged prior use is marketed under the registered trade mark "Anna by BWT" owned by BWT Wassertechnik GmbH, see D3, a subsidiary of the BWT Group of which the opponent-appellant BWT Austria AG is also a subsidiary. Consequently the higher standard of proof, that is beyond any reasonable doubt, must be applied.

3.6 Starting first with the Ambiente trade fair, it is not disputed that the company "Anna" attended the Frankfurt Ambiente fair, 10-14 February 2006 (D2, fifth paragraph). Thus the Board considers the "where" and "when" questions vis-à-vis the first alleged prior use to be answered. However, the respondent contests that the "what" and the "circumstances" of the prior use are proven beyond any reasonable doubt.

3.6.1 The appellant has argued that, according to D2 (page 1 third and fifth paragraphs), a jug as described in D2a, including the features of a [deleted: "]Wechselanzeige", (i.e. a change indicator) namely a reed switch, magnet and electronics to count opening operations, was disclosed to visitors at Ambiente. In particular the appellant considered this proven by the statement "Interessierten Kunden wurde dabei die genaue Funktion der Wechselanzeige erläutert", i.e. interested clients were given an explanation about the exact functioning of the change indicator.

It is common ground that the change indicatoris an indicator for displaying when the user should change the filter cartridge. However, assuming for the sake of argument that the jug alleged to have been presented at the fair was as described D2a, in the Board's opinion, the above statement could mean different things.

On the one hand it could mean that visitors were given a detailed explanation as to how the indicator on the jug's lid informs a user when to change the filter cartridge. This might for example have entailed explaining that filter usage was displayed on a percentage-scale LCD display, that the display is revealed by operating the sliding cover and that the indicator is reset by removing the lid (see D2a, paragraphs [0019], [0024],[0032] and [0022]).

On the other hand, the above statement could indeed mean that visitors were informed that the change indicator included a reed switch in the lid interacting with a magnet on the sliding cover to count the number of times the cover was opened, as the appellant has argued (see D2, third paragraph and D2a, paragraphs [0011] and [0059]).

Without calling into question the credibility of the above statement in D2, any number of other possible oral disclosures, which might or might not involve informing visitors about counting openings of the sliding cover could, in the Board's view, be described as an exact explanation of the change indicator's function. Thus, on the basis of statements in D2, the presence of a counter counting the number of times the lid was opened or closed need not have been explained to interested visitors, even though it is possible or even probable that it was. An alternative explanation may have been given, and thus a different reasonable interpretation of the facts exists. This raises reasonable doubts as to what was disclosed to the public at the Ambiente trade fair, in particular concerning the claimed feature of the counter.

3.6.2 Nor is the Board convinced that by seeing the jug exhibited at Ambiente, a visitor would have been able to fill in any gaps between what might have been orally disclosed and what is alleged to have been disclosed by prior use. In particular, the post-published photos D2c of a jug, said to have the same change indicator as the one exhibited (D2 last paragraph), show only the jug as it might have been presented to a visitor. Leaving aside the poor quality of the photographs, it is questionable whether a magnet can be identified as such, nor are the inner workings of the change indicator immediately apparent to the observer. In particular, nothing on the outside indicates that lid openings or closings are counted, or points toward the presence of a reed switch or other sensor for counting opening operations. These features are also not apparent from the photograph of the underside of the lid. Even if a visitor had been allowed to closely inspect the jug, on the basis of the photographs it appears that he would not have been able to ascertain the above features. In this regard D2a suggests that the electronics and reed switch appear to be encapsulated in plastic (see also D2a, paragraph [0018]) and are therefore hidden from view. The Board also notes that D2 may indicate that the change indicator's function was explained to visitors, it does however not state whether or not they were free to handle the jug. To the extent that the exact circumstances of the alleged prior use might have shed light on what was disclosed to the public they are thus unclear.

