Key points
- The claim is directed to a base fabric for an airbag. Public prior use is the issue. I focus on the issue of implied secrecy.
- " It was not contested by the proprietor that the yarn supplied by Toyobo Co. Ltd was woven into a base fabric at Shimizu Co. and stored at Chuo Warehouse Co as depicted in the flowchart D2. '
- " The proprietor argued instead [] that there was no evidence that Shimizu Co. had ever sold the base fabric and that there was at least an implicit secrecy agreement between Toyobo Co. Ltd, Shimizu Co., Chuo Warehouse Co. and the recipients of base fabric stored in the warehouse, namely Seiren Aucus, Toyoda Gosei, Ashimori Industry, Nikkou Rubber and Nihon Plast."
- " The Board does not find these arguments convincing. The cargo receipts D5 and D46/D46a show that several deliveries of large quantities of base fabric from the warehouse to Seiren Aucus (an airbag producer) among other recipient airbag producers took place as early as April 2008 (the priority date of the contested patent being 23 August 2010).'
- " Although no purchase receipts were filed demonstrating a money transaction had been made, the Board finds that the large quantities of fabric delivered could not reasonably have been supplied and used only for prototypes and pre-series runs and that the deliveries were thus at least meant to be used for the commercial serial production of airbag modules, not least due to the regular transactions which occurred between the companies. '
- " In such a serial production phase of the airbags, the Board also cannot see any plausible reason for the companies involved to have had a secrecy agreement, since the airbags were destined to be mounted on production vehicles and sold to third parties/end customers which are under no secrecy obligations concerning the vehicle or its components."
- " Turning to the declaration D69 [of a person with a Japanese name] which the proprietor [a Japenese company, it seems] used as evidence to show that implicit secrecy was normal in the automotive industry, this states in paragraphs 8 and 9 that "airbag base fabrics are handled under implicit secrecy obligations" and that "its technology was not made freely available at any stage". However, D69 includes the explanation in paragraphs 11 to 13 that "airbags and their properties are not publicly known", that "it is not normal for customers to disassemble an airbag" and that "once an airbag module is obtained in the market, the public cannot access, let alone analyse, the base fabric for the airbag in the airbag module" and that for these reasons "the technology for a base fabric for an airbag in the automotive industry is under implicit secrecy and is even more so not made freely available at any stage", the latter expression being the same as used in paragraphs 8 an 9. By stating in paragraph 12 that the technology of an airbag obtained in the market and thus in possession of the public is "under implicit secrecy and not made available at any stage" shows that the declarant is not aware of the conditions for public availability which are applied in the Boards case law, where it is not necessary to prove that an analysis of an airbag module has actually been carried out, but only that the airbag module has been made accessible to persons who are not bound to any secrecy agreement regardless of the technical skills required to do such an analysis.'"
- The claim is found to lack an inventive step.
Reasons for the Decision
1. Although the opponent had argued that the requirement of Article 123(2) EPC was not met, the Board finds that the subject-matter of claim 1 of the main request does meet the requirement of Article 123(2) EPC. However, no detailed reasoning is required for this finding since the main request is not allowable for the following different reasons:
2. Prior use A - public availability
2.1 The Board finds that the two fabric samples A-A and A-B of the airbag base fabric LTA203 (denoted as LTA203LS after refinement processing) were publicly available before the priority date and thus belong to the prior art according to Article 54(2) EPC.
2.2 It was not contested by the proprietor that the yarn supplied by Toyobo Co. Ltd was woven into a base fabric at Shimizu Co. and stored at Chuo Warehouse Co as depicted in the flowchart D2. The proprietor argued instead, during the oral proceedings before the Board albeit this had not been contested during the written phase of the appeal procedure (see also the Board's communication under Article 15(1) RPBA 2020, item 2.12) that there was no evidence that Shimizu Co. had ever sold the base fabric and that there was at least an implicit secrecy agreement between Toyobo Co. Ltd, Shimizu Co., Chuo Warehouse Co. and the recipients of base fabric stored in the warehouse, namely Seiren Aucus, Toyoda Gosei, Ashimori Industry, Nikkou Rubber and Nihon Plast. It also argued that statement D69 showed that in the automotive sector there was at least an implicit confidentiality agreement until a sale occurred. There was also no declaration from any airbag module manufacturer stating that a confidentiality agreement did not exist.
