T 1495/09 09-09-2010

Reasons for the Decision

1. The appeals are admissible.

2. Admissibility of the final, sole request filed by Virgin

In the course of the oral proceedings, the opponents Premium and Airbus called the admissibility of the present request into question.

Under Article 13(1) RPBA any amendment to the appellant's case after he has filed his grounds of appeal may be admitted and considered at the Board's discretion. The 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, according to 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 cannot reasonably be expected to deal with without adjournment of the oral proceedings.

The independent claims 1 and 2 of the final, sole request submitted by Virgin during the oral proceedings differ from the corresponding claims of the fourth auxiliary request previously submitted with letter dated 12 April 2010 in two respects. The reference of the foot-rest being "separate from" the seat has been deleted from the respective preamble of the claims and the alternative "or trapezoidal" for the shape of the "passenger support element" has been deleted from the respective characterising clause. The first deletion was in response to an objection that this feature was not originally disclosed, the second deletion to limit the subject-matter claimed more precisely to the disclosed embodiment. Given the limited nature of these amendments and the fact that both were already presaged in the corresponding claims of the fifth auxiliary request also submitted with letter of 12 April 2010 (in those claims however the restriction of "only one" notional longitudinal seat axis had also been deleted. which Virgin wished to retain), the Board cannot see how they could present the opponents with any difficulties in dealing with them on the fly, as it were. Indeed, apart from objection on principle to the belated submission of the new request, the opponents did not try to argue that these amendments in any way discomfited them.

The other amendment to the claims of the final, sole request in comparison with the claims of the previous fourth auxiliary request consists in the deletion of the claims relating to seat units as such. The opponents had no objections to this deletion and clearly these can be none. Accordingly, the reasons for the deletion of these claims need not be gone into here.

The Board, exercising its discretion, therefore admitted and considered the new request.

3. Extended subject-matter (Article 100(c) EPC 1973 and Article 123(2) EPC)

3.1 Premium's objection in this respect was principally based on the contention that the claims contained added subject-matter with respect to the content of the parent application P0 because they did not comprise the essential feature of P0 that the surfaces/elements which formed the seat in the seat mode were not used in forming the bed in the bed mode ("flip-over feature").

A person skilled in the art who reads the parent application P0 will clearly recognise that different inventions having separate objects and independent solutions are disclosed therein. Apart from a first invention, which deals with a passenger accommodation unit and/or a seat assembly having the so-called "flip-over feature", P0 clearly discloses another invention relating to a seating system for a passenger vehicle (P0: page 9, lines 1-12). This seating system deals with the problem of optimising the use of space within a passenger cabin and of presenting a substantially uncrowded appearance (P0: page 5, lines 26-30). The seating system is covered by independent claim 44 of P0, on which the independent claims 1 and 2 as amended are based.

Claim 44 of P0 is worded as follows:

" A seating system for a passenger vehicle, particularly an aircraft, comprising a plurality of seat units, each seat unit defining a notional longitudinal seat axis and comprising a supporting structure adapted for attaching the seat unit to a floor of a vehicle and means forming or being configurable for forming a seat comprising a seat-pan and a back-rest; characterised in that said seat units are arranged to form a column defining a notional longitudinal column axis, in which column said seat-units are arranged side-by side in longitudinally offset relation at an acute angle to a notional column axis, thereby defining a space to the rear of each seat, each seat unit further comprising means forming or being configurable for forming a substantially flat bed, a major proportion of which bed is disposed forwardly of the position of the seat, which bed extends rearwardly into said space to extend the flat-bed."

For the skilled person, it is clear from the content of P0 that the subject-matter of claim 44 provides a complete solution to the technical problem of optimising the use of space within an aircraft passenger cabin ("space problem").

The Board is unable to follow the contention that the "flip-over feature" was essential in connection with that "space problem". P0 contains a clear indication that the seating system is not limited to the use of the seat assembly which is the subject-matter of the first invention (page 32, lines 28-29).

3.2 The Board cannot follow Premium's added subject-matter contention in connection with the change of the following wording of claim 44 of the parent application P0 "so that when the seat unit is formed into a bed a major proportion of which bed is disposed forwardly of the position of the seat" into "so that… bed a major proportion of the bed is disposed forwardly of the position that was occupied by the seat".

