T 2565/11 05-04-2016

1. Public availability of alleged prior use V1

1.1 According to the contested decision (see points 2.4 and 2.5), the public prior use according to V1 - the air conditioning unit allegedly pre-used in vehicles BR424 and BR425 - had not been proven beyond reasonable doubt. The opposition division had doubts

- as regards the reliability of the witnesses recollections as far as the delivery was concerned, in view of the length of time between the witness statement and the alleged prior use and because no written evidence as regards the sale or delivery had been produced,

- whether the witness could reliably remember that a specific type of air conditioning unit (as shown in documents D1 to D3) had been used in that particular project, and

- as regards the technical features of the allegedly pre-used air conditioning system, since the witness had introduced new facts (referring to the door release switch), these had no support in D1 to D3.

1.2 The board, however, on the basis of the relevant material at hand (i.e. witness statement of Mr Hähnel, documents D1 to D3, the submissions of the parties), comes to a different conclusion:

1.2.1 The board, in the case at hand, overturns the evaluation of evidence made by the department of first instance because the opposition division (i) erred as regards the underlying facts and (ii) failed to give an evaluation that is free of contradictions.

(i) As regards the delivery of trains BR424 and BR425, the respondent himself confirmed that those trains had been delivered to DB Regio AG and operated in a public manner on their tracks. The opposition division, therefore, erred when putting in question sale and delivery of the respective trains. Moreover, the board considers that the clear link between the underlying project - which was commercially significant, receiving high attention since it concerned delivery of trains for the Expo 2000 event in Hannover - and the technical problems as recollected by the witness (see page 6 of the minutes of the witness's hearing), leading to a delayed delivery of the trains in autumn 2000 only, leaves no doubt that the trains concerned were available to the public prior to the priority date of the contested patent. Therefore, even void of any further documentary evidence about delivery of the trains, the board has no reason to consider the witness's testimony as insufficient and to cast doubts onto the witness's recollections in this respect.

(ii) The board also notes that the witness was found credible by the opposition division, since he had been working in that technical field and had been involved in the development of the vehicles BR424 and BR425. This is in contradiction with the opposition division's finding raising doubts regarding, inter alia, the length of time between the witness's testimony and the prior use and subsequently not trusting the witness's recollections.

Thus, the board has to give its own evaluation of the evidence regarding the relevant facts.

1.2.2 In order to prove the allegations in respect of the features of the air conditioning units used in that particular project, the appellant provided evidence D1 to D3 prepared in 1998 to 1999, which either refers explicitly to trains BR424-426 (see front page of D1, D2), or referred (see front page of D3) to the air conditioning unit of type 10.727.00.00 as mentioned on page 3 of D1. Moreover, by hearing the witness during oral proceedings, the type of air conditioning unit used in vehicles BR424 and BR425 was described in a way which perfectly correlated with the disclosure of those documents, i.e. supporting evidence to the witness's statements had been submitted. The witness had explicitly confirmed (see page 14 of the minutes) that devices according to the technical specifications D1 to D3 had been implemented in the trains BR424 and BR425 right from the start.

Moreover, on a concrete question posed by the opposition division during the witness hearing (see minutes page 10, last paragraph), the witness stated uncontestedly that he could recollect all the details because vehicles with air conditioning units of same type had been delivered subsequently to DB Regio, some of them still being in the warranty period. The board cannot therefore agree with the opposition division's difficulties in understanding why the witness could not have remembered the type of air conditioning unit delivered with trains BR424 and BR425. There is also no reason not to accept the witness's statement that he was still responsible for these vehicles (minutes page 11, first paragraph).

In this regard, the board also notes that the technical details of the air conditioning unit implemented in trains BR424 and BR425, which - in view of the features of claim 1 - were relevant, were of minor complexity, basically comprising a ventilator, an air conditioner, several blowers and a specific operation mode of ventilator and air conditioner when coming to a halt. The board has no doubts that the witness was able to recollect such rather simple details, in particular following the appellant's argument (see also minutes of witness hearing, page 10) that units of the same type were being delivered up to two year before the witness's hearing.

