T 1563/16 03-12-2021

Reasons for the Decision

Novelty in view of document D27

1. In the decision under appeal the opposition division found that the subject-matter of claim 1 as granted was not new in view of document D27 (cf. points 21 to 24 on pages 7 to 10). This is refuted by the appellant, who holds the view that at least features 1b, 1c, 1d, 1e, 1g, 1i, 1j, 1l and 1m are not disclosed by document D27.

(a) Inner tubular layer

2. Document D27 concerns the manufacture of a knitted tubular hose covering. In column 3, lines 43 to 47 it is mentioned that, during the manufacture of the knitted hose covering, the hose is pulled upwardly so that "the surface of the tubular fabric which would otherwise be the inner surface becomes the outer surface of the fabric, and vice versa". Even though its content cannot be regarded as part of the disclosure of document D27, the board finds the reference to document D40, cited in column 1, line 51 of document D27, helpful for understanding what is implicit from the above-mentioned passage, namely that the inner tubular layer (reference sign y in Figure 3 of document D40) is pulled upwardly (in the direction of the arrow with reference sign b), causing what initially is the inner surface of the tubular fabric to become the outer surface of the fabric, and vice versa. From this passage, the board deduces that a knitted reinforcement layer is wound on an inner tubular layer. Furthermore, column 1, lines 24 to 38 of document D27 refers to the practice of covering a vacuum cleaner hose. As per definition a hose is a flexible tube or pipe. Thus, the appellant's examples of rigid metal vacuum cleaner pipes in Exhibits 1 to 3 do not qualify as hoses. The vacuum cleaner hose mentioned in document D27 must therefore be made of a polymer material. Hence, the board adheres to the respondent's view that feature 1b is known from document D27.

Also the argument that the subject-matter of claim 1 would be constrained to hoses that serve to resist pressure from the inside is not followed. The gardening hoses mentioned in the introductory part of the patent description merely reflect a preferred use of the flexible hose (paragraph [0001]: "particularly but not exclusively"). No field of application or intended use is included in claim 1.

(b) First and second series

3. The board is unable to see why the yarns Y1 to Y8 used to produce the fabric of document D27 could not be grouped in two or more series of yarns in line with what is required by feature 1d. As long as each mesh of the fabric is formed by a portion of a yarn of the first series forming a first chain eyelet and a portion of a yarn of the second series forming a second eyelet, in accordance with features 1i and 1j, the requirements of claim 1 would be met in this respect. Further particularities that might call for a different selection of the yarn series have not been claimed and can therefore not be relied on when determining the matter for which protection is sought.

(c) Spirally wound, inclined

4. As regards features 1e and 1g, the board cannot find fault in the opposition division's conclusion (s. the fourth paragraph on page 10 of the decision under appeal).

According to column 1, lines 41 to 51 of document D27 the knitted reinforcement layer is fabricated by means of a circular knitting machine of the type with multiple yarn feeds, a stationary needle cylinder and rotating cam tracks and yarn guides. Generally, such machines are operated by continuously running a series of bobbins with separate yarns around a vertical axis and by successively feeding the yarns to a set of needles that reciprocate in a longitudinal direction parallel to the axis. Accordingly, for each revolution of the machine at least one mesh course is produced. The board shares the respondent's view that, similarly to document D40, the yarns of the hose covering of document D27 are spirally wound on an inner tubulary layer. Even if the inclination of the mesh courses is not immediately apparent from Figure 7 of document D27, the board is at a loss as to how the prior art hose covering could have been produced other than in a continuous and progressive manner creating mesh courses inclined with respect to the longitudinal axis and mesh wales substantially parallel to said axis. The appellant's suggestions that the desired form could have been obtained by "introducing discontinuity elements" or that the fabric could have been knitted along the axis of the knitted reinforcement layer are insufficient to cast doubt on the above findings. In the board's view, features 1e and 1g are thus disclosed by document D27.

