T 535/10 – Do Not Cross Tracks

Claim 1 of the patent as granted read:

A mirror (1) comprising a first transparent glass plate (4) at least partly provided on the rear side with a reflecting coating (2) as well as at least one integrated electrical means (6), wherein

• the first glass plate (4) comprises transparent and/or half-reflecting portions (8),
• the first glass plate (4) is bonded to a second glass plate (10) with the aid of a transparent adhesive layer (12) in the form of a laminated glass pane, and
• electrical means (6) are mounted on an electrically conducting coating (14) of the second glass plate (10) in portions opposite the transparent and/or half-reflecting portions (8) of the first glass plate (4).

In what follows the Board examines whether this claim involves an inventive step:

*** Translation of the German original ***

[5.1] D1 […] discloses a mirror comprising a first transparent glass plate (2) provided on the rear side with a reflecting coating as well as integrated electrical means (7-10), wherein the first glass pate (2) is bonded to a second glass plate (1) with the aid of a transparent adhesive layer (5,6) in the form of a laminated glass pane and the electrical means (7-12) are mounted on an electrically conducting coating of the second glass plate (1).

The mirror according to claim 1 differs from the one known from D1 in that

• the first glass plate comprises transparent and/or half-reflecting portions,
• the adhesive layer bonding the two glass plates is transparent,
• the electrical means are mounted in portions opposite the transparent and/or half-reflecting portions of the first glass plate

The [patent proprietor] has submitted that in D1 the coating was at the same time the electrical means and that, consequently, there was no electrical means within the meaning of claim 1 on the coating. However, the electrical means comprises not only the coating itself but also collectors that are distinct from the coating, such that even on the coating there are collectors and electrical means, respectively.

[5.2] Starting from D1 as closest prior art the problem underlying the invention can be considered to be the design of a mirror suitable for use in a damp room (Feuchtraumnutzung) that can possess various integrated electric functions […].

[5.3] The [opponent] has referred to D11, D12, or D13 for solving this problem.

D11 […] discloses a rear-view mirror wherein a monitor (6) in the form of an LCD display is arranged behind a reflector (Spiegelscheibe) (4) that is half-silvered in this zone.

D12 […] discloses a a rear-view mirror wherein a camera (14), in particular a CCD-camera, that is arranged behind a reflector (4) that is half-silvered in this zone […].

D13 […] discloses an interior rear-view mirror for a vehicle comprising half-silvered zones in which symbols can be made apparent by illumination by means of illuminating means (Leuchtmittel) […]. The illuminating means can be LEDs (72-78) that are mounted in a housing that is glued onto the back of the mirror opposite the half-silvered zones […].

[5.4] First of all the Board notes that the skilled person has no reason to combine these teachings, which all concern rear-view mirrors for vehicles, with the teaching of D1 concerning mirrors that are mainly used in damp rooms […].

Moreover, as is well-known, the electrical devices that are disclosed in D11 to D13 have a depth such that they cannot be integrated between two glass plates; therefore, a skilled person would not consider the incorporation of the electrical means known from these documents between the two glass plates of a mirror according to D1.

[5.5] The [opponent] has expressed the opinion that the skilled person knew from D16 […] that electrical means, and in particular illuminating means that implement LEDs, may have such small overall size (Baugröße) that they may very well be incorporated between two glass plates. However, the overall size of LEDs is not comparable to that of an LCD display or a CCD-camera. Thus a combination of D1 and D11 or D12 can be ruled out, even taking account of D16, because of the required overall size.

[5.6] Moreover, D13 does not disclose a second glass plate that is bonded to a first glass plate in the form of a laminated glass pane and that comprises an electrically conductive coating on which the electrical means are mounted.