In the Board's view, the new formulation only amounts to a clarification of the original wording without introducing new matter. When the seat unit is formed into a bed, what was meant by the original wording "forwardly of the position of the seat" was not clear, since the seat as such is no longer present in this configuration of the seat unit. The new wording simply clarifies that when the seat unit is formed into a bed, the fictitious "position of the seat" is that which was occupied by the seat when the seat unit was configured as a seat. There is, however, no geometrical difference between these two positions.

As to the aspect of this objection relative to the lack of disclosure in the parent application of an embodiment where the major proportion of the bed was formed entirely of parts which were also used for the seat, an embodiment which was allegedly introduced by the new wording, there in nothing in the parent application which suggests that the invention covered by claim 44 is dependent upon the use of parts for forming the bed which are different from the parts forming the seat. On the contrary, the figures 19 and 20A to 20 C of P0 show for example that the components 628, 622 and 624 forming the seat (Fig. 20A) are also used for forming the bed (Fig. 20C).

3.3 The Board does not share Airbus' view that the wording of the characterising part of claim 1 as granted ("…the flat-bed extends rearwardly into said space behind the seat") introduced added-matter. If the present wording can be understood in the way alleged, the same would be true of the original wording of claim 44 of the earlier application P0. Moreover, considering that the independent claims 1 and 2 have now been completed by the further limitation that "a generally triangular passenger support element is disposed in said rearward space (36) substantially coplanarly with said one or more movable elements when said movable elements are configured in the bed mode and is adapted to form part of said bed" (see claims 50 and 51 of P0), Airbus' objection has been overtaken by events.

3.4 According to the passage of page 1, lines 12 to 15 of the parent application P0, the passenger seat "comprises a back-rest and a seat-pan that are supported off the floor… by means of a suitable supporting structure that is anchored… in the floor. The seat defines a notional longitudinal seat axis, as viewed from the perspective of a passenger using the seat". When this passage is read in conjunction with the passage of page 29, lines 16 to 20 and the figures 1 and 1A of P0, which refers to a specific value for the acute angle between the notional seat axis and the notional column axis, it is implicit that there is only one notional longitudinal seat axis C-C for each seat unit. Identical corresponding passages ([0002] and [0043]) are found in the application D0. The Board concludes that the expression "each seat unit defining only one notional longitudinal seat axis" is unambiguously derivable from the parent application P0 and the original application D0.

4. Sufficiency of disclosure (Article 100(b) EPC 1973)

4.1 Concerning the insufficiency objection that the claims are formulated in such a broad way that the skilled person is not able to carry out the invention over the whole ambit defined thereby, the Board has come to the conclusion that this objection is not justified. The Board reached that conclusion for reasons similar to those relative to the objection of added-matter treated in the points 3.1 and 3.2 above. The considerations made by the Board in this respect equally apply to the question of sufficiency of disclosure.

4.2 As regards the meaning of the word "or" in relation to the insufficiency objection of Cathay and Airbus, the Board takes the view that this objection relies on an incorrect interpretation of the claims. The claimed seat units cannot be in the seat mode and the bed mode at the same time. The wording chosen clearly expresses the alternate modes of use and is not intended to cover structures which do not exist and are not disclosed. When the unit is configured as a seat the means which form the seat do indeed "form a seat" but when configured as a bed they are "configurable as a seat". Similarly, when the unit is configured as a bed the means which form the bed do indeed "form a bed" but when configured as a seat they are "configurable for forming a bed". It follows that the wording objected to in the claim exactly represents the disclosure and the Board cannot see a possibility for a successful insufficiency objection in this respect.

4.3 The last objection of insufficiency of disclosure relates to the expression "a major proportion of the bed is disposed…" (emphasis added by the Board). Cathay argue that this expression can normally only be understood as meaning more than 50% and point to the fact that this requirement is not met in the embodiments disclosed in the patent. Virgin on the other hand say that "major proportion" should be understood as meaning a substantial and significant part. Cathay counter that if the intended meaning is simply "quite a lot" as put forward by Virgin the requirement is so obscure that the skilled person would not know whether he was working within the ambit of the claims or not, so that to this extent as least there was an insufficient disclosure of the claimed invention.

