T 2011/21 - Incorrect video inspection of a device

Key points

• "the opposition division found that [auxiliary request 1] met the requirements of Article 83, 84 and 123(2) EPC and that the subject-matter of independent claim 1 was novel and involved an inventive step in view, among others, of the public prior use represented by the child safety seat commercialized with the name "Sirona" (bundle of evidence M11). During the oral proceedings which was held by videoconference the "Sirona" child safety seat was inspected remotely by the opposition division. The inspection was transmitted by videoconference to all parties with every party having been given the chance to direct the camera used for inspection to specific details of interest. Screenshots showing several relevant views and constructional details of the child safety seat "Sirona" were taken and attached to the protocol of inspection."
  
  
• "The public availability of the prior use of the "Sirona" child safety seat is not contested by the respondent (patent proprietor). Based on the taking of evidence, the opposition division concluded that the subject-matter of claim 1 according to the auxiliary request 1 underlying the decision under appeal was novel over this public prior use. The opposition division held that the inspected "Sirona" child safety seat did not comprise the feature introduced in claim 1 of the auxiliary request 1 that:

  "the outer shell (2) comprises a side wing (13) and the housing component (7) is embedded into the side wing (13)".  ... The conclusion of the opposition division regarding the alleged distinguishing feature above was based on an interpretation of the term "side wing" [...] which was considered too narrow by the appellant (opponent)." The Board agrees with the opponent.

• "In view of all the above and contrary to the findings of the opposition division, the subject-matter of claim 1 of the patent as maintained lacks novelty over the public prior use "Sirona". An assessment of the further novelty attacks raised by the appellant (opponent) is thus not required."

• Auxiliary request 3 is considered to be novel and inventive.

• In connectio with the opponent's request for reimbursement of the appeal fee: "the appellant (opponent) contested the correctness of the decision of the opposition division to hold oral proceedings and to carry out the inspection of the child safety seat "Sirona" per videoconference hence in the physical absence of the opposition division and of the parties although it had been requested to hold them in person. The appellant (opponent) essentially pointed out that in view of the complexity of the structure and design of the outer shell, in particular of the rear part of the "Sirona" child safety seat, it was not possible by a mere video-inspection to correctly identify the effective location/extension of the portions of the seat functionally corresponding to the "side wings" recited in claim 1.  

• "The Board considers that the opposition division erred in not granting the opponent's request to take evidence by inspection be made in-presence. The opponent's request was namely substantiated and in the Board's view well-founded, in particular because the object to be inspected was a complex three-dimensional item, and it could not a priori be ruled out that the images on the screen would allow the participants to appreciate the full extent of the disclosure."

• However, the Board considers the procedural error to be harmless because in the end the OD only found the claim to  be novel based on an issue claim interpretation. Hence the opponent was not adversely affected by the procedural decision of the OD.

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t212011eu1

Alleged Substantial Procedural Violation

7. The Board takes the view that no substantial procedural violation took place during the proceedings before the department of first instance and that the right to be heard pursuant to Article 113 EPC was properly granted to the appellant (opponent).

7.1 The appellant (opponent) contested the correctness of the decision of the opposition division to hold oral proceedings and to carry out the inspection of the child safety seat "Sirona" per videoconference hence in the physical absence of the opposition division and of the parties although it had been requested to hold them in person. The appellant (opponent) essentially pointed out that in view of the complexity of the structure and design of the outer shell, in particular of the rear part of the "Sirona" child safety seat, it was not possible by a mere video-inspection to correctly identify the effective location/extension of the portions of the seat functionally corresponding to the "side wings" recited in claim 1. Consequently, it was not possible to correctly assess whether the "housing component" of the "protective element" of this known child safety seat was embedded in the "side wings" as required by the new feature introduced in claim 1 of the patent as maintained. It was alleged that the inspection per video was detrimental to the position of the appellant (opponent) in the opposition proceedings in the sense that it prevented them to present their arguments in the most convincingly and effective way. Furthermore, it was asserted that also the capacity of the opposition division to correctly assess the issues under discussion, namely the location and the respective functionality of the different portions of the outer shell, was negatively affected. In view of all the above, the appellant (opponent) concluded that the decision to carry out the inspection by videoconference unduly limited their right to be heard to an extent that this circumstance amounted to a substantial procedural violation justifying the remittal of the case to the department of first instance and the reimbursement of the appeal fee.

7.1.1 The Board considers that the opposition division erred in not granting the opponent's request to take evidence by inspection be made in-presence. The opponent's request was namely substantiated and in the Board's view well-founded, in particular because the object to be inspected was a complex three-dimensional item, and it could not a priori be ruled out that the images on the screen would allow the participants to appreciate the full extent of the disclosure.

