Monday, 5 December 2011

T 571/08 - Plausible

The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 before the Board read (in English translation):
1. A centrifuge comprising a trough (2), a rotor (3) intended to be arranged in the trough (2), and means (4) for driving the rotor (3) in rotation about a central axis of rotation (A) at speeds greater than 10.000 rpm, wherein a number n of seats (81, 82, 101 and 102) for receiving a product to be centrifuged are provided in the rotor, the seats being arranged eccentrically relative to the axis of rotation, characterised in that the geometric image (I) of at least a first seat (81), through a geometric rotation about the axis of rotation (A) in a first direction of rotation (S1) and an angle of 360°/n, is different from a second seat (101) which directly follows the first seat (81) in the first direction of rotation (S1), wherein the seats (81, 82, 101, 102) are of a substantially analogous shape, elongate in a respective longitudinal direction (D), and in that the second seat (101) is substantially the image, through a geometric transformation, of the geometric image (I) of the first seat (81),and in that said geometric transformation comprises a geometric rotation by a non-zero angle (α) in a plane orthogonal to the axis of rotation (A) and/or a geometric translation by a non-zero distance (d) in a plane orthogonal to the axis of rotation (A), the direction of the translation being inclined with respect to the longitudinal direction (D) of the geometric image (I) of the first seat.

In what follows the Board dealt with an alleged prior use that had only been invoked when the appeal was filed.

*** Translation of the French original ***

Admissibility of new evidence

[1.1] Together with its letter dated December 12, 2007, the [patent proprietor] has filed new sets of claims in the form of auxiliary requests, in view of the oral proceedings (OPs) held on January 16, 2008.

In its decision, the OD has considered that the subject-matter of claim 1 of the second auxiliary request was novel and inventive. In particular, the OD has considered that the technical feature according to which there are means for driving the rotor in rotation about a central axis of rotation at speeds greater than 10.000 rpm supported inventive step […]. This lower limit for the speed or rotation was decisive for the decision of the OD […].

This technical feature was not comprised in the claims of the patent as granted and first appeared in the main claim of the second auxiliary request.

[1.2] Therefore, the [opponent] was first confronted with a new technical feature about one month before the OPs.

The [patent proprietor] considers that the [opponent] had enough time for carrying out the necessary search and find, at this stage of the proceedings, documents that were only submitted together with the statement of grounds of appeal.

The Board notes that the [opponent] was faced with this question on short notice at the end of the year, which is a period where the workload is always increased in companies, especially in the accounting and finance departments which are concerned by such a search, because of the end of the financial year in the one hand and the end-of-the-year holidays of the staff on the other hand.

Searching for evidence for a prior use is not easy and often very time-consuming for the persons concerned. As a rule, it is necessary to find somebody who recalls the prior use. The staff concerned has to precisely recall what has been sold and when. Sometimes the date is imprecise at first. In such cases it is necessary to carry out searches in different directions in order to find documents concerning the sale and the delivery as well as documents establishing what has been sold. In view of the priority date, the documents concerned go back several years and, therefore, were not necessarily easily accessible. Quite often different documents are kept in different departments and places.

Thus the Board comes to the conclusion that the evidence did not necessarily have to be submitted before or during the OPs before the OD. The Board considers that in view of the new auxiliary requests filed shortly before those OPs, the documents, which are part of a response to one of those requests, have not been filed belatedly. The [opponent] has introduced these documents providing evidence for this prior use as soon as possible, i.e. together with his statement of grounds of appeal, in response to the decision of the OD accepting the auxiliary request comprising the above mentioned additional feature.

[1.3] The [patent proprietor] considers that the [opponent] should have requested a postponement of the OPs before the OD. The Board cannot accept this argument. First, the [patent proprietor] has indicated, in response to a question of the Board, that he might have objected to such a postponement. Moreover, the [opponent] had arguments concerning a lack of inventive step of the claimed subject-matter, based on documents that were already part of the proceedings. It was, therefore, not clear that such a postponement was necessary.

[1.4] The appeal is based in particular on a new prior use consisting in the sale of a particular rotor. In what follows the Board will refer to a “rotor sold” without making clear each time that there is only an allegation of a sale. This is done only for the sake of easier drafting and reading of the reasons for the decision and should not be taken as an indication that the Board considers that it has been proven that the rotor under consideration has actually been sold and delivered before the priority date.

[1.5] When a decision has to be taken on whether a prior use is to be admitted and whether the case has to be remitted to the first instance, the relevance of the prior use may play a role. The Board does not have to arrive at the conclusion that the prior use is proven but only that the evidence is sufficient for justifying an examination by the OD. Therefore, a remittal cannot be understood as a decision that the prior use has been proven.

[1.6] Regarding the technical features of the sold rotor, the evidence offered consists in drawing D6 and the proposal to hear Mr Wende as a witness.

The Board notes that drawing D6 as such does not form part of the prior art; therefore, one cannot simply decide on what is disclosed in this document. The drawing is evidence concerning the technical features of the rotor sold. Thus the document has to be examined in order to establish the technical features of the rotor sold.

