T 2240/18 10-01-2023

I. The appellant (opponent) filed an appeal against the interlocutory decision of the opposition division, posted on 10 July 2018, in which the opposition division found that European patent No. 2 671 463 in an amended form met the requirements of the EPC.

II. In reply to the statement of grounds of appeal, the respondent (patent proprietor) submitted inter alia nine further claim sets corresponding to auxiliary requests 1 to 9.

III. In a communication of the Board of Appeal pursuant to Rule 100(2) EPC, the appellant was given a four months time period to file possible submissions in regard to the auxiliary requests 1 to 9.

IV. The appellant replied to the Board's communication and commented on the nine auxiliary requests.

V. By letter dated 11 March 2022, the respondent replied to the appellant's comments replacing all its previous requests with amended auxiliary requests 1 to 6.

VI. The Board subsequently summoned the parties to oral proceedings. In a communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA 2020), the Board informed the parties of its preliminary opinion on the case.

VII. By letter dated 4 January 2023 the respondent's representative announced that the respondent would not attend and would not be represented at the oral proceedings scheduled in person.

VIII. Oral proceedings before the Board were held in person on 10 January 2023 in the absence of the respondent.

IX. The appellant requested that the decision under appeal be set aside and the European patent be revoked.

X. The respondent had requested (in writing) that the appeal be dismissed (main request) or as an auxiliary measure that the patent be maintained in amended form based on one of auxiliary requests 1 to 6, filed with letter dated 11 March 2022.

XI. The following evidence was referred to by the appellant:

D1 : WO 02/019850 A1

D6 : US 2012/0073035 Al

XII. Independent claims 1 and 11 of the main request have the following wording:

"1. Under-garment (10, 110, 210) adapted to be associated with a garment (20),

said under-garment (10, 110, 210) including an inflatable protection element (12, 112, 212) or airbag, wherein the under-garment includes a pocket (25) adapted to be placed at the back of the user and a rigid plate shaped as a "hump" (26),

said pocket (25) receiving said rigid plate shaped as a "hump" (26), and

wherein said rigid plate shaped as a "hump" (26) houses a source of pressurized gas and an electronic unit for activating the inflatable element (12, 112)."

"11. Method for equipping a garment (20) with an inflatable protection element (12, 112, 212) or airbag, comprising the steps of

a) associating said inflatable protection element (12, 112, 212) with an undergarment (10, 110, 210);

b) associating said under-garment (10, 110, 210) provided with said inflatable protection element (12, 112, 212) with said garment (20),

wherein the under-garment (10, 110, 210) includes a pocket (25) arranged at the back of the user and a rigid plate shaped as a "hump" (26), said pocket (25) receiving said rigid plate shaped as a "hump" (26), and wherein said under-garment is connected to said garment by connecting first said pocket (25)."

Claim 1 of auxiliary request 1 reads as follows:

"1. Under-garment (10, 110, 210) adapted to be associated with a garment (20),

said under-garment (10, 110, 210) including an inflatable protection element (12, 112, 212) or airbag, wherein the under-garment includes a pocket (25) adapted to be placed at the back of the user and a rigid plate shaped as a "hump" (26),

said pocket (25) receiving said rigid plate shaped as a "hump" (26),

wherein said rigid plate shaped as a "hump" (26) is associated with a source of pressurized gas and an electronic unit for activating the inflatable element (12, 112)

and wherein the under-garment includes a connecting portion (27) disposed around the pocket (25) and intended to be connected with a corresponding connecting portion of the garment (20)."

The wording of the independent method claim 10 of auxiliary request 1 is the same as that of claim 11 of the main request.

Compared to claim 1 of auxiliary request 1, in claim 1 of auxiliary request 2 the following feature is appended:

", and wherein the under-garment includes a first connection area (30) at the wrists, a second connection area (31) between the shoulders and elbows, and/or a third connection area for the thorax (32) between the chest and a side area of the pelvis".

The wording of the independent method claim 9 of auxiliary request 2 is the same as that of claim 11 of the main request

In auxiliary request 3, the wording of claim 1 is identical to that of claim 1 of the main request. All method claims are deleted.