2.2.1 The Board does not find these arguments convincing. The cargo receipts D5 and D46/D46a show that several deliveries of large quantities of base fabric from the warehouse to Seiren Aucus (an airbag producer) among other recipient airbag producers took place as early as April 2008 (the priority date of the contested patent being 23 August 2010). Although no purchase receipts were filed demonstrating a money transaction had been made, the Board finds that the large quantities of fabric delivered could not reasonably have been supplied and used only for prototypes and pre-series runs and that the deliveries were thus at least meant to be used for the commercial serial production of airbag modules, not least due to the regular transactions which occurred between the companies. Although the proprietor suggested that the recipients could perhaps have been stockpiling, the large amounts and repeated regular deliveries to several companies goes against any such conclusion being reached, and even more so when considering normal commercial practice.
2.2.2 In such a serial production phase of the airbags, the Board also cannot see any plausible reason for the companies involved to have had a secrecy agreement, since the airbags were destined to be mounted on production vehicles and sold to third parties/end customers which are under no secrecy obligations concerning the vehicle or its components.
2.2.3 Turning to the declaration D69 which the proprietor used as evidence to show that implicit secrecy was normal in the automotive industry, this states in paragraphs 8 and 9 that "airbag base fabrics are handled under implicit secrecy obligations" and that "its technology was not made freely available at any stage".
However, D69 includes the explanation in paragraphs 11 to 13 that "airbags and their properties are not publicly known", that "it is not normal for customers to disassemble an airbag" and that "once an airbag module is obtained in the market, the public cannot access, let alone analyse, the base fabric for the airbag in the airbag module" and that for these reasons "the technology for a base fabric for an airbag in the automotive industry is under implicit secrecy and is even more so not made freely available at any stage", the latter expression being the same as used in paragraphs 8 an 9.
By stating in paragraph 12 that the technology of an airbag obtained in the market and thus in possession of the public is "under implicit secrecy and not made available at any stage" shows that the declarant is not aware of the conditions for public availability which are applied in the Boards case law, where it is not necessary to prove that an analysis of an airbag module has actually been carried out, but only that the airbag module has been made accessible to persons who are not bound to any secrecy agreement regardless of the technical skills required to do such an analysis.
2.3 The Board thus finds that the base fabric LTA203LS that had been shipped from the warehouse to several airbag module manufacturers for serial production since April 2008 was made available to the public before the priority date and constitutes prior art under Article 54(2) EPC.
3. Main request - Article 56 EPC
3.1 The proprietor did not contest that the two samples "Product A-(A)" and "Product A-(B)" of the prior use A sent to the Fukui Test Center and discussed in D6/D6a were from the base fabric LTA203LS. The Board also sees no reason to conclude otherwise.
3.2 It was also not contested by the parties that Table (2) on page 3 of D6a shows that Product A-(B) is a base fabric comprising all the features of claim 1 of the main request with the exception of the features:
- a boiling water shrinkage percentage of 7.3 to 13% is used as the yarn for weaving the fabric [feature (2.2) according to the claim breakdown presented by the opponent on page 3 of its reply to the proprietor's grounds of appeal], and
- the strength of the multifilament synthetic yarn is 7.5 cN/dtex or more on average of warp and weft [feature (6) according to the same claim breakdown mentioned above].
The parameter boiling water shrinkage (BWS) of the yarn used for weaving the fabric
3.3 The proprietor argued that BWS defined in feature (2.2) of the claim was a limiting and distinguishing feature of the product, in that BWS of the yarn used for constituting the fabric was an important parameter that affected the mechanical properties of the resulting woven base fabric independently of the other process parameters applied, as seen in D27. According to the proprietor, although the BWS of the original yarn could indeed not be reverse-engineered ("unshrunk"), this did not change the fact that the BWS became a property of the base fabric since it was an intrinsic property of the yarn that had an effect on the final product.
