T 0576/12 09-01-2015

Reasons for the Decision

1. Document D9 not admitted in first-instance proceedings

1.1 Scope of the Board's review

Although the respondent/opponent withdrew its appeal, the Board does not agree with the appellant's submission that document D9, which was not admitted by the Opposition Division into the first-instance proceedings, cannot be admitted in appeal proceedings due to the doctrine of prohibition of reformatio in peius or the principle of res judicata.

According to the established case law of the Boards of Appeal, the doctrine of prohibition of reformatio in peius cannot be construed to apply separately to each point or issue decided, or the reasoning leading to the impugned decision (see e.g. T 149/02, headnote; also Case Law of the Boards of Appeal, IV.E.3.1 a)). If an appeal is lodged against an adverse decision of the first instance about the main request, then (see T 401/95, point 2 of the Reasons) "the whole request is before the Board of Appeal and within its jurisdiction (see T 327/92, point 1 of the Reasons; T 583/95, point 2 of the Reasons; neither published in OJ EPO)", and "the Board is empowered to reopen and to decide upon matters which have been an issue before the Opposition Division", i.e. in the present case the matter of admission of document D9 was open for reconsideration. In fact, the appellant did not recite any case law supporting its interpretation of the doctrine. It is noted that, in the present case, the prohibition of reformatio in peius implies that the patentee as the sole appellant cannot be put in a worse situation than if it had not appealed, e.g by obtaining, as a result of the appeal proceedings, claims that are more limited than those maintained in the decision under appeal. As regards the appellant's main request and auxiliary request 1, these were denied by the Opposition Division and thus may well be denied also in appeal proceedings (see also T 401/95, point 2 of the Reasons).

"Res judicata" means a matter finally settled by a court of competent jurisdiction (see e.g. for more details the criteria set out in T 167/93, OJ EPO 1997, 229, point 2.5 of the Reasons). In the present case, no court of competent jurisdiction, such as a Board of Appeal in previous appeal proceedings, has ruled on issues of fact related to the present case. Moreover, the appeal filed by the patent proprietor is still pending, i.e. due to the suspensive effect of the appeal under Article 106(1) EPC the decision of the Opposition Division negatively affecting the patent proprietor with respect to the main request and auxiliary request 1 has not become final. Therefore, the principle of res judicata does not apply in the present case. The mere fact that the opponent has withdrawn its appeal does not mean that all issues negatively affecting the opponent's position thereby become final. As already pointed out above, if an appeal is lodged against an adverse decision of the first instance about a request, then the whole request is before the Board of Appeal and within its jurisdiction. In particular, the Board does not agree with the appellant that the appeal proceedings are restricted to what the appellant mentioned in its grounds of appeal. This is also contrary to Article 12(1) of the Rules of Procedure of the Boards of Appeal (RPBA, OJ EPO 2007, 536), according to which the appeal proceedings are based (inter alia) on the statement of grounds of appeal and on the written reply of the other party or parties.

Decisions G 7/91 and G 8/91, cited by the appellant and relating to appeal proceedings terminated by the sole appellant withdrawing its appeal, are not applicable in the present case where appeal proceedings are still pending.

1.2 Admission of documents D9 and D9' into the appeal proceedings

Document D9 was filed in the first-instance proceedings in response to a negative preliminary opinion issued by the Opposition Division with regard to evidence for an alleged prior use provided by the opponent. According to the contested decision (see point 2.3), document D9 was considered late-filed and as not providing more relevant information than the documents already in the proceedings, in particular because it did not provide evidence for the prior use or prove the selling of the elements described in D9.

