T 1416/10 03-04-2012

Reasons for the Decision

Main request

1. Priority

According to Article 87(1)(b) EPC 1973 the right of priority may be claimed only in respect of the same invention. Following the opinion of the Enlarged Board of Appeal in G2/98 (OJ 2001, 413), the requirement of "the same invention" means that the skilled person can derive the subject-matter of the claim in question directly and unambiguously, using common general knowledge, from the previous application as a whole.

In the present case determining whether the same invention is disclosed in P1 involves determining whether or not it is directly and unambiguously derivable from P1 that the bearing supporting part and the stator fastening part, which according to the preamble of claim 1 of the patent in suit have to be unitary with each other, are also "inserted in" the tub rear wall.

1.1 As admitted by the appellant, the expression "inserted in" in claim 1 implies that the bearing housing comprising the stator fastening part which is unitary with the bearing supporting part, on the one hand, and the tub rear wall, on the other hand, are two separate elements. In, for example, the preferred embodiments of the patent in suit, the tub rear wall is injection molded around the bearing housing (see [0032] or [0109]).

1.2 It is also undisputed that the Korean application P1 does not explicitly disclose the expression "inserted in". At several locations in the (uncontested) English translation of P1 it is stated that the bearing housing 70, corresponding to the bearing supporting part of claim 1 of the patent in suit, and the tub rear wall, are formed as an integrated part (e.g. page 8, lines 14-16 "bearing housing... is formed integrating with the tub rear wall"). This is however not a direct and unambiguous disclosure for the more specific expression "inserted in" used in claim 1 of the patent in suit. "Inserted in" and "integrated" are not synonymous expressions and the description of the patent in suit does not employ them interchangeably either.

Nor do Figures 3 and 4 directly and unambiguously disclose the contested feature. The hatching in Figure 3 running continuously from the bearing housing 70, extending through the "thin plate", as referred to by the appellant and which, in the Board's view, can only be considered as the tub rear wall, to the tub side wall 59, would be understood by the skilled person such that the tub side wall 59, tub rear wall and the bearing housing 70, are formed as a unitary integrated element of continuous material. This is also consistent with the passage on page 8 of the translated description.

Consequently, Figures 3 and 4, taken alone or in combination with the description, do not clearly and unambiguously disclose the first feature in the characterising portion of claim 1 of the patent in suit.

For the subject-matter of claim 1 of the patent, the (first) priority of P1 cannot therefore be validly claimed.

1.3 The appellant's arguments on this matter were not found convincing for the following reasons:

Figures 3 and 4 cannot be considered as correct technical drawings, contrary to what was argued by the appellant. Rather, they are schematic drawings which are not drawn according to accepted principles and norms for technical drawings. In addition, they show several inconsistencies.

For example, if, as submitted by the appellant, the diametrical cut through the tub rear wall depicted in Figure 4 corresponds to the cross-sectional view of the tub rear wall shown in Figure 3, then, in this latter Figure the unhatched area, delimited by the contour line 58 and the radially extending hatched double line, should either be hatched, indicating a cut through a solid tub rear wall in the elevated segments in Figure 4, or, in case the tub rear wall thickness of the elevated segments in Figure 4 would be the same as in the interposed lower segments, the contour line just mentioned should have been drawn as a double line with hatching inbetween. The unhatched area could also be understood as a front view on the radially extending faces linking together the elevated and lower segments of the tub rear wall seen in Figure 4. Consequently, the area delimited by contour line 58 is at best unclear as is the relation to the elements shown in that area, as for example the fastening holes 66.

If, again as submitted by the appellant, Figure 3 suggested for the fastening holes 66 some form of tubular elements, then, depending on the meaning given to the above discussed delimited area, holes 66 could either be considered as embedded in the rear wall or as freely standing up from it or from some other element. In Figure 4 it cannot be seen whether these fastening holes comprise tubular elements or whether there are blind holes in the elevated segments of the tub rear wall. Also the translated description does not clarify how the fastening holes 66 are designed.

1.4 The issue of the validity of the priority claim in regard to P2 need not be pursued further for deciding the present case, as no relevant state of the art falling into the period between the date of priority of P2 and the filing date of the European patent application underlying the patent in suit has been cited.

1.5 The relevant date for the purpose of Article 54(2) EPC in the present decision may therefore be considered as the priority date of P2, i.e. 2 December 2003.

2. Public prior use

2.1 Admissibility of A11 and A12 into the proceedings

The filing of both documents constitutes an amendment to the respective parties' cases which may be admitted at the Board's discretion under Article 13 of the Rules of Procedure of the Boards of Appeal (RPBA). With respect to A11, the appellant did not object to its introduction as long as A12 was also admitted. In regard to A12, the appellant referred exclusively to the photos attached to the judgment. Since the documents did not raise complex issues and since at least A11 was highly relevant, the documents were admitted into the proceedings.