(d) U-shaped eyelets

5. Feature 1k requires that each of the first and second chain eyelets is substantially U-shaped with a pair of longitudinal sections joined by a substantially transverse section. Given that the U-shaped eyelets of the knitted reinforcement layer of document D27 are formed by the reciprocal movement of the needles parallel to the longitudinal axis, the legs of the eyelets will substantially extend along the longitudinal axis, much in a similar way as in the patent. The slight inclination visible in Figure 7 of document D27 would seem to be inherent to knitting eyelets (cf. Figures 3 and 5 of the patent). And even though the sections joining the legs of the eyelets assume a curved form in the schematic illustration of Figure 7 of document D27, the board is satisfied that their orientation can still be considered as "substantially transverse".

(e) Superimposed, identical

6. According to normal understanding, something is superimposed when it is "placed or laid on top of something else"; two things are superimposed when they are "imposed one upon another, typically so that both are still evident" (see, for example, the Oxford English Dictionary). The term "reciprocally" is generally understood as "with regard to each other". Hence, the respective substantially longitudinal sections and the substantially transverse sections of the first and second eyelets are reciprocally superimposed when they are placed on top of each other.

In line with the established case law (see the Case Law of the Boards of Appeal of the EPO, 9th edition, July 2019, II.A.6.3), the board does therefore not see any need to turn to the patent description in order to interpret the expression "reciprocally superimposed" which in itself imparts a clear, credible technical teaching to the skilled reader. Hence, the appellant's line of argument based on the further limitations "radially and/or frontally" contained in paragraph [0032] of the patent is not accepted. The same applies to the argument that a much broader interpretation of the term "superimposed" followed from the prior art description in paragraphs [0010], [0012] of the patent or from the detailed description of the embodiments in paragraphs [0045], [0046], [0049], [0058] and [0059] of the patent.

7. This is different for the adverbial adjuncts "completely substantially", the meaning of which is not immediately clear. The board observes that the patent description uses the expression "in a substantially complete manner" instead (cf. paragraphs [0031], [0033] and [0047]). The parties did not dispute this interpretation. Incidentally, it leaves some margin for the extent to which the respective substantially longitudinal and substantially transverse sections of the eyelets are placed on top of each other, covering a situation as in Figures 3 and 5 of the patent where a (small) portion of a section of the lower eyelet appears from below the corresponding section of the upper eyelet.

8. In the light of these considerations, the board adheres to the appellant's view that the disclosure of document D27 is at variance with the subject-matter of claim 1 as granted. Figure 7 of document D27, an excerpt of which is reproduced below, illustrates that each mesh

FORMULA/TABLE/GRAPHIC

is formed by an inner eyelet nested inside an outer eyelet on the same (cylindrical) plane. For example, inner eyelet 3 lies inside outer eyelet 4, while inner eyelet 5 lies inside outer eyelet 6. Even if some overlap would inevitably occur in the area of inflection between longitudinal sections of the eyelets, on the one hand, and the horizontal float stitches depicted by reference signs 1a, 3a, 5a, 7a and the diagonal stitches represented as 2a, 4a, 6a, on the other hand, the substantially longitudinal and substantially transverse sections of the inner and outer eyelets of document D27 are not placed on top of each other in a substantially complete manner. Nor can the nested eyelets be considered as substantially identical.

9. The respondent argued that the interpretation according to which the eyelets were superimposed in two different planes was unrealistic and was not found in real hoses. In the board's view, this line of argument is not so much concerned with the novelty objection in view of document D27, but rather touches on the question whether the invention is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It may very well be that, as the respondent puts forward, the knitted yarns of the hose according to claim 1 would be pressed into a flat arrangement as soon as an (unclaimed, hence optional) outer layer is applied thereon. Further, it cannot be excluded that a sufficient tension exerted on the knitted reinforcement layer of the claimed hose would, under circumstances, force some of the upper eyelet sections into the same cylindrical plane as the lower eyelet sections. Nevertheless, this does not imply a contrario that, in the absence of such an outer layer and an external tension, the eyelets of the flat, knitted reinforcement layer shown in Figure 7 of document D27 would automatically lie on top of each other. But even assuming, arguendo, that this were indeed probable and that the representation of Figure 7 possibly served to improve the visual understanding of the prior art knitting structure, the board does not accept that the requirements of features 1l and 1m can be derived directly and without ambiguity from document D27.