According to the respondent/opponent's letter dated 3 November 2011 (see page 7, second paragraph) as submitted in first-instance proceedings, and also the respondent's reply to the appeal filed by the patent proprietor by letter of 25 September 2012 (see page 4), document D9 as such was also considered as representing a pre-published publication within the meaning of Article 54(2) EPC 1973. This aspect was not taken into consideration by the department of first instance (see point 2.3 of the contested decision: "Independently from the fact that the document could have been available to the public in due time ..."). According to the contested decision and the minutes of oral proceedings, it was decided not to admit document D9 into the opposition proceedings before the conclusion was reached that the alleged prior use was made available to the public. The general statement in the contested decision with regard to the relevance of document D9 (see point 2.3: "not provide more relevant information as the documents already in the procedure"), in particular in combination with the following reasoning ("In particular, ...., the document D9 cannot be regarded as providing evidence for the prior use ..."), leaves open whether the relevance of document D9 was assessed in comparison with all the prior art documents submitted, or only with respect to the documents providing evidence for the alleged prior use. Moreover, the respondent requested to have D9 admitted into appeal proceedings for being highly relevant, in particular since substantiation of the alleged prior use was contested by the appellant.

Notwithstanding the fact that a Board of Appeal when asked to overrule the way in which a first-instance department has exercised its discretion is limited to determine whether the discretion was not exercised in accordance with the right principles or in an unreasonable way, in the present case the Board cannot exclude that the department of first instance based its decision on false facts, in particular the wrong assumption that document D9 should only prove the selling of prior used goods and that its relevance was assessed solely in this respect, whereas D9 as such also represented a potential piece of (pre-published) prior art. Under these circumstances, the Board is free to exercise its own discretion whether to admit document D9 or not:

In the Board's judgement, it is apparent at first glance that document D9 shows an axial fan comparable to the one depicted in documents D5.1 and D5.4 relating to the alleged prior use in first-instance proceedings, and is thus prima facie very relevant to the claimed subject-matter. Moreover, presenting the original catalogue from which the pages of D9 were extracted, and filing during oral proceedings a complete copy as document D9', has in the Board's view dispelled any doubts as to the availability of document D9 to the public. In fact, the date printed on the first page of D9 ("Ausgabe 12/2003") is linked to all pages of D9 and apparently proves that D9/D9' was made available to the public before the priority date (30 November 2004) of the contested patent. Under these circumstances, the Board judged it appropriate to admit both D9 and D9' into the appeal proceedings. Reference will be made hereinafter to D9/D9' as if it were a single document, since D9 is anyway an extract of D9'.

2. Non-remittal to the department of first instance

2.1 At the oral proceedings before the Board, after document D9/D9' had been admitted, both parties requested that the case be remitted to the department of first instance. According to Article 111(1) EPC 1973, the Board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It is established case law (see Case Law of the Boards of Appeal, 7th edition 2013, IV.E.7.6.1) that there is no absolute right to have an issue decided upon by two instances and that e.g. the general interest in bringing the proceedings to a close within an appropriate period of time has to be taken into account. In the present case, the introduction of document D9/D9' into the appeal proceedings did not substantially change the issues as discussed in first-instance proceedings and did not raise new questions. Document D9/D9' shows an axial fan similar to the one discussed in relation to the alleged prior use in first-instance proceedings. In particular, the technical drawing on page 17 of D9/D9' shows identical information content - at least as far as the features of claim 1 according to both the main request and auxiliary request 1 are concerned - as drawing D5.4 of the prior use discussed in first-instance proceedings. 2.2 The respondent additionally requested that the case be remitted to the department of first instance, as decided in T 1066/92, in order to allow the introduction of new grounds for opposition according to Article 100(b) and (c) EPC 1973. However, decision T 1066/92 cannot be taken as establishing or even advocating any principle that a newly raised ground which a Board of Appeal cannot itself consider should be remitted to the Opposition Division for consideration. Such remittal must remain a matter for the discretion of the Board considering each individual case (see T 100/01, point 37 of the Reasons). Moreover, decision T 1066/92 relates to a case different than the present one, as the decision of the Opposition Division was a decision ultra vires and had to be set aside on this ground solely (see point 2 of the Reasons). 2.3 Under these circumstances and with due consideration to the need for procedural economy, the Board in exercising its discretion conferred by Article 111(1) EPC 1973 decided not to remit the case to the department of first instance, but to take a decision on the merits of the case.| |

3. Claim 1 as granted (main request)

3.1 For the reasons given above (see point 1.2) the Board is convinced that document D9/D9' is prior art according to Article 54(2) EPC 1973. This was not contested by the appellant during the oral proceedings.

