T 1076/15 13-03-2018

1. Main request - Admissibility

1.1 The patent proprietor filed the current main request after oral proceedings had been arranged, allegedly in reaction to the Board's communication under Article 15(1) RPBA in preparation of the oral proceedings.

1.2 Although the request was filed very late, and the communication had not raised any new issues, the Board exercised its discretion to admit this request into the proceedings for the following reasons (Article 13(1) RPBA):

1.3 Claim 1 of the current main request differs from claim 1 of the main request filed with the appeal grounds of the patent proprietor by the added limitation that the reflector of the reflector optic is a "segmented reflector".

1.4 This amendment did not give rise to any issues that had not already been discussed. Throughout the opposition and appeal proceedings, the patent proprietor consistently argued that this limitation was at least implicitly present in claim 1. It was also noted that, in the appeal proceedings, the opponent had already made written submissions directed at the subject-matter of claim 1, should the Board share the patent proprietor's view that, in the context of claim 1, the term "reflector" means "segmented reflector". In summary, the amendment did not compromise the procedural economy.

2. Main request - Amendment

2.1 In T 441/13, the Board decided that the amended claims filed as auxiliary request zero during the oral proceedings on 19 February 2014 met the requirements of Articles 123 and 84 EPC.

2.2 Claim 1 of the current main request differs from claim 1 of auxiliary request zero by the added limitation that the reflector of the reflector optic is a "segmented reflector".

2.3 This amendment is supported by the teaching on page 4, lines 30 and 31 and page 7, lines 32 and 33 of the application as originally filed.

2.4 In conclusion, the amendment to claim 1 meets the requirements of Article 123(2) and (3) EPC.

2.5 The amendment does not introduce non-compliance with Article 84 EPC.

3. Relevant date

3.1 The patent claims priority from two US applications, namely US11/069,989 filed on 3 March 2005 and US11/300,770 filed on 15 December 2005.

3.2 It is common ground that the claimed subject-matter is entitled to the second priority date, but not to the first priority date.

3.3 Thus, the relevant date for assessing novelty and inventive step of the claimed invention is 15 December 2005.

4. Consideration of D1b and J1 in the proceedings

4.1 The opponent has filed D1b and J1 in direct reaction to the findings in the appealed decision that, apart from a plurality of LEDs, D1 fails to disclose the specific features of the claimed invention (point 2.4 of the reasons) and that, in the context of the patent, the term "reflector" must be construed as meaning a single reflector (point 2.6 of the reasons). These documents do not raise new issues of particular complexity, but rather reinforce the attacks of lack of novelty in light of D1 and of lack of inventive step when starting from H1, which were already presented before the opposition division.

4.2 The patent proprietor has not indicated, and the Board cannot find, any convincing reason why these pieces of evidence should be disregarded. During the first appeal proceedings, the questions of novelty and inventive step were not discussed (Article 12(4) RPBA). The mere fact that the interpretation of the term "reflector" was already presented by the patent proprietor in its submission dated 26 January 2015 (page 5, paragraph 2), i.e. one month in advance of the oral proceedings, and adopted by the opposition division in the oral proceedings does not imply that document J1 should have been filed in the opposition proceedings.

4.3 Hence, the Board decided to take D1b and J1 into consideration, notwithstanding their relevance.

5. Remittal of the case

5.1 The patent proprietor's had requested that the case be remitted to the opposition division in the event that the Board intended to admit J1 into the proceedings.

5.2 In view of the fact that the evaluation of J1 was straightforward and could be dealt with within the framework of the proceedings, and taking into consideration the need for procedural efficiency, the Board considered that it was not appropriate to remit the case but decided instead to deal with it itself (Article 111(1) EPC).

6. Prior use AOL1000

6.1 The opponent challenged the decision of the opposition division that the alleged public prior use of an obstruction light named "AOL1000" was not sufficiently proven.

