T 1991/23 - (I) Review of findings of fact

Key points

• The issue is whether the alleged public prior use displayed certain features. The OD found it did. The proprietor appeals. 
• The Board, in translation: "Regarding the scope of the boards of appeal's power to review findings of fact made by the first instance, particularly where the latter has heard witnesses, the boards are the first and final judicial instance in proceedings before the EPO and thus the only judicial body that establishes facts both in fact and in law. Accordingly, at any stage of the appeal proceedings, the boards are empowered to establish the relevant facts of a case before them, thereby replacing the findings of fact made by the first instance (see T 1604/16, Catchword and point 3.1.6 of the Reasons, and T 1138/20, point 1.2.4 of the Reasons)."
• " It will therefore be examined whether the annexes A1 to A4, affidavits E1 and E2, witness statements Z1 and Z2, and visual inspection I1 cited by the opposition division sufficiently demonstrate that a honeycomb with all the features of claim 1 became publicly available. In particular, Mr. Denker's affidavit E2, the photograph in Annex A3, the transcript of Mr. Denker's examination of the witness (Z1), and the transcript of Mr. Huebner's testimony (Z2) are to be examined. "
• The Board concludes that these pieces of evidence do not demonstrate the presence of all features.
• Follows a detailed review of the evidence. 
• " In the Chamber's view, point 7 of Mr Denker's affidavit E2 does not make it clear, let alone directly and unambiguously, that both the mechanically adjusted offset of every second film layer and the centre-to-centre distance between all connecting areas along a longitudinal direction of a film had to be the same." 
• "In the Board’s view, neither the affidavit E2 nor the photograph in Annex A3 sufficiently demonstrate that the public prior use (OV1) directly and unambiguously discloses the features M1.3b and M1.5 in question."
• "In the Board's view, it cannot be deduced from the testimony of Mr. Denker (Z1) that the features in question, M1.3b and M1.5, were directly and unambiguously disclosed in the prior use product (OV1). "
• "Taking all the evidence (A1 to A4, E1, E2, I1, Z1 and Z2) into account, the Board is not convinced with the required degree of certainty that the prior use (OV1) directly and unambiguously discloses the combination of all the features of claim 1, in particular features M1.3b and M1.5."
• "The board cannot see why the claimed subject-matter should not involve an inventive step compared to the public prior use (OV1). In this context, particular account must be taken of the fact that the publicly used honeycomb (OV1) is a defective product with a distorted cell geometry, which differs substantially from the originally ordered catalog product (with a honeycomb structure made up of identical hexagonal cells, as shown on page 1 of Annex A4). The board cannot see why it would have been obvious to use this defective product as the starting point for a further modification, which also differs from the actual catalog product. There appears to have been no reason for doing so. Rather, a skilled person would recognize the obvious error, correct it, and produce the desired honeycomb structure."
• The decision does not speak of any requests fo the respondent/opponent to submit or take further evidence in appeal.

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t231991du1