10. A certain analogy between the fabrication of the knitted reinforcement layers of the patent and of document D27 cannot be denied. It is reasonable to assume, however, that the relative arrangement of the yarns in each of the end products is determined by many factors that are left unmentioned both in the patent and in document D27. One example could be the specific geometry of the needle hooks illustrated in Figure 3 of document D27 and Figure 7 of the patent. The appellant has convincingly argued that a different hook geometry may impact the way in which eyelets are arranged with respect to each other. Therefore, the board is not persuaded that the intermediary manufacturing steps apparent from Figures 1 to 6 of document D27, notwithstanding a certain similarity with the patent figures, would have inevitably led to a flexible hose with the same structure as set out in claim 1 as granted.

11. In summary, the respondent has not convinced the board that the flexible hose disclosed in document D27 has, for each of its meshes, first and second chain eyelets that are substantially identical to each other (feature 1l), their respective substantially longitudinal sections and substantially transverse sections being placed on top of each other in a substantially complete manner (feature 1m). A similar conclusion also holds with respect to features 6l and 6m of the independent process claim 6 as granted, the wording of which ("substantially identical", "completely substantially superimposed") comes very close to that of features 1l and 1m.

(f) Conclusion

12. In view of the above, the board concludes that the opposition division was incorrect in its finding that the subject-matter of claim 1 as granted lacks novelty in view of document D27 (Article 54(1) and (2) EPC). Furthermore, the board also concludes that the subject-matter of claim 6 as granted is new in view of document D27 (Article 54(1) and (2) EPC).

Novelty in view of document D24

13. In the statement of grounds of appeal, the respondent raised a novelty objection based in view of the figure labelled 'Interweave' disclosed on page 3 of document D24. Similarly as in Figure 7 of document D27, at least the substantially transverse sections of each eyelet seem to lie on the same cylindrical plane, resulting in smaller eyelets nested inside larger eyelets. This runs counter to the requirements of features 1l and 1m (and features 6l and 6m).

14. Hence, the subject-matter of claims 1 and 6 as granted is new with respect to document D24 (Article 54(1) and (2) EPC).

Novelty in view of documents D2, D12 - right to priority

15. Documents D2 and D12 are international publications which claim a priority date of 30 July 2010 and 14 January 2011, respectively, i.e. after the priority date of the patent. According to the respondent, claims 1 and 6 as granted do not enjoy the right to priority of the Italian application VI2010A000189, filed in English translation as D38, so that both documents D2 and D12 would constitute state of the art within the meaning of Article 54(3) EPC.

(a) Right to priority

16. The respondent's case hinges on the argument that, contrary to the requirements of Article 87(1) EPC and opinion G 2/98, claims 1 and 6 as granted are not directed to the same invention as the earlier Italian application VI2010A000189. The board cannot follow this line of argument, in particular regarding the deletion of the feature "mesh wales of said first yarn series are superimposed to the mesh wales of said second yarn series" from claim 1 of the priority application. It is generally recognised that a wale of a knitting refers to a column of loops or eyelets produced by the same needle on successive knitting cycles. According to the third paragraph on page 2 of document D38, an English translation of VI2010A000189, a mesh of the knitting is formed by simultaneously hooking a yarn of a first series forming a first eyelet and a yarn of a second series forming a second eyelet. Figures 7 and 8 of the priority application give a visual representation thereof. In consequence, each mesh wale of the priority application is inevitably formed of a column of already superimposed eyelets. It is not apparent to the board how the wording of claim 1 as granted, which replaces the incorrect general formulation of claim 1 of the priority application by a set of more limited features (features 1i, 1j and 1m), can result in a generalisation of the claimed subject-matter.