Modern idiomatic usage of the term "a major proportion" is wholly consistent with the view put forward by Virgin. This term was already present in the parent application, see claim 44 of P0 as quoted above, and it would have been illogical for Virgin to have imposed a limitation on the claim which was inconsistent with the preferred embodiments. In relation to those embodiments remaining in the present patent specification the proportion of the bed disposed forwardly of the position of the seat depends essentially on the length of the foot-rest (which is now an obligatory element of the claimed subject-matter) and the spacing of the foot-rest from the front edge of the seat-pan. The skilled person does have some design freedom here but it is apparent that for practical and ergonomic reasons these factors will always lead to a substantial and significant part of the bed being disposed forwardly of where the seat had been.

5. Novelty (Articles 100(a), 54(1) EPC 1973)

5.1 Premium submitted that claim 1 was anticipated by document E2. The Board disagree. Even is it assumed, as contended by Premium, that the housing 41 shown in figures 14-16 of E2 was part of the seat unit but not part of the seat, the rearward portion of the headrest which lies within the "rearward space behind the seat" cannot be defined as "a generally triangular passenger support element". Moreover, since the mentioned drawings of E2 are schematic, they will not be used by the skilled person to measure the precise value of an angle which, according to Premium, corresponds exactly to the lower limit of the claimed range of 30º to 60º. In agreement with the case law (see decision T 204/83, OJ EPO 1985, 310: "Dimensions obtained merely by measuring a diagrammatic representation in a document do not form part of the disclosure"), the Board judges that the alleged value of 30º is not directly and unambiguously disclosed in document E2.

5.2 Premium also objected to the novelty of all claims for the Contracting State GB in view of D0 and P0. This objection was based on the argument that the time rank corresponding to the filing of a request for the grant of a patent which designated GB was the date of filing of separate claims for the Contracting State GB, which had been effected on 8 August 2006. In Premium's view, the Board had the competence to re-allocate the filing date for the Contracting State GB.

The contested patent is based on a European divisional application. In accordance with Article 76(1), second sentence EPC 1973, a duly filed divisional application is accorded the same filing date as the parent application. In opposition proceedings it can be examined whether the subject-matter of the European patent goes beyond the content of the earlier application as originally filed (Article 100(c) EPC 1973). If this is the case, the patent has to be revoked (Article 101(2), first sentence EPC). However, there is no provision in the EPC which could serve as a legal basis for allocating a new filing date to the contested patent in opposition proceedings or opposition appeal proceedings. Hence the Board has no competence for re-allocating the filing date of the claims for the Contracting State GB.

5.3 The Board concludes that the subject-matter of the claims is new.

6. Inventive step (Articles 100(a), 56 EPC 1973)

6.1 Virgin have conceded (see point 125 of their letter dated 24 February 2010) that the independent claims of the present request are only entitled to the PCT filing date of the parent application P0 (9 August 2002). The Board notes that document E7 which is published on 5 June 2002 is therefore a prior art according to Article 54 (2) EPC 1973.

6.2 In the Board's view, the closest state of the art document is shown in document E2, in respect to which claim 1 has been delimited in the two-part form.

6.3 As mentioned in the characterising part of the claim, an important feature which distinguishes the claimed seating system over that known from E2 is the disposition of a generally triangular passenger support element in the rearward space defined in the preamble of the claim, said triangular element being adapted to form part of the bed.

6.4 The technical effect that the distinguishing features achieve over the prior art is to provide a flat bed surface which is longer than in the prior art and which can comfortably accommodate passengers of great height on a bed surface having a length up to 2.13 metres (see paragraph [0027] of the patent specification).

6.5 The problem solved by the invention was therefore to optimise the available space in an aircraft cabin.

6.6 Contrary to Premium's contention, the Board considers that the expression "generally triangular", when referring to the form of the support element, is of significance in the context of the present invention. The generally triangular form of the support element is clearly connected to the triangular or trapezoidal geometry of the rearward space (see paragraphs [0025] of the patent specification), that geometrical form of the rearward space being itself clearly the consequence of the herringbone arrangement of the seat units, as defined in the preamble of the claim.