3.2 Document D9/D9' shows (pages 13 and 17) a ventilation unit comprising an axial fan, a motor and an impeller according to features 3) to 5); this was not contested by the parties. Since D9/D9' explicitly mentions (see cover page; also page 5 in D9') that the ventilation units are intended to be used in commercial vehicles, the Board considers that D9/D9', even if a ventilation unit mounted in a vehicle is not explicitly shown, at least implicitly discloses a ventilating system for motor vehicles as specified by feature 1). The Board also finds that a mounting wall delimiting a space for containing the system according to feature 2) is implicitly known from D9/D9' when using axial fans in a vehicle, because the axial fan will be mounted to one of the walls provided by the vehicle's body. This wall would become the "mounting wall" as claimed and, at the same time, also delimit a space for containing the system. As regards feature 6), a power cable connected to the electric motor is disclosed in D9/D9' (page 17). The further statement that the power cable is "connectable to an electrical power source inside the space" is not a further limitation as such, as long as the mounting position of the axial fan with respect to the mounting wall is left open. In particular, the term "connectable" merely refers to a possible connection to an electrical power source inside the "space" (for containing the system as mentioned in feature 2)), but does not yet require a defined cable routing, in particular one through the mounting wall. So far, the combination of features 1) to 6) does not define in more detail how the axial fan is mounted to a mounting wall, e.g. whether the axial fan is just mounted "to a mounting wall" (e.g. from below to a roof of a bus as argued by the appellant, with the impeller directed downward) or whether its casing is inserted from above into an air opening of the mounting wall, as only later suggested by feature 9). The additional characterisation according to feature 7) that "the axial fan is mounted on the wall at an air opening" does not define more specifically its mounting position, i.e. from which side the axial fan is fixed to the mounting wall (e.g. from below to a roof of a bus, or from above into an air opening in the roof, with the impeller directed downward), except for specifying an air opening which again must be implicitly assumed when using the axial fan of D9/D9' in a vehicle. The "space" mentioned in feature 7), which was previously specified in feature 2) as "space for containing the system", has to be understood as the space on that side of the mounting wall which accommodates "the system". As can be derived from the patent specification itself (see Figure 1), it cannot be meant that the complete system has to be on one side or the other of the mounting wall. As can be seen from Figure 1 of the contested patent, the space should at least accommodate the ring-shaped casing, but not necessarily the flange. Therefore, in both mounting situations of the axial fan mentioned above, the impeller would face the inside of the space and the motor would face the outside, as further specified by feature 7), so this feature cannot be regarded as providing any distinction over D9/D9'. It was not disputed that the ring-shaped casing of the axial fan in D9/D9' comprises means according to feature 8) for fastening the cable to its cylindrical outside surface (see D9/D9': on the left side of the axial fan shown on page 13, or in the lower left bottom area on page 17).

As follows from the foregoing, without taking into consideration feature 9), the combination of features 1) to 8) is disclosed in D9/D9' either explicitly or implicitly. However, the Board considers that D9/D9' does not disclose any mounting position of the axial fan. Only if the axial fan is mounted by inserting it into the air opening does it penetrate the mounting wall, and then a "passage for the cable through the mounting wall" according to feature 9) would be required, in order to connect the cable to the electrical power source inside the space as indicated in feature 6).