1.2.3 As regards the structural details specified in claim 1, the board even finds that a combined heating and air conditioning unit for a train (as labelled e.g. in D1), which typically would include blowers, heat exchangers and a compressor, can even be implicitly assumed for any state of the art train vehicle which was delivered around the year 2000.

Even applying a high standard of proof ("beyond any reasonable doubt"), the board finds that the basic facts presented by the witness with regard to the claimed structural features of a ventilator and an air conditioner in the pre-used vehicles BR424 and BR425 cannot be questioned.

The number of blowers used in the pre-used vehicles (a "Zuluftlüfter" and a "Kondensatorlüfter", see witness statements and also D1 to D3) might differ from the number of (four) blowers specified in claim 1, so novelty would not be at stake. However, disregarding an alleged prior use because it is not novelty-destroying to the claimed subject-matter would attribute a minor relevance to prior art represented by pre-used vehicles in comparison to documents of prior art, which run counter to the requirements of Article 54(2) EPC, according to which the state of the art shall be held to comprise everything made available to the public - explicitly reciting "by use" - before the date of filing of the European patent application. A prior use might also be relevant for the assessment of inventive step, and the issue of novelty/inventive step has to be separated from the issue of whether a prior use is proven beyond reasonable doubt.

1.2.4 From the foregoing it can be concluded that the issue to be examined in the present case only concerns the question of "what", i.e. which technical features of the delivered "product" - trains BR424 and BR425 - have been made available to the public. In this regard, the opposition division was not satisfied that the witness could reliably remember the technical features of the allegedly pre-used air conditioning system, but did not further explain which features they were referring to.

As already argued above, the board has no reasonable doubt that railway vehicles of type BR424 and BR425 had been delivered, comprising a ventilating/heating and air conditioning unit, which implicitly comprised a heat exchanger (e.g. a condenser) and a compressor and also two blowers for ventilating the air. Therefore, the main issue to be decided is whether a method of operation including the characterising feature of claim 1 was disclosed to the public by operating the trains BR424 and BR425 on public tracks.

As described in D1 (point 3.3, page 9), the rotational speed of a blower belonging to the ventilating unit ("Zuluftlüfter") and a blower belonging to the air conditioner ("Kondensatorlüfter") was reduced when the vehicle came to a halt. This mode of operation was also explained by the witness (see pages 11 and 12), according to which blower speed was reduced when the vehicle speed was lower than 1 km/h, after the conductor had operated a door release switch. The witness also explained (see page 12) that speed reduction of the blowers was necessary - due to over pressure generated inside of the vehicle - in order to be able to safely close the doors, and a side effect was an advantageous noise reduction when stopping. The witness's statement correlates perfectly with what is described in D2 (point 3.5, page 14), i.e. that when coming to a halt the rotational speed of the "Zuluftlüfter" had to be reduced for security reasons (to be able to close the doors) and the rotational speed of the "Kondensatorlüfter" was reduced in order to reduce noise emission. In the board's judgement, this mode of operation of the blowers of vehicles BR424 and BR425 - as consistently described in all the specifications D1 to D3 stemming from 1998 and even from 1999 (the year of the intended delivery) and also confirmed by the witness - must be considered as a design requirement for security and environmental reasons (and not a mere design option) of the heating and air conditioning unit according to prior use V1, which could not be dispensed with.

Therefore, the board has no reasonable doubts that such mode of operation - to slow down operation of ventilator and air conditioner when coming to a halt - was also implemented in the pre-used trains BR424 and BR425 as delivered in the year 2000 according to V1.

1.2.5 Although D1 to D3 do not recite a door release switch, the board cannot see that the witness - by mentioning this switch - had introduced "new facts which would cast some doubts as regards the reliability of the witness's recollections as regards the technical features of the allegedly pre-used air conditioning system", as found by the opposition division (see contested decision, point 2.4).

