T 0393/16 04-12-2018

1. Having regard to the documentation submitted by the appellant, the Board comes to the conclusion that the alleged public prior use "eTire II", if proven, would disclose all features of claim 1 of the main request .

1.1 The appellant supported its allegation of public prior use of the "eTire II" system inter alia by document E2.

E2 is a paper, published in "RFiD Journal" and describes the development of the eTire II system, based on the antecedent eTire system.

Furthermore a declaration from the witness Frédéric Marques was submitted (E2quater) which should prove the public availability and support further technical details as far as they are relevant for the contested invention.

Thus, both, E2 and E2quarter together form the basis for the alleged public prior use "eTire II".

1.2 Both parties agreed that all features of claim 1 according to the main request beside the last feature of the characterizing portion are disclosed in the paper (E2).

Considering also that the Opposition Division concluded (see page 12 of the decision under appeal) that neither E2 nor E2quater disclose a coupling between the gate mechanism and the readers of the antennas, the crucial question is whether or not the last feature of the characterising portion, namely

a gate mechanism (58) for sensing a movement of the vehicle (62) within the portal, the gate mechanism being coupled to the at least one first RFID reader (40A, 40B) for operatively initiating at least one new data collection sequence within the portal (50)

can be derived from E2 or the declaration of the witness according to E2quater.

1.3 In particular it has been disputed by the respondent that the last sentence in the first paragraph of page 2 (E2quater) can be understood as a coupling of the gate mechanism to the RFID reader for operatively initiating a new data collection sequence in the sense of the last feature of claim 1.

The respondent argues that the sentence "une première cellule photoélectrique déclenchait la lecture de l'identifiant du camion" merely means that a process is triggered to enable the reading process of the RFID-reader, but it remains open whether or not in fact the reading process is started and the RFIDs are read. A connection which would prove a coupling is not mentioned in E2quater.

The Board does not follow this view and comes to a conclusion different from that of the opposition division.

The last sentence in the first paragraph of page 2 clearly states that the first photoelectric cell (i.e. a light gate) activates ("déclencher") the reading of the vehicle RFID tag. In the second paragraph of page 2 it is explained that subsequently by moving through the portal the tire RFID tags are read.

Thus, once a vehicle enters the portal by passing the first light gate, the RFID reading procedure is started, beginning with the vehicle tag and followed by the tire tags. Since the light gates are part of the gate mechanism (which was not contested by the respondent) the gate mechanism starts the reading of all tags, which has to be seen as a coupling in the sense of the last feature of claim 1.

2. The case is remitted to the first instance department for further prosecution, Article 111 (1) EPC.

The respondent contests the public availability of the prior use (eTire II) as laid down in E2 and E2quater. In particular the respondent denied that the beta test phase of eTire II in Ontario as described in paragraph 5 of page 2 (E2quater) was available to the public at that time.

The gate mechanism feature (see above, 1.2) of claim 1 in suit is only disclosed in the declaration E2quater. Thus the content of E2quater is of essential relevance for the issue of novelty (cf. point 1, above) and it has to be determined whether or not eTire II (as shown in E2 and E2quarter) is a state of the art according to Article 54 (2) EPC.

Since the first instance department did not yet examine whether eTire II is a prior use forming a state of the art according to Article 54 (2) EPC, the Board considers that a remittal to the first instance for further prosecution is appropriate. This view was shared by the parties.

3. The request of reimbursement of the appeal fee is rejected since no substantial procedural violation occurred in first instance proceedings, Rule 103 (1) a) EPC.

3.1 The opponent/appellant submits that a procedural violation took place in first instance proceedings since the witness F. Marques was not heard, although the opponent stated that the witnesses Marques and King would have been able to confirm that the beta test phase in Ontario was public (cf. E2quater, page 2, paragraph 5) and its results were available to everybody at that time.

3.2 However, the Board takes the view that the opposition division had no reason to hear the witnesses, because it came to the conclusion that - even considering all allegations of F. Marques according to E2quater as correct and that the beta test phase was public - the alleged prior use of the "eTire II" system according to E2 and E2quater did not disclose or render obvious the subject-matter of the invention in suit. In fact, the witnesses could only have corroborated the allegations of public prior use but not supplemented the relevant features thereof as put forward in writing, and the latter were found by the opposition division to be not relevant for novelty and inventive step.