Key points
- The PCT application was filed in 2004 and granted in 2010. An opposition was filed in 2011, so the opposition including the appeal took 11 years in this case. The appeal took 7 years.
- The opposition was based on alleged public prior use.
- "The Opposition Division heard witnesses and considered written evidence, and came to the conclusion that the opponent had proved their case. They have given clear reasons why they were persuaded of the public prior use (appealed decision, section 4.3, in particular page 14, third and fourth paragraphs)."
- "On appeal, the proprietor has not shown that the Opposition Division was not entitled to reach the conclusion it did. The Board, therefore, concurs with the Opposition Division's position: the drawings, delivery slips, invoices, torch sample, and witness testimonies provide enough evidence to establish the public prior use of the PB50.1-H torch."
- The Board does however review in depth whether (the evidence of) the public prior use discloses all features of the claim.
Public prior use of plasma arc torch PB50.1-H - Evidence
11. The proprietor objects to opponent 2's evidence of public prior use of the plasma arc torch PB50.1-H.
12. Basically, two issues are raised: first, much of the evidence submitted by opponent 2 was "late-filed", surprising, and inequitably admitted into the opposition proceedings (documents E27A to E31C, witnesses Krink and Laurisch, torch-sample); second, either with or without the late-filed evidence, there was insufficient evidence to satisfy the standard of proof "beyond reasonable doubt", i.e. "up to the hilt". This was the standard of proof that should be used in cases like the present one, in which all the submitted evidence lay within the control of opponent 2.
13. As to the question whether some evidence that was "late-filed" in opposition proceedings should be disregarded in appeal proceedings, it is established jurisprudence that the Board should only overrule a discretionary decision by the Opposition Division if the latter did not apply the correct principles, or exercised its discretion unreasonably.
14. As is apparent from the minutes of the oral proceedings and from the decision under appeal, the Opposition Division found, prima facie, the evidence to be of "evident high relevance"; and it explained why the proprietor could not have been surprised by it (minutes of the oral proceedings on 9 April 2015, page 6; appealed decision, points 4.1 and 4.2). Prima facie relevance is a well-established criterion for the admission of late-filed evidence (Case Law of the Boards of Appeal, 10th ed., 2022, "CLBA", section IV.C.4.5.3, and T 1002/92 Queuing System, OJ 1995, 605, headnote 1).
15. Hence, the Opposition Division's decision to admit this evidence into the proceedings should not be overruled.
16. Neither in the EPC nor in the case law of the Boards of Appeal are formal rules laid down for the evaluation of evidence. The Enlarged Board of Appeal has stated that proceedings before the EPO are conducted in accordance with the principle of the free evaluation of evidence (G 1/12, OJ 2014, A114, point 31 of the Reasons, citing G 3/97 Einspruch in fremdem Auftrag/INDUPACK, OJ 1999, 245, point 5 of the Reasons; and G 4/97 Opposition on behalf of a third party/GENENTECH, OJ 1999, 270, point 5 of the Reasons). Under the EPC, decisions on questions of fact are taken on the basis of evidence adduced and the degree to which it supports or undermines alleged facts. The deciding body makes this assessment in the view of the particular circumstances of the case before it (see CLBA III.G.4.1).
17. It is also established jurisprudence that each party bears the burden of proof for the facts they allege. Here, since opponent 2 relies on the public prior use of the plasma arc torch, it is opponent 2's task to prove this use. In cases like the present one, where the evidence for such a public prior use lies within the sphere of only one party (the opponent) the case law has often tended toward expecting that the public prior use be proved "beyond any reasonable doubt", i.e. "up to the hilt" (cf. CLBA, section III.G.4.3.2 b), with references to decisions). In the Board's view, this properly refers to the strength of the evidence required.
18. The Opposition Division heard witnesses and considered written evidence, and came to the conclusion that the opponent had proved their case. They have given clear reasons why they were persuaded of the public prior use (appealed decision, section 4.3, in particular page 14, third and fourth paragraphs).