Claim 1 of auxiliary request 4 is identical to claim 1 of auxiliary request 1 whereas again all method claims are deleted.

In auxiliary request 5 the wording of claim 1 is identical to that of claim 11 of the main request. All product claims are deleted.

Compared to auxiliary request 5, in claim 1 of auxiliary request 6 the following feature is appended:

"wherein after connecting the pocket (25), sleeves of said under-garment are connected to corresponding sleeves of the garment (20)"

XIII. The arguments of the appellant may be summarised as follows.

Main request

Claim 1 - Article 84 EPC

Claim 1 lacked clarity in regard to the term "houses". The opposed patent failed to provide any information about how the term "houses" should be interpreted.

Claim 1 - Article 56 EPC

In case it were considered that D1 did not disclose that:

i) the rigid plate received in a back side pocket is shaped as a "hump";

ii) the rigid plate shaped as a "hump" houses a source of pressurized gas and an electronic unit for activating the inflatable element,

D1 should be considered as the closest prior art.

The objective technical problem to be solved could be seen as reducing the risk that the source of pressurized gas and the electronic unit became damaged in case of an accident. The claimed solution was obvious in view of paragraph 37 of D6. D1 did not teach away from housing the electronic unit together with a source of pressurised gas under the hump-shaped plate. The skilled person would have understood that the display and the electronic control could be separated from each other so as to leave the display installed on the outer garment and to connect it by cables to the electronic control unit. A cabled connection between the components of the inflation means was anyway foreseen in D1, see page 7, lines 25/26 and 32/33.

Claim 11 - Article 56 EPC

D1 also constituted the closest prior art to the subject-matter of claim 11. If it were considered that the claimed method differed from D1 by

i) the rigid plate of the back protector being "shaped as a hump" and by the feature

ii) "the undergarment is connected to said garment by connecting first said packet",

the two features did not provide a synergistic technical effect. They rather related to two partial objective problems.

The distinguishing feature i) did not provide any particular technical effect compared to the back protector known from D1 and represented merely an alternative to the shape known from D1. The use of a hump shaped rigid plate was not only trivial but it also belonged to common general knowledge and was disclosed for example in D6.

Similarly, no particular technical effect could be acknowledged for the second distinguishing feature. D1 disclosed a connection of the inner gilet with the outer jacket by zippers but did not specify where precisely the zippers were positioned. The claim covered the possibility that there was even only one connection area, which was located at the pocket. Connecting the two garments at that position did not provide any advantage. Even in case of a plurality of connecting areas being provided between the under-garment and the outer garment, no surprising effect could be obtained by connecting the areas provided at the back portion of the undergarment with corresponding areas of the garment before connecting other areas (for example the area at the wrists). The partial objective technical problem was thus rather to provide an alternative way of connecting the two garments. Applying one of the possible solutions which were available to the skilled person did not require particular skills and hence did not involve an inventive step.

Auxiliary request 1 (n.b. this argument was submitted within the framework of the respondent's first auxiliary request filed with the reply to the statement of the appeal grounds)

To overcome the clarity objection raised against the term "houses" in the second "wherein"-clause of the main request, the term had been replaced with the expression "associated with". However, the term "associated with" would provide broader protection than the verb "house". The amendment would thus extend the protection conferred by the patent with respect to that of the main request, giving an unwarranted advantage to the proprietor. The exceptions to the principle of the prohibition of reformatio in peius set out in G 1/99 did not apply since the present case was completely different to the situation underlying that decision. According to G 1/99, an exception to the above-mentioned principle may only be made to meet an objection put forward during the appeal proceedings (emphasis by the appellant); in particular if the patent could not be maintained for reasons which were not raised at the first instance (see point 12 of the Reasons). In the present case, the clarity objection against the term "houses" was not raised for the first time in the appeal procedure but was made during the procedure before the opposition division. Such an objection was expressly mentioned in the appealed decision, which found the main request allowable despite the arguments provided by the opponent concerning lack of clarity.

Auxiliary request 6

The additional feature added to claim 1 was merely a question of routine design for the skilled person, in particular when an under-garment needed to be joined to an outer garment. Such a feature also had no surprising technical effect.