D1 to D3 represent specifications of sub-supplier Alex Friedmann GmbH of air conditioning units provided to the train manufacturer. The door release switch operated by the train driver is located somewhere within the train, not within the air conditioning unit, and does not fall under the responsibility of the sub-supplier. It is implicitly clear from D1 to D3 that there must be a stop signal to initiate the reduction in speed of the blowers when coming to a halt, but it is up to the train manufacturer to further specify how this signal is generated. The witness described that a door release switch together with a velocity threshold was the trigger to initiate the function as described in D1 to D3. The board cannot see that the witness's explanation casts any doubt on his recollections as regards the technical features of the pre-used air conditioning system.

In this respect the board notes that further explanations given by a witness, in order to close a potential gap in the documentary evidence on file, cannot be considered per se as new facts. Otherwise, hearing of a witness would be meaningless, and evidence provided on the basis of documents would be given a higher evidentiary value than a witness testimony, for which no basis can be found in the EPC.

1.2.6 Finally, although not addressed in the contested decision, the issue of public availability of the features of the prior use according to V1 when operating the trains on a public track must be commented upon.

Since the heating and air conditioning unit according to V1 was a compact unit placed on the roof of the railway vehicle, it was visible to anybody. The skilled person would therefore have easily recognised, based on his knowledge, at least implicitly the structural features as argued already above. The witness also confirmed that the "Kondensatorlüfter" was visible from the outside (see protocol page 17). The "Zuluftlüfter" was not visible from the outside, but as argued already above, a second blower must be at least implicitly assumed for ventilating purposes.

The only question remaining is therefore whether the reduced operation of blowers when coming to a halt, as described in D1 to D3 and confirmed by the witness testimony, was discernible from the outside. Since both blowers in the roof unit according to prior use V1 were located outside of the train compartment, the board has no doubt that a reduction in rotational speed of the blowers was at least acoustically recognisable at the outside of the train, as confirmed by D2 (paragraph 3.5: "In den Stationen ..., um die Schallemission zu verringern."). Moreover, the witness stated that also within the vehicle the passengers could realise reduced blower noise (see protocol page 16).

2. Claim 1 as granted

2.1 Novelty (Article 54(1) and (2) EPC)

The subject-matter of claim 1 as granted is considered to be new because the prior-used railway vehicles according to V1 do not show an exhaust blower as specified in feature M1.1 (Article 54(1) and (2) EPC).

Claim 1 recites four blowers (feature M1.1: "the ventilator comprising an intake blower ... and an exhaust blower..."; feature M1.2: "the air conditioner comprising an outdoor blower ..., an indoor blower ...") and their specific function. The heating and cooling unit known from the prior-used railway vehicles, as described in D1 to D3, comprises two blowers, one of which ("Kondensatorlüfter") corresponds to the outdoor blower of the air conditioner. The second blower ("Zuluftlüfter") feeds air coming from the air filter and guided over the evaporator into the vehicle (see D1, page 8 of 16) and can be correlated to the intake blower and the indoor blower as claimed, assuming that blowers specified in claim 1 in features M1.1 and M1.2 for the ventilator and the air conditioner might be identical. However, since feature M1.1 lists two blowers, i.e. two mechanical devices, making up the ventilator ("the ventilator comprising..."), which in the board's understanding means that two separate blowers have to be provided, the intake blower must be different from the exhaust blower.

Therefore, the board cannot follow the appellant's assertion that the "Zuluftlüfter" of D1 also represents the exhaust blower as claimed, even if the function of delivering air to the outside via openings in the roof might be provided through this blower.

2.2 Inventive step (Article 56 EPC)

A method of operating a railway vehicle ventilator and air conditioner as specified by the second alternative in the characterising portion of granted claim 1 (features M1.3 and M1.3.2) is known from prior use V1. As explicitly described in e.g. D1 (page 9 of 16) and confirmed by the witness statement (page 10), the two blowers of V1 are operated at lower rotational speeds when the train has stopped, i.e. when the train speed is lower than a predetermined threshold. As argued already above with respect to novelty, the two blowers known from V1 can be identified - except for the exhaust blower - with three of the four blowers recited in the preamble of claim 1.