Even if the skilled person understood from D16 that LED illuminating means may be made much more flat than what is shown in D13, this does not alter the fact that D13 teaches to provide the illuminating means behind the mirror plate and only opposite the symbols that are to be illuminated. However, if the skilled person proceeded according to D16 when providing an LED module between the two glass plates of D1, then he would provide the LEDs together with the conductive layer on the front glass rail (vordere Glasbahn) 2, as disclosed in D16 […]. The teaching of D13 would not lead him to mount the electrical means directly on the second rear glass plate of D1, which already comprises an electrically heatable layer. Even if the skilled person tried to combine D1 and D13, the resulting combination would not lead in an obvious way to the claimed subject-matter, even taking account of D16.

[5.7] The [opponent] also explained that a combination of D13 with D16 would make the claimed subject-matter obvious.

First of all, it has to be noted that the claimed subject-matter is a mirror for use in a damp room. D13 does not disclose such a mirror. Thus the Board is of the opinion that D13 is not a suitable starting point for the claimed invention.

It is true that D16 […] discloses that the first glass substrate, which carries the LEDs, may be protected by a second substrate, which might also be made of glass. The document does not disclose how the second substrate is deposited onto the first. Neither document suggests connecting the substrates by means of a transparent adhesive layer in the form of a laminated glass pane.

Moreover, [the Board] does not understand why the skilled person wishing to replace the illuminating means known from D13 by an LED module as known from D16, would provide a carrier substrate for the LEDs that would be greater than the housing for the illuminating means shown in D13.

In this context, the [opponent] has explained that the skilled person would proceed in this way in order to make the mirror suitable for use in a damp room. However, this argument cannot be endorsed. There is no reason to make an interior rear-view mirror suitable for use in a damp room. This would lead to rebuilding said mirror for a completely different use. Such a way of proceeding cannot be obvious.

Although the skilled person is completely free in the choice of a starting point, he is later bound by this choice. If a skilled person choses a specific interior rear-view mirror for a car as starting point, he can pursue its development, but the normal outcome of this development will in the end still be a rear-view mirror for a car and not a mirror suitable for use in a damp room (see T 570/91 [4.4]). A conscious choice, i.e. a choice made in full awareness of the advantages and drawbacks of the different species (Gattungen), not only determines the subject-matter serving as starting point but also the framework of the development, i.e. a development within this species. In the course of the development a change from the consciously chosen species to another, which was known before but which had not been chosen, is unlikely and, as a rule, not obvious (T 817/94).

The [opponent] has also explained that the claimed subject-matter was obvious over a combination of D16 with D13.

However, as already explained above, a document belonging to another species (here: an LED module) normally cannot be considered as a realistic starting point for creating a mirror (T 870/96).

[5.8] Moreover, [the opponent] based an attack on a combination of D5 and D8.

D5 […] discloses a mirror comprising a transparent glass plate (12) partly provided on the rear side with a reflecting coating (14) as well as at least one integrated electrical means (30), wherein the glass plate (12) comprises transparent portions  and the electrical means (switch and lamp) are mounted on an electrically conducting coating (30) on the back of the first glass plate in the transparent portions.

These means are fixed onto the glass plate with through-holes (22, 24) and protrude from the glass plate.

D8 […] discloses a surface display (Flächendisplay) for illuminating background surfaces. This document does not disclose that the transparent conductor plate (Leiterplatte) (12) should be a mirror, nor that it is a glass plate. The housing (10) is filled with sealing compound (Vergussmasse) made of transparent materials. It is the conductor plate (12) that carries the electrical means. There is no second glass plate.

Neither document shows two glass plates that are bonded in the form of a laminated glass pane or that the electrical means are mounted on an electrically conducting coating of the second glass plate in portions opposite the transparent and/or half-reflecting portions of the first glass plate.

Thus the combination of both documents cannot have these features either and cannot, therefore, lead to the claimed subject-matter in an obvious way.

[5.9] As none of the attacks submitted [by the opponent] lead to the subject-matter of claim 1 in an obvious way, [the Board found] the opponent’s assertion that the subject-matter of claim 1 did not involve an inventive step unpersuasive.

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