17. Concerning features 1k, 1l and 1m of claim 1 as granted, the board accepts that their wording ("substantially U-shaped", "substantially identical", "substantially longitudinal sections", "substantially transverse sections") is not disclosed as such in the priority application. However, Figures 1, 2 and 4 of the priority application illustrate that the eyelets disclosed as "superimposed on each other in a substantially complete manner" in the bottom paragraph on page 2 of document D38 each have two leg sections substantially extending in a direction parallel to axis X and a substantially transverse section. Thus, no ambiguity is possible regarding whether the eyelets of the priority application are substantially U-shaped and substantially identical to each other. Further, the board fails to see how the use of the term "joined" in feature 1k of claim 1 as granted is without basis in the priority application. In the board's view, the term "joined" is used here as an adjective rather than a past participle implying a preceding joining action. In fact, considering that each eyelet must be made from a single portion of yarn (features 1i and 1j), the specific wording of feature 1k can only mean that the legs of the eyelets are made in one piece with the transverse section. As regards the term "reciprocally" used in feature 1m, the appellant's view is shared that claims 3 and 4 of the priority application offer a direct and unambiguous basis.

18. The respondent further argued that feature 1o was without basis in the priority application. According to the fourth and fifth paragraphs on page 3 of document D38, however, the two yarns 5, 6 are superimposed "only at the respective eyelets"; the meshes thus formed differ from "a hose belonging to the state of the art, in which meshes 7, 7', 7", ... are only formed by yarn of one of the two series". Further, the ninth paragraph on page 4 of document D38 refers to a yarn of the first series 5 and a yarn of the second series 6 simultaneously hooked "in order to obtain a single-layer knitted reinforcement 4 with each mesh wales 10, 10', 10",... defined both by yarns of the first series 5 and by yarns of the second series 6". Also claim 8 of the priority application in its English translation D38 refers to "a single layer reinforcement knitting" with chain meshes comprising a second eyelet made by a yarn of the second series superimposed to a first eyelet made by a yarn of the first series. Considering the content of the priority application as a whole, the board thus concludes that the skilled person would derive directly and unambiguously that the reinforcement knitting is generally single-layer and locally of double-yarn type.

19. The same applies to features 6k, 6l and 6m and 6o of claim 6 as granted, which is based on claim 8 of the priority application.

20. In the board's view, the subject-matter of claims 1 and 6 as granted is therefore entitled to claim priority from the earlier application VI2010A000189 pursuant to Article 87(1) EPC. The effective filing date of the claimed subject-matter in the sense of Article 89 EPC is therefore 7 July 2010.

(b) Documents D2 and D12

21. Documents D2 and D12 have priority and publication dates which are after the effective filing date of the patent. Hence, they do not constitute state of the art within the meaning of either Article 54(2) EPC or Article 54(3) EPC.

Conclusion on novelty

22. As none of the novelty objections raised by the respondent against the claims as granted is successful, the ground for opposition under Article 100(a) EPC together with Article 54(1) EPC does not prejudice the maintenance of the patent in its granted version.

Admittance of late-filed objection

23. The respondent's objection of lack of sufficiency of disclosure was raised for the first time with letter dated 18 November 2021, i.e. after notification of the summons to oral proceedings on 21 January 2021. This constitutes an amendment of the respondent's appeal case for which, according to Article 25(1) and (3) RPBA 2020, Article 13(2) RPBA 2020 applies. According to this provision, the amendment is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

24. The respondent's only argument put forward in support of the late filing rests on an alleged change in the specific meaning of the term "superimposed". In the board's view, exceptional circumstances are not justified, for the following reasons. In point 10 of the communication under Article 15(1) RPBA 2020, the board construed the term "superimposed" in the sense that the respective longitudinal and transverse sections of the first and second eyelets were to be placed on top of each other. In doing so, the board's preliminary opinion deviated from the opposition division's conclusion that longitudinal and transverse sections placed next to each other were also superimposed (cf. points 22 and 24 of the decision under appeal). However, the board's interpretation of the term "superimposed" was entirely in line with the appellant's position in point 8 of the statement of grounds of appeal:

"[T]he reference "superimposed" cannot be interpreted as meaning that the sections are adjacent and lie on the same plane, as it has been alleged. Superimposed means that they do not lie on the same plane, namely that the lie one on (i.e. above) the other, and not adjacently on the same plane." (emphasis in original)

Thus, the underlying issue invoked by the respondent for justifying their late-filed objection was already on file at the earliest stage of the appeal proceedings. There was therefore no reason to wait more than five years and file a new objection of lack of sufficiency of disclosure just two weeks before the scheduled date of oral proceedings.

25. The board concludes that the respondent has not provided cogent reasons justifying exceptional circumstances. The respondent's objection of lack of sufficiency of disclosure is therefore not taken into account pursuant to Article 13(2) RPBA 2020.

Remittal to the opposition division

26. Article 111(1), second sentence, EPC leaves it to the board's discretion to decide on the appeal either by exercising any power conferred on the department of first instance or by remitting the case to that department. The appropriateness of remittal to the department of first instance is thus a matter for decision by the board, which assesses each case on its merits.

27. In cases where a decision of a first-instance department is based solely on one particular issue which is decisive for the case, other essential issues being left outstanding, and the subsequent appeal on the particular issue is allowed, the board normally considers remitting the case to the first-instance department for consideration of the undecided issues (see Case Law of the Boards of Appeal of the EPO, 9th edition, July 2019, V.A.7.4). This is all the more legitimate if the undecided issues cannot be dealt with by the board without an undue burden so that "special reasons" present themselves in the sense of Article 11 RPBA 2020 (see Supplementary publication 2, OJ EPO 2020, 54).

28. The opposition division's sole ground for rejecting the claims as granted was lack of novelty of the subject-matter of claim 1 in view of document D27 (s. points 21 to 24 of the decision under appeal). As set out in point 12. above, the board follows the appellant's view that the subject-matter of claim 1 as granted is new over document D27. Thus, the opposition division's sole ground for rejecting the main request (patent as granted) does not hold.

29. In the reply to the grounds of appeal, the respondent raised, in addition to the novelty objections discussed above, multiple inventive step objections against the subject-matter of claims 1 and 6 as granted. These can be grouped as follows:

(a) Objections against claim 1 as granted:

(i) starting from document D1, D7, D8, D9, D14 or D15 (each in combination with either of documents D3, D4, D5, D6 or D13);

(ii) starting from document D16 to D23, D10, D24, D25 or D27.

(b) Objections against claim 6 as granted:

(i) starting from D1 (in combination with either of documents D3 to D6);

(ii) starting from D3 (in combination with document D10 or document D11).

30. The opposition division did not take position on inventive step of the subject-matter of the claims as granted, neither in the decision under appeal nor in the communication issued in preparation of the oral proceedings. Nor can their view on the matter be derived from the reasoning provided in respect of the subject-matter of claims 1 and 6 according to the third auxiliary request, which was found to be novel and inventive over document D27 in view of an additional feature taken from dependent claims 3 and 8 as granted, respectively.

31. The board further notes that the appellant's arguments in favour of inventive step are limited to the submissions filed with letter dated 26 November 2021 in respect of the respondent's inventive step objections grouped under (a)(i). No arguments were presented in respect of the objections grouped under (a)(ii) against the subject-matter of claim 1 as granted or in respect of the objections grouped under (b)(i) and (b)(ii) against the subject-matter of claim 6 as granted.

32. Under these circumstances, the board judges that ruling on the undecided issue of inventive step for the first time in appeal would constitute an undue burden and would run counter to the primary object of appeal proceedings to review the decision under appeal in a judicial manner as expressed in Article 12(2) RPBA 2020. The case is therefore remitted to the opposition division for further prosecution, in particular for examining the ground for opposition under Article 100(a) EPC together with Article 56 EPC in respect of the granted claims.