According to the board's judgement, the distinguishing feature of providing a separate exhaust blower cannot contribute to an inventive step.

Exhausting air from a railway cabin to the outside via a blower instead of an opening in the roof is a well-known alternative in the field of air conditioning of railway vehicles. As disclosed in D6 (see Figure 5), air from the outside is cooled by passing through the evaporator and fed into the cabin via a duct system in the roof area, i.e. the roof blower sucking air into the vehicle represents the intake blower and the indoor blower as specified in features M1.1 and M1.2, similar to the device known from V1 as discussed previously. The cooling air is then, although roof openings also exist in D6, exhausted via a separate blower placed in a region underneath the floor of the cabin.

Moreover, providing a separate exhaust blower provides the advantage of improving the exhaust function under severe driving conditions, e.g. when running into a tunnel and overpressure might occur at the outside of the train so that ventilation via a roof opening would be prohibited. Therefore, depending on the application area of the railway vehicle, providing an exhaust blower separate from the intake blower would be obvious or even be mandatory when trying to provide a certain degree of comfort with regard to air quality.

3. Auxiliary request 1

The board concurs with the appellant that the subject-matter of claim 1 according to auxiliary request 1 constitutes an unallowable intermediate generalisation of the disclosure in the application as filed.

As regards e.g. feature (ii) introduced in claim 1, a basis for the operation of the ventilator and the air conditioner according to said feature can be found on page 6 of the application as filed, which corresponds to paragraph [0017] of the patent specification. However, according to the original disclosure in this passage, reduction of the number of revolutions of the ventilator and of the blowers of the air conditioner is not performed simultaneously but sequentially ("number of revolutions of the ventilating blower ... is first reduced. Then, the numbers of revolutions of indoor blowers 24 and 45 and outdoor blowers ... are reduced"). Moreover, it is explicitly described in this context that the operations of the air conditioners are "reduced by half", i.e. just claiming a reduction in the number of revolutions of the outdoor and indoor blowers of the air conditioner comprises modes of operation which are not originally disclosed.

A similar reasoning applies to feature (iii), since page 8 of the application as filed only describes that the air conditioners are operated with a half of a rated power when the ventilator has been stopped.

The amendment in claim 1 by way of auxiliary request 1 therefore does not comply with the requirement of Article 123(2) EPC.

4. Auxiliary requests 2 and 3

4.1 The board finds that auxiliary requests 2 and 3 do not fulfil the requirements of Article 84 EPC according to which the claims shall define the matter for which protection is sought, in a clear and concise manner supported by the description.

Claims 1 according to auxiliary requests 2 and 3 contain the additional feature that the ventilator is installed in the air conditioner. However, it is not clear whether the installation "in the air conditioner" refers to the air conditioner as a system (which according to Figure 2 of the patent specifications consists of two units 20, 40, only one of which containing the ventilator 60), or to a common housing (which would only refer to unit 40 in Figure 2).

4.2 It is noted that if claim 1 were to be interpreted on the basis of the description of the specific embodiment as depicted in Figure 2, then the amendment would amount to an unallowable intermediate generalisation, because Figure 2 only discloses a specific embodiment where the ventilator comprises an intake blower and an exhaust blower which are provided on opposite sides of an electric motor. As described in the introductory portion of the description, such design provides the advantage that the exhaust air from the cabin introduced into a casing containing the electric motor cools the electric motor.

5. Finally, the board notes that the above objections in respect of the auxiliary requests were raised by the appellant with letter dated 9 February 2016, filed in advance of the date (5 April 2016) set for oral proceedings and were not commented by the respondent. These objections were admitted by the board in the exercise of its discretion under Article 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA) in view, inter alia, of their relevance. By not attending the oral proceedings, the appellant waived the opportunity of discussing its case in respect of the auxiliary requests. Since the board did not see any reasons to delay any step in the proceedings by reason only of the absence at the oral proceedings of the respondent (patent proprietor), the board announced its decision at the end of the oral proceedings pursuant to Article 15(3) RPBA.| |