This error, however, does not constitute a substantial procedural violation, because the decision of the opposition division to consider the subject-matter of independent claim 1 of the patent as maintained novel in view of the prior use "Sirona", was actually neither determined nor influenced to the detriment of the appellant (opponent) by the fact that the inspection took place by videoconference and not in presence.

This approach of the opposition division constitutes rather a different - and in view of the Board erroneous - interpretation by the opposition division of the term "side wings".

In fact, the inspection made by video conference revealed that the prior used object had all the features as alleged by the appellant (opponent). The issue was not one of the opposition division not appreciating the whole extent of the disclosure but one of claim construction. The Board has thus no reason to consider that the opposition would have arrived at a different result if the inspection had taken place in-presence.

7.2 The appellant (opponent) saw a further substantial procedural violation in the circumstance that the opposition division in paragraph 15.2.1 of the contested decision stated that the term "side wings" of claim 1 had a generally recognized meaning in the technical field of child safety seat. The appellant (opponent) alleged that they were not given the opportunity during the oral proceedings to comment on this allegedly new and surprising statement of the opposition division that was decisive for the novelty assessment over the public prior use "Sirona" to the detriment of the appellant (opponent). The appellant (opponent) concluded that also this circumstance of the first instance proceedings amounted to a violation of their right to be heard pursuant to Article 113(1) EPC and hence to a substantial procedural violation justifying the remittal of the case to the opposition division and the reimbursement of the appeal fee.

7.2.1 The Board is not convinced:

As pointed out by the respondent (patent proprietor,) it can be inferred from the minutes (see last sentence of point 12. and point 24.) and the decision itself (points 15.2.1 and 15.2.2) that the interpretation issue regarding the term "side wings" was extensively discussed with the parties and that the appellant (opponent) was aware of the narrower definition of the term "side wings" which convinced the opposition division. Thus, the erroneous interpretation of the opposition division of this term constitutes in view of the above an error of judgment, which, however, was not made in violation of the opponent's right to be heard.

7.3 Finally the appellant (opponent) saw a further violation of their right to be heard in the reasoning of the opposition division under points 16.2.3 and 16.2 of the decision regarding inventive step attacks starting from EP-A-2 275 303 (labelled M5 in the decision) and from the public prior use "Sirona" respectively. Also in this case it was alleged that the appellant (opponent) did not have the opportunity to comment on an alleged fact on which the reasoning of the decision was based.

7.3.1 The Board is not convinced:

As correctly pointed out by the respondent (patent proprietor), the reasoning of the opposition division under point 16.2.3 objected by the appellant (opponent) relates to an alternative/secondary line of arguments based on the same evidence as the primary line of arguments of the opposition division presented in the same paragraph. The primary line of arguments is not contested under Article 113 EPC. Regarding the objection against the reasoning under point 16.2 relating to a further inventive step attack starting from the public prior use "Sirona", the Board follows the view of the respondent (patent proprietor) that from the wording of this section there is no reason to assume that the technical content of the public prior use and of the further documents cited in this section of the decision has not been duly discussed with the parties during the opposition proceedings.

7.4 In conclusion no substantial procedural violation occurred during the proceedings before the department of first instance justifying the remittal of the case to the opposition division and the reimbursement of the appeal fee.

Request to refer questions to the Enlarged Board of Appeal

8. According to established case law, a prerequisite for a referral is that the questions are relevant for deciding the case in question (see e.g. Case Law of the Boards of Appeal of the European Patent Office, 10th edition, V.B.2.3.3).

8.1 The questions proposed by the appellant (opponent) for referral to the Enlarged Board of Appal were triggered by the decision of the opposition division to hold the oral proceedings and the inspection of the child safety seat "Sirona" by videoconference without the consent of the appellant (opponent). However, for the reasons presented above, the decisive issue leading to the contested positive assessment of novelty of the subject-matter of claim 1 as maintained over the public prior use was the erroneous interpretation of the term "side wings" adopted by the opposition division. This is irrespective of the format adopted for the oral proceedings and the inspection. Accordingly, the questions submitted by the appellant (opponent) are not relevant for deciding the case in question.

9. In view of all the above, the claims according to the auxiliary request 3 form a suitable basis for the maintenance of the patent in amended form. Since this was explicitly requested by the respondent (patent proprietor) at the oral proceedings and was not opposed to by the appellant (opponent), the Board considered it as appropriate to order that the adaptation of the description be made before the department of first instance following the remittal of the case.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent with the claims of the auxiliary request 3 filed with the reply to the statement of grounds of appeal, and a description to be adapted thereto.

3. The requests for reimbursement of the appeal fee and for referral to the Enlarged Board of Appeal are refused.