19. On appeal, the proprietor has not shown that the Opposition Division was not entitled to reach the conclusion it did. The Board, therefore, concurs with the Opposition Division's position: the drawings, delivery slips, invoices, torch sample, and witness testimonies provide enough evidence to establish the public prior use of the PB50.1-H torch.
20. The controversial document, E12, is neither necessary as evidence for the prior public use nor raises doubts about the credibility of the other evidence.
21. With the statement of grounds of appeal, the proprietor filed the further declaration as additional evidence dealing with the question of the direction of movement of the coolant tube in PB50.1-H.
22. With the reply to the statement of grounds of appeal, in response to the filing of said declaration, opponent 2 filed further documents, E40 and E41, describing the torch experiment.
23. The admission of the further declaration and of E40 and E41 was not questioned by the parties. Apparently, they all considered details about the functioning of the prior art torch to be highly relevant for the outcome of the case. The Board agrees and sees no reason to disregard it.
Novelty - Disclosure of public prior art torch PB50.1-H
32. With regard to the question of the subject-matter disclosed by the plasma arc torch PB50.1-H, there are two issues in dispute: a) the question of whether the coolant tube and the surface located on the interior portion of the elongated body of the electrode can be biased into contact with each other so as to mate and align along the direction of a longitudinal axis of the electrode and b) whether the disclosure of a plasma arc torch - being a device - is also a disclosure of a "method for locating a coolant tube relative to an electrode" as claimed in claims 19 to 22 of the granted patent.
33. From the further declaration and from the torch experiment, it is apparent that the effect of the coolant flow depends on the structure of the coolant tube in relation to the electrode. The movement of the coolant tube depends, among other things, on the geometry of the surfaces in contact with the coolant. The experimental results provided by document E40 clearly show that, in the PB50.1-H torch, the geometrical dimensions of its coolant tube were such that the coolant tube was biased towards, and in contact with, the closed end of the electrode and not away from it. The "mating and aligning along a direction of a longitudinal axis of the electrode", in the sense of the independent claims of all requests, is then automatically achieved by the geometry of two cylinders (coolant tube and electrode). The end faces of the spread parts of the coolant tube depicted in E5.1 contact the inner rounded parts (given the radii with "R1" and "R0,5") of the electrode depicted in E6.1.
34. This effect is not surprising, since, even in Figures 5A and 5B of the patent, a coolant tube with apertures ("slots 232") quite similar to the coolant tube of the torch PB50.1-H is depicted and described in paragraph [0061] of the patent publication:
In an alternative embodiment of the invention, as illustrated in FIGS. 5A and 5B, the surface 160 of the coolant tube 136 has a plurality of slots 210 located at the second end 156 of tube 136. The slots 232 are adapted to permit coolant to flow out of the passage 141. In this embodiment, the second end 156 of the tube 136 contacts an inner surface of an electrode wall, such as the inner surface 218 of the electrode 110 of FIG. 3. The slots 232 permit adequate coolant flow across the interior surface 140 of the electrode 110.
35. The proprietor confirmed that the claimed methods are actually methods of use, and not methods of manufacture. Hence, the plasma arc torch PB50.1-H, as a device, implicitly discloses - when in use - a method of locating a coolant tube as claimed.
36. The method of locating the coolant tube and the electrode is immediately apparent when opening the PB50.1-H torch, and it is used every time, when the coolant is flowing. There is no doubt that, based on the provided evidence, the torches in question were actually used by customers and also - due to frequent replacement of the electrodes - the method of locating the electrode and the coolant tube was apparent. As indicated, for instance, by Mr. Laurisch in his first testimony on 25 November 2014 (last paragraph on page 42/69), the issue of the coolant tube falling out of the plasma arc torch PB50.1-H, when replacing the electrode, was a well-known problem for the customers.
Novelty - Conclusion for main request, first and second auxiliary requests
37. Hence, independent claims 1, 8, 13, and 19 of the main request, and identical independent claims 1, 8, 13, and 19 of the first auxiliary request, and independent claims 1 and 7 of the second auxiliary request lack novelty (Articles 100(a) and 54(1), (2) EPC) due to disclosure by the PB50.1-H plasma arc torch. None of these requests is therefore allowable.
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