3.4 The Board does not find these arguments convincing. The influence which BWS of the raw yarn has on the properties of the final, i.e. heat-treated, fabric is inextricably linked to the processing parameters, such as the temperature and the duration of exposure to that temperature, the presence of water or dry heat, to the number of heat treatment steps and the presence or absence of mechanical restrictions against shrinkage imposed on the fabric during heat treatment.
Example 1 and comparative examples 4 and 5 of D27 disclose that the BWS of the yarn might have an effect on the properties of the base fabric (see example 1 and comparative example 4 which differ solely on the BWS), namely that it affects the deployment speed and the restraint time. However, these effects are not inextricably linked to the BWS and can be also obtained e.g. by changing the heat-set conditions, as seen for example in comparative example 5 of D27. The claim would thus have to include all the process parameters required for unambiguously defining the product of such processes in a way which is limiting for the product of the claim.
3.5 The range of BWS of the raw yarn defined in feature (2.2) cannot be directly linked to one or several technical product properties of the final fabric with constituent yarns in the sense that measurement of a distinct and identifiable fabric parameter could lead to a conclusion about the original BWS of the raw yarn.
Without a direct unequivocal relationship between a property of the fabric and the BWS of the raw yarn, it is also not possible to establish the BWS of the raw yarn from the woven fabric.
3.6 Therefore, although the BWS of the raw yarn may have a potential effect on the properties of the final fabric, the BWS shrinkage of the original raw yarn is no longer an identifiable feature present in the fabric (i.e. the yarns of the fabric have already been shrunk and woven) and thus cannot (retroactively) constitute a limiting feature of the final fabric which is the subject-matter of claim 1.
3.7 Feature (2.2) will thus not be taken into into consideration for the assessment of inventive step.
Prior use A-(B) in combination with common general knowledge/D31
3.8 For the assessment of inventive step it is therefore only relevant that prior use A-(B) differs from the subject-matter of claim 1 by feature (6), i.e. the strength of the multifilament synthetic yarn is 7.4 (instead of 7.5) cN/dtex or more on average of warp and weft.
3.9 During the oral proceedings before the Board, the proprietor referred inter alia to selected passages of D33a, D34 and D35 in its argument about which objective technical problem was being solved when applying the problem/solution approach starting from the prior use A-(B). However, since these documents and the cited passages were mentioned for the first time during the oral proceedings, these constitute late-filed facts which involve a change of the proprietor's appeal case. The opponent also objected that there was no cogent reason to have waited until the oral proceedings to rely on such evidence and that it had no time to study the documents and prepare a reasoned response. Indeed, no cogent reasons were given by the proprietor as to why it had waited with such facts and arguments until the oral proceedings. Instead the proprietor argued that it was simply referring to what it considered to be common general knowledge. In the absence of cogent reasons for the late citation of these documents and the particular extracts from these, and noting the opponent's objection to their introduction, the Board exercised its discretion under Article 13(2) RPBA 2020 not to take D33a, D34 and D35 as well as the corresponding arguments involving these documents into account.
3.10 The proprietor argued that this feature had the effect of allowing a faster deployment speed. As could be derived from paragraphs [0001], [0002], [0003], [0006], [0015] and [0019] of the patent specification, curtain airbags were placed in a different location of the car much closer to the occupant and needed to deploy faster than "normal" airbags (in around 20 instead of 50 ms), i.e. airbags mounted in the dashboard for frontal impacts.
The Board does not find these arguments persuasive. Whilst the patent discloses in the referenced paragraphs that curtain airbags are required to deploy at higher speeds (see for example paragraph [0006], lines 46 and 47), none of the features defined in claim 1 of the main request restricts the subject-matter of claim 1 to a curtain airbag.
3.11 Further, under the problem-solution approach the objective problem is usually established by identifying the technical effect(s) resulting from the differing feature(s) in relation to the closest prior art and formulating the corresponding technical problem(s). In the present case, the Board sees no reason to deviate from this practice.
3.12 Increasing the strength of the multifilament synthetic yarn in relation to the airbag of the prior use A-(B) is seen as increasing the tenacity of the base fabric. This is also confirmed by paragraph [0029] of the patent specification. The resulting objective technical problem is thus seen as being the provision of an alternative tenacity that also endures the stress at the deployment of the airbag.