6.7 In E2, the rearward space behind the seat is used to accommodate a counter-top 30 to one side of the adjacent seating unit (page 12, lines 1-5) and optionally a cupboard or other storage space (page 12, lines 11-18). This disposition was apparently chosen in order to avoid that, when the seat unit is configured to form a flat bed, the seatback protrudes into the accommodation space of the passenger behind (page 1, lines 12-16). Moreover, in view of the fact that it is the part of the seatback 42 on which the passenger's head rests which forms the rearward end of the bed in the bed configuration of this seat unit (page 13, lines 10-13 in connection with figure 11), it does not make much sense in terms of space optimisation to extend this end of the bed by a generally triangular passenger support element. Even if the teaching of document E7 is taken into consideration (see Airbus objection), it cannot alter this conclusion. Premium's argument is essentially based on hindsight consideration of what the skilled person would do once he had decided to allocate the space between the housing 41 of the seat unit and the wall of the aircraft to the passenger of that seat unit and not the passenger of the adjacent seat unit as is the case in document E2. But it was the taking of that decision which constitutes the core of the claimed invention and there is no precedent for it in the state of the art.

Therefore, in the Board's judgement, it was not obvious to modify the passenger seating system of document E2 in the claimed manner.

6.8 Airbus' attempts to demonstrate lack of inventive step start from the passenger seating system of document E7. The basic idea of this passenger seating system is to maintain the seats in a forward facing position for take-off and landing and to rotate the seats after take-off in a range between 50º and 60º, so as to form an inward facing herringbone and to allow the seat to recline to form a bed in this position (see claim 1 of E7). Thus, as acknowledged by Airbus, the seat arrangement shown in document E7 does not disclose the feature that each seat unit defines only one notional longitudinal seat axis.

The Board was not convinced by Airbus' argumentation that it would have been obvious to dispense with the swivelling arrangement. E7 mentions at least one good reason for adopting the swivel feature: the substantially forward-facing orientation ensures that the inertial forces or acceleration forces that may arise during take-off and landing are not uncomfortable for the passengers (see column 3, lines 40-46). It is also apparent to the skilled reader that the whole seat disposition disclosed in E7 is specially adapted for use with swivelling seats. There is, for example, a reduced pitch between the seats. This measure, although imposing an upright position of the seatback in the forward-facing orientation, minimises the lost of cabin seat space (see column 3, lines 27-35). In view of the relatively short flying phases needed for take-off and landing in transatlantic flights, it is the swivelling of the seats which renders this disposition advantageous. It is also the swivel feature that imposes an enlarged width for the aisle in order for the seats to be able to rotate to the bed configuration (column 3, line 48 to column 4, line 9). This is inherently contrary to the problem of space saving.

Therefore, in the Board's view, the seating system of document E7 is not one the skilled person would start from if he wanted to optimise space in an aircraft's cabin having fixed seats and it is only with hindsight that he would adopt the fixed seat axis corresponding to the bed configuration of figure 4 of E7.

6.8.1 Independent claim 2 differs from independent claim 1 in that the seats are arranged back to back with the seat units in another column, so that the space into which the flat bed extends is to the rear of adjacent seat backs from respective columns. The above conclusion equally applies by analogy to the seats of this seating system. Independent claim 2 was not subject to any specific attack on inventive step from the side of the opponents. The Board therefore concludes that the subject-matter of the independent claims 1 and 2 involves an inventive step (Article 56 EPC 1973).

7. Request for correction of the decision to grant under Rule 140 EPC

Premium and Cathay requested the Board to correct the decision to grant under Rule 140 EPC by deleting the designation of the Contracting State GB since in their view, said designation contained an obvious mistake.

Premium and Cathay assert that it lies within the competence of the Opposition Division to correct the Examining division's decision to grant a patent pursuant to Rule 140 EPC (identical with former Rule 89 EPC 1973). However, the present Board agrees with Virgin and believes that only the Examining Division is entitled to correct its own decision.

Rule 140 EPC reads as follows: "In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected."