6.2 In its communication pursuant to Article 15(1) RPBA the Board addressed this question as follows (point 10 of the communication):

"10.1 ... In this respect, since all evidence in support of the alleged prior use lies within the power and knowledge of the opponent, it is incumbent upon it to prove the alleged prior use to the higher standard of "beyond reasonable doubt".

10.2 Should the documents annexed to the opponent's statement of grounds of appeal and originating in opposition proceedings be considered as "incorporating by reference" the respective arguments, the Board's preliminary view would side the position reached by the opposition division, namely that the evidence is scarcely sufficient to establish a credible offers-and sales chain and thus to instigate a need for further investigation of the matter, in particular for the hearing the proposed witness".

6.3 In response, the opponent neither commented upon nor disputed this opinion, and the Board sees no reason to depart from it. Hence, the Board decided not to investigate this alleged public prior use any further.

7. Public prior availability of D1

7.1 D1 is an advertising datasheet from Dialight Ltd. and Dialight Corp., i.e. from the patent proprietor.

7.2 The patent proprietor contested the public availability of D1 prior to the priority date of the patent (15 December 2005).

7.3 However, the Board shares the patent proprietor's view that, even if D1 formed part of the state of the art in accordance with Article 54(2) EPC, its teaching would not anticipate the subject-matter of claim 1 (see point 8 hereafter). In light of this conclusion, there is no need to investigate any further the question of the public availability of D1. It has to be noted that D1 has been used to challenge the novelty of the claimed subject-matter, but not inventive step.

8. Main request - Novelty

8.1 D1 discloses a LED-based beacon light designed and constructed to meet the Federal Aviation Administration (FAA) specification for obstruction lighting equipment in the United States, namely FAA Advisory Circular (AC) No. 150/5345-43E (see page 1 of D1). Within this specification, there exists requirements for a medium-intensity flashing red obstruction light unit, designated "L-864", as mentioned in D1 (see page 1, "Medium Intensity Red Beacon FAA Type L864"). The FAA specification requires that the L-864 light unit be capable of generating a 360° light beam in a horizontal plane while also meeting peak photometric light intensity and beam spread dimensions for both the horizontal and vertical planes (see e.g. G1, column 1, lines 13 to 23), namely a peak effective intensity of 2,000 ± 25% candela throughout the omnidirectional 360°, and a minimum effective intensity of 750 candela throughout a minimum vertical beam spread of 3°. The photometric test results shown on page 2 of D1 demonstrate that the beacon light as disclosed in D1 produces the required photometrics.

8.2 The parties dispute whether or not D1 discloses the features of claim 1.

8.3 The Board shares the opponent's view insofar that, in view of the title and the image on page 1 of D1 and of the photometric data on page 2 of D1, it is apparent that the beacon light disclosed in D1 forms a LED reflector optic in the sense of claim 1 and that it comprises a plurality of LEDs and a segmented reflector having a plurality of reflecting surfaces. However, it cannot be derived from D1 how the reflecting surfaces are shaped and how the LEDs are arranged and oriented relative to the reflecting surfaces. Contrary to the opponent's view, this information cannot be derived from the low-resolution image on page 1 of D1. In fact, this image is so blurred than one can hardly derive any technical details from it. Further, documents D1a and D1b cannot complement the information of D1. D1a is an enlarged view of the image on page 1 of D1. D1b is an advertising datasheet from Dialight Ltd. As noted by the patent proprietor, D1b refers to patent US 7,281,821, which was published on 16 October 2007, and thus D1b cannot have come into existence earlier than October 2007, i.e. after the priority date of the patent. Finally, no evidence has been provided to support the opponent's assertion that all features of claim 1 must inevitably be present in order to achieve the photometric data shown on page 2 of D1.

8.4 Thus, D1 fails to disclose at least the cross-sectional shape of the reflecting surfaces and the arrangement of LEDs as required in claim 1.

8.5 Therefore, the subject-matter of claim 1 is novel in light of D1.

9. Main request - Inventive step

9.1 G1 forms a realistic starting point for the assessment of inventive step, because it is concerned with beacon lights for guiding aircraft (column 1, lines 7 to 23 and figure 11) and the patent aims to improve aircraft obstruction beacon lights (paragraphs 2 and 39 of the patent specification).