A "passage for the cable" on the cylindrical outer surface of the ring-shaped casing might be known from D9/D9', as argued by the respondent. But feature 9) specifies further the arrangement of the axial fan with respect to the mounting wall. D9/D9' is completely silent on how to mount the axial fan to the mounting wall, so feature 9) is not known from D9/D9'. It is noted that the appellant's assertion that D9/D9' - due to a groove on the upper side of the ring-shaped casing for taking an O-ring - indicates a specific mounting position (from below to the roof of a bus, i.e. not in accordance with feature 9)) cannot be followed. Nor can the Board follow the respondent's argument that the skilled person, when reading D9/D9', would implicitly understand that feature 9) represented the only reasonable solution because the axial fan was supported on the mounting wall by the flange. Both parties provided reasonable explanations as to how the axial fan of D9/D9' could be mounted to the roof of a bus, either by fastening it with its motor side (see D9/D9', right drawing on page 17: with its left-side planar surface) to the roof, as argued by the appellant, or by inserting it with the impeller side from above into an air opening of the roof, as argued by the respondent. There is, therefore, no basis for concluding that one of these is the mounting position of the axial fan that the skilled person would consider as clearly and unambiguously disclosed by D9/D9'. Accordingly, the skilled person would consider that D9/D9' leaves open the mounting position of the axial fan.

Thus, the Board concludes that the subject-matter of claim 1 as granted is new over D9/D9' in accordance with Article 54(1) EPC 1973.

3.3 However, for the following reasons, the Board cannot accept the appellant's arguments in support of inventive step:

Starting from document D9/D9' as closest prior art, the mounting position of the axial fan remains undefined, as argued above. The person skilled in the art, when trying to solve the problem of how to mount the axial fan of D9/D9', would recognise in D9/D9' means for fastening the axial fan to a mounting wall comprising an air opening, in particular four portions around the periphery of the axial fan's flange, each with an oblong hole and a round hole side by side (see page 17 of D9/D9'). A raised surface is provided in the correspondence of each oblong hole (see the picture on page 13 of D9/D9'; the surfaces are raised as seen in a direction perpendicular to the plane of the picture). These raised surfaces are connected with the circumferential outer surface of the ring-shaped casing by reinforcing ribs. As argued by the respondent, the reinforcing ribs are also suitable for preventing any rotation of the axial fan in use when co-operating with corresponding slots in the mounting wall. The Board cannot share the appellant's view that, when placing the axial fan on the mounting wall on said raised surfaces, the reinforcing ribs would not provide sufficient space for placing a screw into the oblong holes, or that significant structural changes would be required in this area (such as enlarging the area of the raised surfaces or weakening the ribs). The skilled person would note that by choosing an appropriate type of screws (e.g. with small head) there would be no need to modify the design according to D9/D9' for mounting the axial fan according to D9/D9' as specified by claim 1. The provision of four raised surfaces around the periphery of the axial fan's flange moreover suggests the use of these surfaces as well-defined seating areas. Therefore, mounting the axial fan known from D9/D9' on the mounting wall such that the casing penetrates the air opening is considered an obvious solution for the skilled person.

Even following the appellant in its assertion that D9/D9' shows a groove on the upper side of the fan's flange for taking an O-ring sealing, indicating a mounting position where the flange side opposite to the side showing the reinforcing ribs is mounted to a mounting wall, this would only lead to the conclusion that the axial fan might obviously be mounted in either way. The selection of one of two obvious solutions which are both derivable from D9/D9', however, cannot establish inventiveness either. The appellant's argument that D9' shows on pages 17 and 19 two axial fans with opposite directions of air delivery, in order to cover both mounting situations as discussed above, is not convincing. As regards their design in the mounting area, both axial fans are identical, so that the same mounting positions must be assumed. The disclosure in D9' of axial fans with opposite directions of air delivery would be regarded by a skilled person simply as having the purpose of covering the complementary needs of introducing fresh air into and exhausting air from a vehicle's interior.

