T 1684/21 - To encourage the others

Key points

• The Board finds that claim 1 as granted does not meet Article 83 EPC.
• "In the Board's view the skilled person would not be able to implement feature (i) ("an air flow whose temperature has been regulated by an evaporator (4) and a heater (5)"), for the following reasons."
• The feature "requires that the evaporator and the heater regulate the temperature of the air flow. This means that both the heater and the evaporator are operated and controlled in such a way that a desired temperature variation occurs"
• The patent teaches in para. [0031] to use an air-mix damper to regulate the temperature. This unit is, however, not specified in the claim.
• "the skilled person would face the task of putting into effect an HVAC (according to claim 1) including feature (i) implying that the air flow temperature is regulated by the evaporator and the heater, not necessarily including an air-mix damper."
• "The skilled person, however, would not find in EP-B any indication, guidance or instruction as to how feature (i) is to be implemented when the air flow temperature is regulated only by operating and controlling an evaporator and a heater. The specific embodiment disclosed in EP-B and discussed above does not give the skilled person any suggestions or hints leading to a solution of this technical problem, the air-flow temperature regulation by means of an air-mix damper being based on entirely different principles as already noted hereinbefore."
• I can't judge the technical merits of the Board's reasoning. That's not the point of this post.
•  Claim 1 of auxiliary requests 4, 5, 6 and 7 differs from claim 1 of the main request, [by specifying]  "simultaneously so as to guide the temperature-regulated air to the side demister channels (31), and an air mix damper (6) arranged between the evaporator (4) and the heater (5)"."
• " The Board did not admit auxiliary requests 4 to 7 into the appeal proceedings, since these requests were filed at a late stage in the proceedings, i.e. after the communication of the Board pursuant to Article 15(1) RPBA 2020 (Rules of Procedure of the Boards of Appeal), and such late filed requests can only be admitted under exceptional circumstances (Article 13(2) RPBA 2020)."
• " the Respondent [proprietor] could and should have submitted auxiliary requests 4 to 7 at the latest with its reply to the statement of grounds of appeal. No exceptional circumstances can be identified and invoked in the present case".
• The patent is revoked.
  
  
• This seems a strict but not unusual application of Article 13(2) RPBA. Probably, admitting the request would have necessitated a whole round of debate on novelty and inventive step late in appeal. 
  
  
  
• Incidentally, claim 1 reads - note the very long preamble: "A vehicle heating ventilation and air conditioning unit (1) that is configured so as to selectively blow out an air flow whose temperature has been regulated by an evaporator (4) and a heater (5) mounted in an air channel from a DEF blowing channel (17), a face blowing channel (16), and a foot blowing channel (18), which are provided downstream of the evaporator (4) and the heater (5), into a cabin by opening and closing a DEF damper (8), a face damper (7), and a foot damper (9), the vehicle heating ventilation and air conditioning unit comprising: side demister channels (31) ... and plate-like baffle ribs ". 
• The functional feature was hence located in the claim preamble and not a functionality of the claimed air conditioning unit itself but of the "surrounding" heater and evaporator (as I understand it). 
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t211684eu

1. The appeal is admissible.

2. The subject-matter of granted claim 1 (main request) in conjunction with the disclosure of the invention in EP-B does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art (Article 83 EPC).

In the Board's view the skilled person would not be able to implement feature (i) ("an air flow whose temperature has been regulated by an evaporator (4) and a heater (5)"), for the following reasons.

It is first noted that said feature (in conjunction with the further features of claim 1) is clear in itself and requires that the evaporator and the heater regulate the temperature of the air flow. This means that both the heater and the evaporator are operated and controlled in such a way that a desired temperature variation occurs.

Further, even if the claim's wording does not exclude that an air-mix damper may be included in the claimed device (HVAC), nevertheless the claim's wording does not require so, as also confirmed by the Respondent's submissions. Hence, the skilled person would face the task of putting into effect an HVAC (according to claim 1) including feature (i) implying that the air flow temperature is regulated by the evaporator and the heater, not necessarily including an air-mix damper.

This is in agreement with the legal requirement, that an embodiment which is clearly and evidently encompassed by the claimed subject-matter must be sufficiently clearly and completely disclosed for the skilled person to be able to carry it out.