The Board agrees with Premium and Cathay that Rule 140 EPC does not specify the competence to correct errors in a decision. The Board also notes that there is no other provision in the EPC specifying the competence for such a correction decision. Therefore, an interpretation of Rule 140 EPC is necessary on this issue. The case law of the Enlarged Board of Appeal and the Boards of Appeal has dealt with the question of which EPO department of first instance is competent to correct the decision for grant. In its decision G 8/95 (OJ EPO 1996, 481) the Enlarged Board of Appeal held: "The competence to correct errors in a decision under Rule 89 EPC [1973] lies with the body which has given the decision. Hence, in the examination procedure the Examining Division has to decide on a request to correct errors in the decision to grant." (Reasons 3.4). In the decision T 850/95 (OJ EPO 1996, 455) leading to the referral, the facts indeed differed from those of the present case since the request for correction was submitted prior to the mention of the grant of the patent and therefore prior to the date on which the decision to grant took effect according to Article 97(4) EPC 1973. Consequently, no opposition proceedings were pending at the time when the request for correction was filed. However, according to the case law of the Boards of Appeal, the Examining Division has the competence to correct its own decision to grant also in situations where the request for correction was submitted after the initiation of opposition proceedings (T 226/02 and T 268/02, both decisions not published in the OJ EPO). In both decisions the Board referred to G 8/95 (loc. cit.) and held that the competence to correct errors in a grant decision lied with the Examining Division which had taken that decision. In T 226/02, where the Opposition Division had corrected the grant decision pursuant to Rule 89 EPC 1973, the Board came to the conclusion that "the Opposition Division acted ultra vires in taking a decision under Rule 89 EPC [1973] to correct a decision of the Examining Division" (Reasons 5.1). In decision T 79/07 (not published in the OJ EPO) the Board acknowledged the Examining Division's competence for correcting the grant decision even after the Opposition Division had revoked the patent by a decision which was the subject of the appeal proceedings. In the Board's view the reason for acknowledging the Examining Division's exclusive competence to decide on a request for correction of the grant decision could be seen in the requirement developed by case law that the correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Hence there is an obvious mistake in a grant decision within the meaning of Rule 140 EPC, if the text given for grant is not and obviously cannot be what the Examining Division actually intended, and the text erroneously indicated can be replaced by that on which the Examining Division actually wanted to base its decision (see T 850/95, loc. cit., Reasons 3. and T 1093/05, Reasons 7.).

Premium argue that, in accordance with Article 114(1) EPC 1973, the Opposition Division had to correct the grant decision since, as stated in decision T 156/84 (OJ EPO 1988, 372), it had the duty vis-à-vis the public not to grant or maintain patents which were not legally valid, irrelevant of how and when the EPO became aware of the circumstances being relevant for the legal validity of a patent. The Board, however, does not agree with this argument. The principle of examination by the EPO of its own motion as set out in Article 114(1) EPC 1973 applies in all proceedings before the EPO. However, this principle cannot justify acting ultra vires and it therefore only applies to the extent to which the EPO department acts within its competence. This finding is also in line with decision T 156/84 (loc. cit.). The Board of Appeal concluded there that for establishing whether a granted patent can be maintained the Opposition Division was obliged to examine the relevance of cited state of the art even if it was introduced after expiry of the opposition period because the principle of examination by the EPO of its own motion (Article 114(1) EPC 1973) took precedence over the possibility to disregard late-filed facts or evidence (Article 114(2) EPC 1973). Decision T 156/84 (loc. cit.) concerned the question of how the Opposition Division had to deal with late-filed evidence which was filed in support of the ground for opposition under Article 100(a) EPC 1973. However, there is no indication in decision T 156/84 (loc. cit.) that Article 114(1) EPC 1973 could establish any competence. Consequently, neither Article 114(1) EPC 1973 nor decision T 156/84 (loc. cit.) provides a basis for a competence of the Opposition Division for correcting the grant decision.

Lastly, the Board turns to the argument that the principle of good faith and the principle of proportionality, which were applicable pursuant to Article 125 EPC 1973 in proceedings before the EPO, would establish a competence of the Opposition Division for correcting the grant decision. The purpose of Article 125 EPC 1973 is to fill any gaps that may occur in the application of the procedural provisions of the EPC. However, the Board considers that these principles also do not establish a competence of the Opposition Division to correct the grant decision for the following reasons.