According to the drawing it appears that the rotor has room for 12 strips (“Streifen”) each of which has twelve seats (which can be seen on the drawing and which are mentioned in documents D7 and D8). The orifices giving access to the seats of each strip are arranged along a straight line. Therefore, it is at least possible to interpret the drawing such that the axes of the seats a strip are parallel to each other. This appears to be the case for the two seats of different strips that are shown in section. If the axes of the seats of a strip are parallel to each other the rotor has the technical features of the rotor defined in claim 1 (see also figure 3 of the patent).

However, the drawing apparently does not exclude that the axis of the seats are oriented towards the axis of the rotor, that is to say that they might not be parallel to each other in radial sections. In this case, the rotor would not have the technical features of the rotor defined in the claim. However, in this case there would have had to be another figure in the technical drawing showing the particular orientation of the seats, because this is not a simple schematic representation but a production drawing intended to be used for providing all the relevant information on the whole rotor, its lid and how the lid is attached. The fact that there is no such drawing might be evidence supporting that the seats of a strip are all parallel to each other.

Therefore, the prior use appears to be relevant because if it is concluded that for the rotor shown in drawing D6 the axes of the seats of a strip are parallel and if it is decided that the rotor has been made available to the public, these elements might have an impact on the novelty and/or inventive step of the subject-matter of claim 1.

It may also be relevant in view of novelty and/or inventive step to establish whether the indication of 14.000 rpm (“14000/min”) that is apparent on the drawing was also present on the rotor sold.

The drawing constitutes evidence supporting this theory, but it remains to be decided whether the evidence is sufficient and whether the witness offered could possibly contribute to establishing this element.

If it is decided that the rotor sold had the indication “14000/min” apparent in the drawing, it is possible that this could have an impact on the novelty and/or inventive step of the subject-matter of claim 1. The impact on novelty appears to depend on the actual features of the centrifuge in which the rotor was mounted. Apparently there is no evidence for the use of the rotor so far.

[1.7] Moreover, it is necessary to consider whether the rotor sold was delivered before the priority date.

First it has to be established whether the indications for the delivery (delivery slip D7, invoice D8 and VAT certificate D11) as well as the general considerations concerning the reliability of the sender and the usual duration of transit are sufficient proof. The Board is of the opinion that in principle these indications may be sufficient but it does not decide that they are sufficient in the present case.

Then it has to be established whether the indications of sending together with the information contained in the extract from the bank statement (annual account D9) are sufficient proof that the rotor has been received, and when. A payment that clearly corresponds to the purchase of a well-defined object may indeed contribute to supporting the assertion that the object has been received. However, such a payment is not necessarily tantamount to an acknowledgement of receipt because it can happen that an accounting department pays a bill independently of the notification of receipt of the object, which may be incumbent on another department.

Document D6 has number 12104. Document D7 has the same number 12104, as well as number 2001-14804 as reference for the confirmation of the order (“Auftragsbestätigung”) and number 2001-05953 as registration number (“Belegnummer”). Document D8 also has number 12104 as well as number 2001-05953 as certificate of dispatch (“Lieferschein”) and number 2001-35609 as registration number (“Belegnummer”). Document D10 has number 12104. Document D11 has number 2001-14804. Therefore, apparently those documents may be linked together.

The amount mentioned in invoice D8 is 716.17 €, which may be reduced by 2% to 701.85 € if the payment is made within less than 14 days. However, the amount mentioned in the bank statement D9 is 1400.71. The [opponent] has indicated that this difference may be explained by the fact that the amounts in invoice D8 are given in euros whereas the amount given in the extract from the account D9 is in Deutsche Mark, considering that the latter is exactly 1.95583 times greater than the first, which corresponds to the conversion rate from Deutsche Mark to Euros that is mentioned in D10.

Moreover, it has to be noted that the article bearing reference 12104 in D10 is associated with reference 1-5K/2-16/K15, which is different from the reference 1-15K;2K15 associated with reference 12104 in D6 but identical to the indication in D4. This is an indication for the centrifuges with which the rotor can be used (“suitable for” in D10). This is consistent with the reference 12104 in price list D10 which applied as from March 2001, corresponding to D4 established on September 8, 2000, as D4 not only has number 25032 but also number 12104 as reference to the list of items (“Stückliste”). Drawing D6 has been established before July 2001 and, because of the engraving concerning the maximum speed of rotation may refer to list of appropriate centrifuges that is different from the list on D4 and D10. Therefore, the fact that the indication in D10 is different from the one in D6 is not inconsistent.

The Board notes that the finding that the pieces of evidence are linked does not necessarily prove that they are sufficient. However, the Board considers that the evidence is at least plausible for establishing a prior use. It may also be that the offered witness might contribute to the evidence.

[1.8] Therefore, the Board has come to the conclusion that the prior use that has been asserted for the first time in the appeal proceedings may be relevant and admits documents D6 to D11 into the proceedings.

As you might have guessed, the Board then remitted the case to the OD for further prosecution.

To download the whole decision (in French), click here.

The file wrapper can be found here.

I owe the knowledge of this decision to the 2011 FNDE meeting in Lyon. To my best knowledge, I have not presented it before on this blog. ;-)