The appellant contests that the size and shape of the channel or passage provided on the ring-shaped casing in D9/D9', and also the design of the nose for keeping the cable within the channel, are not suitable for guiding the cable through the air opening. The appellant's arguments presented by referring to the pictures in D5.1 do not convince the Board for the following reasons:

Although only two ways of guiding the cable are explicitly shown in D5.1, either (see picture 11) in an axial direction of the fan and supported by the nose, or (picture 3) in a circumferential direction to a dedicated fastening means, the cable could also be guided circumferentially in the opposite direction (to the right in picture 3 of D5.1, and correspondingly in D9/D9'), as agreed by the appellant. However, this would not necessarily conflict with either the fastening area or with the reinforcing ribs, because in this case it would be obvious to have the cable first guided in the channel/passage and then bent by 90° when reaching the nose, i.e. the cable would not be guided in the same plane as the flange. In such a mounting situation, the nose serves only as a means for re-directing the cable so that forces which might break off the nose, as argued by the appellant, can be avoided. Due to vibrations in a running vehicle, a well-defined position of the cable might not be guaranteed. However, any contact between the cable and the edge of the air opening is avoided when providing an appropriately large cut-out in the air opening. Moreover, by providing further fastening or guiding means within the space containing the ventilating system, interference with the fastening area or the reinforcing ribs could easily be avoided. This would also avoid any cutting effect with the rotating impeller, because then the cable would not be guided in an axial direction along the outer surface of the ring-shaped casing up to the impeller rim.

As a result of the foregoing discussion, the Board finds that, without further modification of the axial fan according to D9/D9, the skilled person would obviously consider mounting the axial fan by inserting it with its impeller side into an air opening. Moreover, the ring-shaped casing of D9/D9' already shows a passage which is suitable for guiding the cable through the mounting wall. Therefore, the skilled person would arrive without the exercise of inventive skill at the subject-matter of claim 1 as granted when looking for a mounting position of the axial fan known from D9/D9' (Article 56 EPC 1973).

4. Claim 1 according to auxiliary request 1

4.1 Admission into the proceedings

The respondent requested that auxiliary request 1 not be admitted into the appeal proceedings. In the present case, however, auxiliary request 1 was filed with the grounds of appeal and corresponds to the first auxiliary request presented during the opposition proceedings, which was considered admissible and novel by the Opposition Division, but rejected for lack of inventive step. There is no issue of admissibility here, since i) the request forms part of the appellant's case (Article 12(2) RPBA) and ii) the provisions of Article 12(4) RPBA for holding a request inadmissible do not apply as the request was presented and admitted in the first-instance proceedings.

In fact, the request of the respondent amounts to a request to overrule the way in which a first-instance department has exercised its discretion pursuant to Rule 71a(1) EPC 1973 (now Rule 116(1) EPC) to admit the first auxiliary request filed during the oral proceedings. According to established case law, a Board of Appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion. No arguments to that effect have been submitted by the respondent.

The respondent has referred to the criterion of convergence of the requests. This criterion was not invoked by the opponent before the Opposition Division; nor is there a legal basis for regarding this criterion as a fundamental one that should have been considered by the Opposition Division when exercising its discretionary power (see e.g. T 996/12, point 6.2 of the Reasons).

4.2 Inventive step

The additional features of claim 1 according to auxiliary request 1 essentially relate to the axial fan having a flange which abuts against the outer surface of the mounting wall when the axial fan is fitted into the air opening. This wording of claim 1 specifies neither that the flange abuts with its entire surface on the mounting wall, nor that the flange abuts directly on the mounting wall.

Therefore, the Board cannot see that further distinguishing features over D9/D9' are provided by claim 1 as amended according to auxiliary request 1. The raised seats provided as radial extensions of the flange of the axial fan according to D9/D9' form part of the flange itself, so the flange of D9/D9' abuts at least partially with its four raised seats against the outer surface of the mounting wall. This possibility falls within the meaning of claim 1. Even assuming that the seats did not form part of the flange, the flange of D9/D9' would abut - via those seats and therefore indirectly - on the mounting wall. This possibility too would fall under the wording of claim 1.

As a consequence, auxiliary request 1 must also fail for lack of inventive step (Article 56 EPC 1973).