2.2 What has been made available, when and under which circumstances?

2.2.1 It was not disputed by the appellant that the washing machine with the model number WD-R100C dismantled by the respondent as documented by the set of photographs of Appendix B comprises all features of claim 1 of the patent as granted.

2.2.2 It was also not disputed that this dismantled machine was manufactured in October 2003 as may be seen from the printed label on several of these photographs. There is however no evidence on file as to when and under what circumstances this particular dismantled machine was made available to the public. The Board considers it nevertheless improbable that this washing machine would have have been stored for at least one month by the manufacturer before being delivered to a commercial distributor only after the relevant date, taking into account that machines of this model were already commercially available at that time, as will be shown below.

2.2.3 Document A6 is a report on a price survey for a number of consumer products conducted by the Korean National Council of Consumer Organisations. Amongst the products covered by it is the washing machine WD-R100C. According to this report the survey was conducted from 6 to 10 October 2003 to provide consumers with the exact price information for a rational decision in their purchase. It was carried out in a number of department stores located in Seoul, i.e. on the street (pages 1/2 of the translation of A6 list several shopping centres/malls, department stores etc.). Based on this (again uncontested) evidence and in view of the fact that it is indeed the purpose of a department store to have the real product in its showroom in order to allow potential buyers to get a direct impression of the product compared to that from e.g. a catalogue or an internet shopping site, the Board cannot conclude that the same washing machines WD-R100C were delivered to these distributors and were physically standing at least in some of these places for an unconditional sale to the public only at a later point in time. Absent any indication to the contrary, it is hardly conceivable that a survey, such as in A6, conducted by a consumer organisation and intended to assist consumers by demonstrating the price variations amongst specific distributors would select products which were not (yet) available on the market.

Consequently, it has to be concluded that washing machines with model number WD-R100C have been available for public sale with the distributors reported in A6 in the survey period, 6 to 10 October 2003, and thereby available within the meaning of Article 54(2) EPC to the public before the relevant date, that is 2 December 2003.

A11 confirms the conclusions drawn from A6. It contains the following statement made by the deciding body (text in square brackets added by the Board): ...it is acknowledged that the company of the defendant [the appellant in the present case] had manufactured and sold the drum-type washing machine of model name "WD-R100C" before the filing date (December 2, 2003) of the patented invention of the subject case, and there is no dispute between the two parties regarding the subject issue. Accordingly, the appellant in the present case agreed before the Korean Intellectual Property Tribunal that washing machines with model name WD-R100C were publicly available prior to the second priority date of the patent. The appellant did not contest this statement.

Also the remaining evidence in A1 to A5, A7 and A8, which shows indeed some inconsistencies with respect to "release dates", is not suitable to cast doubt on the conclusions drawn from A6 and confirmed by A11. It appears even that, as far as A1 to A5, A7 and A8 indicate dates of delivery or release ("coming out"), these dates lie clearly before the relevant date of the patent in suit, e.g. A7, a printout from the appellant's Customer Service web page, reports a "Coming-out date" of 11 August 2003. The appellant as the manufacturer of the product constituting the prior use should have been able to provide convincing evidence for a later release, had this been the case.

The evidence therefore shows beyond any reasonable doubt that washing machines with the model number WD-R100C, were publicly available prior to the relevant date of the patent in suit.

2.2.4 The Board accepts that products already on the market may be subject to design changes while keeping their model name or number. In the absence of any evidence to the contrary, the Board is however convinced that within the short period of interest, set by the manufacturing date of the dismantled washing machine in October 2003, the period in which the survey in A6 was conducted, 6 to 10 October 2003, and the relevant date of the patent in suit, 2 December 2003, a design change of the structure of the washing machine with model number WD-R100C in regard to the features defined in claim 1 of the patent in suit, which notably relate to the connection between the drive unit and the tub and hence concern a major structural element of the washing machine design, is excluded beyond all reasonable doubt.

Appendices A and A12 submitted by the appellant to support the allegation of design changes are not suitable to cast doubt on the assumption of an unmodified structure of the machines referred to in A6 and A11 and disclosed in the photographs B. The appellant did not establish a clear link between the content of Appendix A and the relevant features of a washing machine, let alone to features concerning the particular structures and alleged changes in the assembly of motor parts, shaft bearing and tub of the model WD-R100C. The modification pointed out by the appellant in the photographs of A12 (photos 22 and 23 on page 33) concern only the type of stator core used in the washing machine with model number WD-R100C, which has no impact at all on the mounting design of the stator to the tub rear wall. Indeed, as can be seen from the remaining photographs in A12 (see in particular photos 6 to 18 on pages 30 to 31), the assembly of the drive unit and the tub rear wall is in no way affected by any modification compared to the machine in Appendix B.