According to Article 19(1) EPC 1973 the Opposition Divisions are responsible for the examination of oppositions against any European patent. The substantive examination of the opposition is prescribed in Article 101 EPC. If the opposition is admissible, the Opposition Division examines whether at least one ground for opposition laid down in Article 100 EPC 1973 prejudices the maintenance of the European patent (Article 101(1) EPC).

Article 100 EPC 1973 lays down the exclusive grounds for opposition being limited to and essentially the same as some grounds for revocation under national law (Article 138(1)(a)-(c) EPC 1973). The function of this provision is to provide, within the framework of the EPC, a limited number of legal bases, i.e. a limited number of objections on which an opposition can be based (G 1/95, OJ EPO 1996, 615, Reasons, point 4.1). An incorrect designation of a Contracting State is not one of the grounds for opposition under Article 100 EPC 1973. This has also not been disputed by Premium and Cathay. It is established Board of Appeal case law that further grounds which would lead to a refusal of a European patent application in the examination proceedings cannot be successfully presented in opposition proceedings (see for example G 1/91, OJ EPO 1992, 253; J 22/86, OJ EPO 1987, 280, Reasons, point 18; T 99/85, OJ EPO 1987, 413, Reasons, point 4; T 127/85, OJ EPO 1989, 271; T 301/87, OJ EPO 1990, 335, Reasons, point 3.3 and 3.4; T 550/88, OJ EPO 1992, 117, Reasons, point 4; T 428/95, not published in the OJ EPO, Reasons, point 4.2). In view of this established case law and the relevant EPC provision, the Board considers that the opposition procedure is not designed to remedy all possible deficiencies of the granting procedure or of a granted patent. For example, an objection on the basis that the granted patent claims are not concise and clear cannot be considered by the Opposition Division (see for example T 336/96, not published in the EPO). Also defects and errors of a purely formal character in the granting procedure cannot lead to a revocation of the patent in opposition proceedings since such defects are properly regarded as cured by the act of grant (J 22/86, loc. cit., Reasons 18.). Hence the scope of opposition proceedings is limited as regards the grounds for challenge to granted European patents.

Also after grant observations of third parties under Article 115, first sentence EPC are only admissible if they oppose the patentability of the invention to which the patent relates. "Patentability" refers only to the substantive requirements set out in Articles 52 to 57 EPC as the identical heading of Chapter I, Part II of the EPC suggests.

The provisions of Articles 99 et seq. and Article 115 EPC were drafted with the public interest in mind (see also T 60/91 (OJ EPO 1993, 551, Reasons 9.5). Therefore, in inter partes opposition proceedings before the EPO account must not only be taken of the interests of the parties involved. The Board shares the view that the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid and that the public has to be enabled to rely as far as possible on the legal validity of a patent granted by the EPO (see T 156/84, loc. cit., Reasons 3.5). However, this duty is subject to restrictions. As set out above, opponents in opposition proceedings and third parties filing observations can challenge the patent only in a limited scope. This means that neither the public nor opponents have legitimate expectations that any deficiency of the granted patent would be remedied by the EPO. Consequently, in the present case, the public could not legitimately expect that the designation of the Contracting State GB would be corrected in opposition proceedings. Therefore, the principle of good faith does not apply in the present case.

For similar reasons the principle of proportionality does not apply in the present case. It is obvious from the EPC provisions concerning post-grant proceedings that the legislator did not envisage empowering the Opposition Division to set aside all legal and factual consequences of any mistake which occurred in examination proceedings. It is therefore the Board's view that the authority conferred to the Opposition Division by the EPC provisions cannot be extended because of the principle of proportionality.

In view of the above the Board concludes that in the present case the Opposition Division in opposition proceedings had no competence to correct the decision taken by the Examining Division. Thus the Opposition Division would have acted ultra vires if it had corrected the grant decision. The same applies to the Board of Appeal in opposition appeal proceedings (Article 111(1), second sentence EPC 1973). Consequently, the request for correction of the decision to grant must be rejected.