3.13 The proprietor argued that this resulted from applying an ex post facto analysis and, citing the Case Law Book, sections I.D.9.11 and III.G.5.1.2 b) and T 97/00, considered that this problem was not credible and that it was for the proprietor to present the objective problem and its effects. Comparative examples 3, 5, 8 and 9 of the patent showed that the airbag could still break with base fabrics having a strength of the constituent yarn above 7.5 cN/dtex or more on average of warp and weft. It was the combination of all features of claim 1 that was required to achieve the desired effect of a faster deployment.
The Board does not find any contradiction between its reasoning regarding the objective problem above and the cited passages of the Case Law book and T 97/00 and does not take issue with the process claimed leading to the advantageous effects mentioned in the patent and cited by the proprietor.
Specifically, the Board does not dispute that the airbags of the comparative examples 3, 5, 8 and 9 broke despite having a strength of the constituent yarn above 7.5 cN/dtex or more on average of warp and weft.
As stated in paragraphs [0044], [0046], [0048] and [0049] of the patent, if the single filament fineness of the original yarn or total fineness of the constituent yarn is small or the pullout resistance is too large, the airbag may still break. Since other parameters may possibly lead to the rupture of the airbag, a strength of the constituent yarn above 7.5 cN/dtex does not provide the effect of avoiding an airbag rupture. This effect is also not part of the objective problem discussed above under item 3.12.
However, the same applies to the possible objective problem of having a faster deployment suggested by the proprietor. The Board does not dispute that a fast deployment results from the combination of at least several (if not all) parameters mentioned in the patent. However, this is more of a "general purpose" applicable to the patent and indeed of airbag base fabrics and not the specific effect of increasing the strength of the constituent yarn to above 7.5 cN/dtex envisaged in the patent specification (see paragraph [0029]).
The objective technical problem discussed in item 3.12, whilst less ambitious, does not provide any pointer to the solution, such that it does not arise from any the benefit of hindsight knowledge of the invention.
Moreover, no specific effect has been disclosed for the particular value of 7.5 cN/dtex and it is, as the opponent argued, seemingly only one of the possible values that the strength of the constituent yarn may have to endure the stress at the deployment of the airbag. Thus the value of 7.5 also does not imply any particular boundary where a different effect might occur and can not be regarded as anything more than an arbitrary selection among possible appropriate values.
3.14 Wanting to provide an alternative tenacity that endures the stress at the deployment of the airbag, the skilled person would find it obvious to increase the strength of the constituent yarn to above 7.5 cN/dtex or more on average of warp and weft in order to solve the problem posed. The translation D31a of excerpt of the textbook D31 also refers to the fact that a "woven fabric is broken when its constituting yarns are broken" such that it is self-evident that increasing the strength of the constituent yarns would provide an alternative tenacity that also endures the stress at the deployment of the airbag when starting from one which already has this capability. In the same way, increasing it to above 7.5 cN/dtex (e.g. to a value of 7.6 cN/dtex or above) would likewise be expected to produce the required tenacity.
3.15 As discussed above under item 3.13 and argued by the proprietor, other parameters may lead to the airbag breaking even with an increased strength of the constituent yarn. However, the Board finds that, starting from a strength of the constituent yarn of 7.4 cN/dtex of the prior use A-(B), the skilled person knows that an increase of one tenth cN/dtex (from 7.4 to 7.5) is very small in the sense that this change alone would not change the other parameters of the base fabric to any noticeable extent nor affect the performance of the base fabric noticeably, for example by increasing the deployment time as the proprietor argued. Indeed, no evidence was provided that such a small change would have any such effect, nor is it credible that this would be the case.
3.16 The skilled person starting from the prior use A-(B) and seeking an alternative tenacity would thus increase the strength of the constituent yarn to e.g. 7.5 cN/dtex (or more) and arrive at the subject-matter of claim 1 without exercising an inventive step.
3.17 For the reasons stated above, the subject-matter of claim 1 does not involve an inventive step. The main request is therefore not allowable.
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