If it were the case, as argued by the appellant, that in the short period before the relevant date of the patent a washing machine with the same model number but different assembly of drive unit and tub rear wall was on the market and that the machine shown in Appendix B was not already on the market, which would go completely against normal practice, the appellant as the manufacturer of such product should have clearly been in the position to provide evidence for it. The appellant however provided no evidence to this effect.

In other words, there is no evidence on file which casts doubt on the fact that the machines WD-R100C referred to in A6 or A11 and the one of Appendix B were identical with respect to the features of claim 1.

2.2.5 As regards the decision T 2043/07 referred to by the appellant, the Board notes that the facts underlying that decision are different from those of the present case, and further that in that case, as stated by the appellant with regard to the applicable standard of proof, "it was immaterial which test was to be applied" and, last but not least, that the appellant (proprietor) in the present case is not adversely affected by the application of the stricter standard of proof "beyond reasonable doubt".

In T 1464/05, also cited by the appellant, the Board concluded that although subsequent modifications of the composition cannot be excluded ..., there is no indication that the modifications would have been sufficiently significant to affect the present conclusions" (Reasons 5.3.1). A similar conclusion was reached by the Board in the present case (see 2.2.4 above), in that no modification of (relevant) features of washing machines with the same model number ("WD-R100C") during the critical period could be established.

2.2.6 In summary, although for the specific washing machine dismantled by the opponent (Appendix B) there is no proof on file that it was indeed available to the public prior to the relevant date of the patent in suit, notwithstanding that it is already highly unlikely that this specific machine manufactured in October 2003 remained with the manufacturer more than one month before being delivered for sale to a distributor, the evidence submitted by the opponent allows to conclude beyond any reasonable doubt that washing machines with the model number WD-R100C, being identical in structure with respect to the features defined in granted claim 1 to those disclosed in Appendix B, were publicly available prior to the relevant date of the patent in suit.

2.3 The public prior use relating to a washing machine with model number WD-R100C as established on the basis of Appendices A6, A11 and B thus forms part of the state of the art according to Article 54(2) EPC.

3. Novelty

Since it was not contested by the appellant that the washing machine with model number WD-R100C constituting the established public prior use, as exemplified in Appendix B, comprises all features of claim 1 of the patent in suit and since the Board finds no reason to conclude otherwise, the subject-matter of claim 1 lacks novelty (Article 54(1) EPC) and the appellant's main request is therefore not allowable.

Auxiliary request

4. Admissibility

4.1 According to Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Furthermore, according to Article 13(3) RPBA, amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

4.2 In the present case the appellant submitted the auxiliary request during the oral proceedings, i.e. at the latest possible stage. Claim 1 according to this request is based on a combination of granted claims 1, 2 and 7. Compared to claim 1 of the main request, the subject-matter has been further limited to define the stator and its specific features. The details of the stator had not been relevant to the assessment of novelty up to that point in the proceedings. Admittance of the request would thus have resulted in an entirely fresh case requiring the Board and the respondent to address issues which had not been addressed before, such as the evaluation of the differences of the now claimed subject-matter with respect to the available state of the art and the corresponding technical effects. For example, it would have been necessary to discuss and consider whether the feature that the stator core is made of helically wound layers and the feature that the fastening hole in the fastening part has a metal tube press fit therein relate to a single or different technical problem(s). These issues are far too complex to be dealt with for the first time at that very late stage in the procedure without adjournment of the oral proceedings (Articles 13(1) and (3) RPBA).

The auxiliary request was consequently not admitted into the proceedings.

4.3 The appellant's reasons for the late filing are not considered persuasive as regards the admissibility of the request. That the subject-matter in substance remained the same as that addressed by at least one of the auxiliary requests submitted in writing in preparation for the oral proceedings and that this former and the present auxiliary requests were filed in response to the opinions given by the Board respectively in its communication and in the oral proceeding are not convincing arguments for admitting the late filed requests in the present case. At the latest upon receipt of the impugned decision, the appellant was fully aware of the reasons for which the patent was revoked and that there was a considerable risk that the patent may remain finally revoked for lack of novelty in view of the prior use. A party cannot reasonably rely on an assumption that the Board will definitely follow its line of argument and only submit amendments to overcome the pending objections once the Board communicates a preliminary opinion to the contrary. Therefore the appellant should have prepared fallback positions to overcome the novelty objection in the form of auxiliary requests at the latest already when filing the statement of the grounds of appeal.

Nor does the argument that the communication between client and representative was difficult have an impact on the exercise of the Board's discretion in the present case. No particular circumstances have been advanced by the appellant and the Board cannot see any reason how such difficulties could have prevented the filing of an auxiliary request consisting of the combination of granted claims earlier.