3.6.3 In view of the above, the Board is neither convinced that what was disclosed at the Ambiente fair nor the circumstances of the alleged disclosure have been proven beyond any reasonable doubt.

3.7 Moving on to the alleged delivery to customers shortly after 21 September 2006 (D2, page 1, last paragraph), no customer name, exact date or location has been given for this prior use. Thus where, when or by whom the alleged prior use should have occurred has not been stated by the appellant, let alone proven to the required standard beyond any reasonable doubt as might have been possible by supplying evidence such as invoices. Insofar as the photographs of packaging, which are of very poor quality, might have revealed detail of what was alleged to have been sold, they could in any case never fill in the gaps in the chain of evidence as to where, when and by whom the alleged prior use took place. Therefore, in the Boards view, the prior use by sale alleged in D2 is also not proven beyond any reasonable doubt.

3.8 Finally, the exact details relating to the alleged prior use by delivery of product samples (Muster) to two companies prior to 21 September 2006 (D2, page 2, first paragraph) are unclear and incomplete. No documentary evidence is provided which might have established the specific date and the particular circumstances of the delivery. For example, whether or not the recipient companies were free to dispose of the samples as they wished or whether they were under some obligation of secrecy is not mentioned in D2. Therefore, the Board considers that again without questioning the credibility of the statutory declaration as regards the delivery of product samples, it nevertheless does not establish to the required degree of certainty, namely beyond any reasonable doubt that the named companies received samples, what was received and when, nor the exact circumstances.

3.9 In view of the above, the Board finds that none of the alleged prior uses set out in D2 are proven to the necessary standard of proof, that is beyond any reasonable doubt.

3.10 During oral proceedings before the Board, the appellant offered Mr Bender as a witness in order to prove the alleged prior uses detailed in D2.

3.10.1 In accordance with Article 12(2) RPBA, the appellant's statement of grounds of appeal should contain their complete case, inter alia it should specify expressly all the evidence relied on. In accordance with Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion and further this discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Moreover, in accordance with Article 13(3) RPBA, amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

In the present case, the appellant was aware from the impugned decision (see point 3.2.1) that it was questionable whether the alleged prior use was proven beyond any reasonable doubt. Indeed the appellant addressed this point in his notice of appeal, stating that, in his opinion, the prior use was sufficiently proven (page 4, first complete paragraph). Therefore the Board considers that there is no justification, such as a new development in the appeal proceedings, for waiting until the oral proceedings to request Mr Bender be heard as a witness. Furthermore, consistent with established jurisprudence, the generic reference to the appellant's submissions in opposition in the penultimate sentence of the notice of appeal cannot be interpreted as expressly specifying the offer of Mr Bender as a witness, see CLBA IV.E.2.6.4.

Accordingly, the witness offer made for the first time during the oral proceedings constitutes an amendment to the appellant's case in accordance with Article 13(1) RPBA and, in the Board's opinion, one that is not justified by developments in proceedings.

3.10.2 Without prejudice to the question as to whether or not the opposition division was correct in refusing the offer of Mr Bender as a witness (decision point 3.2.1), repeating this offer for the first time in appeal proceedings at the very last stage and in the absence of the witness concerned, could only have been dealt with by an adjournment of the oral proceedings. Therefore, in accordance with Article 13(3) RPBA, the Board exercised its discretion not to hear Mr. Bender.

4. With the finding that the alleged public prior uses, as set out in D2, have not been established to the necessary degree of certainty, the appellant's sole objection to claim 1 due to lack of inventive step, based on D1 in combination with the prior uses set out in D2 must fail. No further arguments or evidence have been presented as to why the feature of the counter counting lid opening and/or closing cycles, not disclosed in D1, might be obvious, nor is this immediately apparent to the Board from any of the submissions in appeal. Therefore, the appellant has failed to convince the Board that the subject matter of claim 1 as granted lacks an inventive step within the meaning of Article 56 EPC. It follows from the above that the appeal must fail.