XIV. The arguments of the respondent (submitted in writing) may be summarised as follows.

Main request

Claim 1 - Article 84 EPC

The appellant appeared to consider the term "houses" not clear because of an explanation given by the opposition division. However, the terminology "to house" had a well-recognized technical meaning, being "to accommodate in a hollow space" as recited also in the decision. The contested patent did not provide any special meaning for the terminology "to house". Therefore, claim 1 was to be read giving the term "houses" its common technical meaning, available in any English dictionary, namely that the "hump" shaped plated provided a hollow space to accommodate a gas source and an electronic unit.

Claim 1 - Article 54 and 56 EPC

D1 did not disclose any hump-shaped plate, nor that the gas sources would be housed in the back protector. In D1 the electronic unit 5 was integrally associated with the jacket 3 (external garment), and not with the gilet 6; the electronic unit 5 was also positioned in a site accessible to the motorbiker's field of vision, i.e. in a front portion of the jacket, as shown in figure 1 of D1.

Moreover, D1 disclosed a gilet suited to being worn under a garment, whereas D6 disclosed a motorcycling suit, i.e. an external garment. D1 disclosed a back protector whereas D6 disclosed an aerodynamic hump. D6 thus disclosed a component (aerodynamic hump) for an external suit which was completely different with respect to the back protector for a gilet known from D1.

Contrary to the appellant's contention, the skilled person would not have had any reasonable motivation to consider the provision of a hump-shaped structure in place of the back protector of the gilet of D1 as an obvious solution. In fact, the person skilled in the art would have recognized that the hump-shaped plate would have been a bulky and cumbersome component for the gilet.

In addition, in D1 the electronic unit 5 was integrally associated with the jacket 3, and not with the gilet 6. Therefore, contrary to the claimed invention, both D1 and D6 disclosed respective electronic units associated with the respective external garment, and not housed in the hump-shaped plate of an undergarment.

Claim 11 - Article 56 EPC

The act of connecting the pocket first was not a single choice but just one of the possible many options available in order to equip a garment with an inflatable member. In fact, for example, the garment could be worn over the undergarment/inflatable member without any connections.

The appellant's argument that claim 11 covered an undergarment having only one connection area, which was located at the pocket 25, was a clarity attack against claim 11. Moreover, claim 11 recited in broader terms that when equipping the garment with an inflatable member, the undergarment provided with the inflatable member was connected to the garment by connecting the pocket first. Therefore, claim 11 recited that the pocket was the first element which was connected to the garment, regardless of any other portion of the undergarment.

Auxiliary requests 1, 2 and 4

The exceptions to the prohibition of reformatio in peius were not limited to the specific situation from which G 1/99 arose. As extensively noted in the case law, exceptions to this principle were a matter of equity in order to protect the non-appealing proprietor against procedural discrimination in circumstances where that prohibition would impair the legitimate defence of its patent. The equity approach covered both the case of an error of judgment by the opposition division - i.e. wherein the same objections raised in first instance by the opponent/appellant against the patent as subsequently maintained by the opposition division were subsequently regarded as convincing by the Board of Appeal - as well as the case of any change of the factual and/or legal basis on which limitations had been made by the proprietor prior to the appeal. By interpreting the case as restricted only to this second case, the proprietor would be prevented by the prohibition of reformatio in peius from adequately defending its patent. Such considerations are relevant also in view of the fact, noted in G 1/99, that not allowing a "necessary and appropriate" defence creates a procedural imbalance between the opponent (who, if succumbing in the appeal, can still challenge validity of the patent before national courts) and the proprietor (who, if the patent is revoked in appeal, has no further procedural way to recover the situation). The amended feature in claim 1, i.e. the replacement of the term "houses" by the expression "is associated with", met the three conditions set out in G 1/99 and was thus admissible. The same arguments applied to the second and fourth auxiliary requests which included the same amendments.

Auxiliary request 3

The third auxiliary request corresponded to the main request without method claims. All arguments presented for the main request applied equally.

Auxiliary request 5

The fifth auxiliary request corresponded to the main request without product (under-garment and garment) claims. All arguments presented for the main request applied equally.

Auxiliary request 6

The added features of claim 1 provided the additional advantage of a temporal sequence of steps for centering and connecting the undergarment with respect to the garment.