9.2 G1 discloses a method of building and using a beacon light (10), comprising, in the terms of claim 14, the steps of:

- arranging a plurality of reflecting surfaces (reflectors 28, 30, 32 in figure 4) relative to each other, each reflecting surface comprising a linearly projected cross-section along a respective linear extrusion axis, wherein the linearly projected cross-section has a conic or substantially conic shape, namely a parabolic or pseudo-parabolic shape (column 6, lines 45 and 46); and

- positioning each one of a plurality of linear light sources (14, 16, 18 in figure 4) parallel to said linearly projected cross-section of an associated one of the plurality of reflecting surfaces, wherein the positioning step angles a central light-emitting axis of each one of the plurality of light sources relative to at least one optical axis associated with the plurality of reflecting surfaces at about 90° such that each of the reflecting surfaces redirects and collimates a light output of a respective each one of the plurality of light sources at an angle of about 90° with respect to the central light emitting axis of each one of the plurality of light sources, wherein each one of the plurality of reflecting surfaces receives light from each one of its associated light sources from the focal distance of said associated one of said plurality of reflecting surfaces; and

- transmitting the light from the plurality of light sources onto the associated one of the plurality of reflecting surfaces (see figures 7, 10 and 11).

9.3 G1 teaches that each of the linear light sources preferably comprises a cylindrical flash tube, filled with xenon or some other gas which generates light when charged (column 4, lines 60 to 64).

9.4 It is agreed that the subject-matter of claim 14 differs from G1 in that each of the linear light sources comprises a plurality of LEDs positioned in a line parallel to the linearly projected cross-section of the associated reflecting surface.

9.5 Thanks to this distinguishing feature, the claimed method results in a smaller and lighter beacon light with reduced energy consumption and less light pollution, i.e. emission of light outside the specified planes (see paragraphs 2 and 39 of the patent specification). Thus, starting from G1, the problem objectively solved by the distinguishing feature can be seen as how to improve the beacon light in terms of size, weight, energy consumption and light pollution.

9.6 The Board is not persuaded by the opponent's argument that the skilled person, in the expectation of solving the objective problem, could and indeed would modify the beacon light of G1 in view of the teaching of H1 so as to arrive at the claimed invention.

9.7 Even though H1 is generally concerned with reflector optics, it does not address the problem to be solved. Instead, H1 aims to improve the efficiency of light collection in LED-based reflectors (paragraphs 4 and 5 of H1), which preferably meet the standard specifications for emergency warning lights of ambulances and fire trucks (paragraphs 45 and 52). For such emergency warning lights, the photometric requirements significantly differ from those for aircraft obstruction lights as disclosed in G1 (column 1, lines 13 to 23). In particular, they produce a much narrower light beam in the horizontal plane, as illustrated in figures 6, 8, 10 and 15 of H1.

9.8 The opponent submitted that it is irrelevant that G1 and H1 concern different types of reflector optics because the broad wording of claim 14 is not limited to any specific reflector optic. However, when answering the "could/would" question, the wording of the claim has to be left aside in order to avoid any hindsight bias.

9.9 In conclusion, the Board is not convinced that the subject-matter of claim 14 lacks an inventive step when starting from G1.

9.10 The opponent also argued that the subject-matter of claim 14 is not inventive when taking H1 as starting point. The Board is not persuaded by this argument, for the reasons submitted by the patent proprietor.

9.11 H1 discloses, in figure 5, a light assembly 40 which includes a reflector 42 and an LED array 44. It comprises, in the terms of claim 14 of the patent: a single reflecting surface 46 comprising a linearly projected cross-section 60 with a parabolic shape; nine LEDs 30 positioned in a line parallel to the axis of the reflecting surface, wherein the light-emitting axis 82 of each LED is perpendicular to the optical axis 70 of the reflecting surface such that the surface 46 redirects and collimates a light output of each LED at an angle of about 90° with respect to the light emitting axis 82, wherein the surface 46 receives light from each LED from the focal distance of the surface. The subject-matter of claim 14 differs from H1 by the steps of arranging a plurality of the LED-based reflectors relative to each other.

