Friday, 18 May 2012

T 1229/09 – Don’t Jump To Conclusions

I found this decision interesting because it refers to an old decision – which I did not know – defining another secondary indicia for inventive step.

Claim 1 of the main request before the Board read:
A clean-room installation with filter-ventilator units (2), each of which has at least one fan motor (3) and is connected to a mains supply (L1, N), characterised in that the filter-ventilator units (2) are connected to one another and to at least one central command unit (16, 18) via a bus system (10), that each filter-ventilator unit (2) is directly addressable by the command unit (16, 18) via an address number or identification number and the bus system is part of a LAN network, that the filter-ventilator units (2) are connected to the bus system (10) in each case via a node (13), and that the fan motors (3) are electronically commutated direct-current motors.
The Board found this claim to be novel over an alleged prior use (“Daldrop”), in particular because the bus system was part of a LAN network. It then continued:

*** Translation of the German original ***

[2.3] It is undisputed that LAN networks were known at the relevant priority date […]. LAN networks consist of up to 32000 nodes which are connected via various media that form a data bus […]. Typical nodes comprise, inter alia, a microprocessor referred to as neuron chip and a transceiver that establishes the connection with the transfer medium […].

The use of a LAN network rather than the serial network based on the RS 232 standard which is known from “Daldrop” […] solves the problem to make it possible to connect a greater number (i.e. up to 32000 […] rather than 4096 at the most) of filter-ventilator units that can be individually controlled, for a given network. It is also possible to consider that a further problem is solved, i.e. the use of a more up-to-date network that is adapted to an industrial context […].

The skilled person has several options for solving these problems. As a matter of fact, there is a whole array of field buses for industrial contexts other than LAN networks  […] that would solve said problems […] even though they have not been mentioned in the present method. When choosing an appropriate field bus the skilled person would be guided by the fact that the LAN network is used in building control (Gebäudeleittechnik), which is similar to clean-room technology […] and is suitable for establishing networks of ventilators […] and would consider using it in a clean-room device for connecting filter-aerator units and the central control unit, without there being any inventive step.

[2.4] In this context the [patent proprietors] have submitted that it was common practice to multiply the number of serial networks of the kind known from “Daldrop” in order to be able to connect the desired number of aerator-ventilator units. They referred to decision T 812/92 which explained that a prior use  that had occurred very close to the priority date of the impugned patent and which used the known prior art, such as “Daldrop”, was an indication for the presence of an inventive step if this prior art did not use the features according to their invention despite their alleged advantages. Moreover, the skilled person would consider LAN networks to bee to complex (aufwendig) and, therefore, too expensive for the mere control of filter-aerator units and would not have considered their use. They also referred to the fact that LAN networks were suitable for receiving data from a great number of nodes in these nodes and in further nodes and for taking into account the control of devices connected to these nodes […]. Such a scenario was rather untypical for an application in the context of clean-rooms.

[2.5] The Board was not persuaded by these arguments.

The common use of several networks of the kind known from “Daldrop” for controlling a greater number of ventilator-aerator units does not lead the skilled person to [adopting] a technical prejudice against the development of a new development of the whole system based on a different type of networks. At best, the skilled person is faced with a conflict of objective (Zielkonflikt) between a time-tested technology, which has, however, reached the limits of its expandability, and the development effort related to a new system.

In the case underlying decision T 812/92 the solution according to the invention was not found in the prior art, at least in the particular context (point [3.4.8] of the reasons). Things are different in the present case  because LAN networks were also well known for aerator control […]. Moreover, the declarations of witness Goller show that costs were the decisive criterion for the choice of the “Daldrop” solution […]. Therefore, it is not possible to conclude on non-obviousness from the fact that the LAN network had not been used in this solution.

It is true that LAN networks are used in systems that are more complex than aerator-ventilator units in clean-room installations. However at least after the development of digital systems it has become common to use more complex technical systems for solving less complex problems. The decisive criterion, therefore, is whether [the system] is suitable for solving the problem to be solved, which is the case for a LAN network (see [2.3] above). In this context it also has to be taken into account that it was known to use LAN networks for aerator applications […].

The Board came to the conclusion that the claim lacked inventive step.

Should you wish to download the whole decision (in German), just click here.

To have a look at the file wrapper, click here.

NB: Case T 812/92, the Opposition Division had revoked the opposed patent because the claimed subject-matter (directed at a method of manufacturing profile steel in a steel rolling mill) was not novel over Japanese applications D1 and D3. The Board found the claims before it to be novel over this prior art and then, surprisingly, made use of a prior use invoked by one of the opponents:

*** Translation of the German original ***

[3.4.8] The fact that very close to the priority date of the impugned patent (August 16, 1986) a competitor of the patent proprietor, i.e. opponent 2, in a letter dated July 28, 1986, has offered a rolling mill facility using a conventional finishing stand (Fertiggerüst) – i.e. which did not implement (verwirklicht) the advantageous teaching – to a manufacturer of profiled steel, is another argument in favour of inventive step of the solution, which allows to make a better use of the universal finishing stand than all the known methods and, therefore, to obtain a particularly high throughput in view of the effort needed.  In spite of its efforts and the assumably existing need to make best use of the rolling mill, including the finishing stand, the competitor as not succeeded in finding the solution according to the invention. This is evidence (Beweisanzeichen) for [the existence of an] inventive step (see Pagenberg, A 56, marginal number 107, EPÜ Münchner Gemeinschaftskommentar, as well as BGH GRUR 1979, 619, 620 “Tabelliermappe”).