9.12 Whilst H1 has many technical features in common with claim 14, it is not a realistic starting point for assessing inventive step because it is unrelated to the technical problem addressed in the patent, namely how to improve aircraft obstruction beacon lights in terms of size, weight, energy consumption and light pollution (see paragraphs 2 and 39 of the patent specification). Instead, H1 aims to improve the efficiency of light collection in warning lights for emergency vehicles such as ambulances and fire trucks (see point 9.7 above).

9.13 Notwithstanding the above, the technical problem proposed by the opponent, namely how to modify the light assembly shown in figure 5 of H1 to enable emission of light in a plurality of directions, is an artificial problem which is unrelated to the actual disclosure of H1. In particular, the light assembly shown in figure 5 of H1 is already capable of generating a 120° light beam in a horizontal plane, as shown in figure 6.

9.14 Finally, even if the skilled person wished to produce a wider light distribution pattern than that shown in figure 6 of H1, the Board is not convinced that the distinguishing feature would be an obvious modification.

9.14.1 Based on common general knowledge, the skilled person would consider modifying the shape of the reflecting surface 46 or the LED array 42 disclosed in figure 5 of H1. In doing so he would not arrive at the claimed solution.

9.14.2 The mere fact that G1 is generally concerned with a reflector optic would not prompt the skilled person to consider its teaching and apply it to the light assembly disclosed in figure 5 of H1. As reasoned above, in view of the different photometric requirements mentioned in H1 (paragraphs 45 and 52) and G1 (column 1, lines 13 to 23), the skilled person would rather disregard the teaching of G1. Whilst claim 14 is silent with respect to the intended use of the reflector optic as defined therein, the wording of the claim cannot provide any motivation for the skilled person to consider G1 (see point 9.8 above).

9.14.3 J1 concerns LED warning lights which are installed in, for example, a parking lot or a work place, on automatic machines, on robots or in production lines (column 1, lines 6 to 19). J1 aims at reducing the number of LEDs while improving visibility and appearance and teaches that this is achieved by positioning a plurality of LEDs in a circular or polygonal fashion and arranging the associated reflecting surfaces in a stepwise fashion, whereby the reflected light is transmitted through a diffusion filter that covers the circumference of the light (see claims 1 and 2; column 2, lines 30 to column 3, line 3; figures 3 and 11). The Board can see no reason why the skilled person would consider this teaching. Moreover, even if he were to consult figure 11 of J1, as suggested by the opponent, he would inevitably consider using flat reflecting surfaces and positioning a single LED before each reflecting surface as shown in figure 11, instead of using conical reflecting surfaces and positioning a line of LEDs before each reflecting surface, as required in claim 1. Indeed, J1 insists that, for warning lights producing a wide light beam, the reflecting surfaces should be formed of flat surfaces to improve visibility (column 4, lines 26 to 37).

9.15 The above reasoning applies mutatis mutandis to the subject-matter of independent apparatus claim 1 as well as that of independent apparatus claim 17. Claim 1 concerns a LED reflector optic, whereby all features of the reflector optic as defined in claim 1 inevitably result from the method as defined in claim 14. Claim 17 concerns a reflector optic that corresponds to the reflector as defined in claim 1, with the only difference that, in place of LEDs, it comprises a plurality of light emitting means for emitting a hemisphere of light.

10. For the reasons set out above, neither the grounds for opposition raised by the opponent nor the objection raised by the opponent under Article 123(2) EPC prejudice the maintenance of the patent as amended according to the main request.

11. In light of this conclusion there is no need to consider the auxiliary requests of the patent proprietor.

12. The description is in conformity with the amended claims. This was not disputed by the opponent.