As emphasized by the Appellant, feature (i) stipulates that air flow temperature regulation is achieved inter alia solely by appropriately operating and controlling the evaporator and the heater, this being based on principles and representing a technical teaching totally different from an air flow temperature regulation involving an air-mix damper, as disclosed in paragraph [0032] of EP-B. According to this specific embodiment in EP-B, the air flow temperature is regulated by the air-mix damper's 6 position, which can be selected anywhere between a maximum cooling position and a maximum heating position (see EP-B, paragraph [0032]).

The skilled person, however, would not find in EP-B any indication, guidance or instruction as to how feature (i) is to be implemented when the air flow temperature is regulated only by operating and controlling an evaporator and a heater. The specific embodiment disclosed in EP-B and discussed above does not give the skilled person any suggestions or hints leading to a solution of this technical problem, the air-flow temperature regulation by means of an air-mix damper being based on entirely different principles as already noted hereinbefore.

This deficiency likewise cannot be remedied by referring to the skilled person's common general knowledge, as no evidence for such a common general knowledge was provided and adduced by the Respondent and no prior art document corroborating this assumption was likewise submitted.

Moreover, it is not plausible, as submitted by the Respondent, that in principle air flow temperature regulation could be implemented by manually switching on and off the evaporator and/or the heater. Indeed, in the first place such a solution could not be possibly implemented in state of the art HVAC systems at the priority date of the contested patent, since in such modern vehicles air flow temperature regulation and control is fully automated.

There is also no suggestion and no evidence in the cited prior art or on the basis of (proven) common general knowledge that an automated air flow regulating process could be put into effect, based merely on switching on/off the evaporator and/or the heater, and that it could give satisfactory results in terms of a desired and sufficiently accurate and predictable temperature variation (even though not leading to a precisely predetermined temperature), as well as in terms of technical feasibility, efficiency and effectiveness, let alone that such satisfactory results could be obtained by a purely manually operated system.

Finally, it also cannot be similarly derived from common general knowledge that merely by regulating the cooling degree (or power) of the evaporator and/or the heating degree (or power) of the heater the aforementioned satisfactory results could be obtained.

In summary, the complete absence of any guidance, indication, suggestion or instruction in the disclosure of EP-B concerning the implementation of said feature (i) cannot be compensated by the common general knowledge of the person skilled in the art, since no evidence for such common general knowledge was provided.

For the above reasons it is concluded that the subject-matter of claim 1 in conjunction with the disclosure of EP-B does not disclose the invention in a manner sufficiently clear and complete for the skilled person to be able to carry it out.

3. The same reasons as above apply for auxiliary requests 1 to 3, which all fail to comply with the requirements of Article 83 EPC.

4. The Board did not admit auxiliary requests 4 to 7 into the appeal proceedings, since these requests were filed at a late stage in the proceedings, i.e. after the communication of the Board pursuant to Article 15(1) RPBA 2020 (Rules of Procedure of the Boards of Appeal), and such late filed requests can only be admitted under exceptional circumstances (Article 13(2) RPBA 2020).

The Respondent, however, did not provide valid reasons why such exceptional circumstances would arise in the present case. In effect, the Appellant clearly and explicitly detailed in its statement of grounds of appeal the reasons why it considered that the invention was not sufficiently clearly and completely disclosed in EP-B, these reasons being the same as already submitted during opposition proceedings. In particular, the Appellant clearly and unequivocally specified that its objections were submitted on the grounds of Article 83 EPC and could not be considered as relating to Article 84 EPC, as it was in its opinion erroneously decided by the Opposition Division in the appealed decision.

Therefore, the Respondent could and should have submitted auxiliary requests 4 to 7 at the latest with its reply to the statement of grounds of appeal. No exceptional circumstances can be identified and invoked in the present case, as the Board's communication merely informed the Respondent that the Board shared the Appellant's view, in that the question to be answered was whether the subject-matter of granted claim 1 complied with the requirements of Article 83 EPC and not whether it complied with the requirements of Article 84 EPC. Thus, the Board's communication could not possibly surprise the Respondent, for the Board's preliminary opinion on said specific issues merely reflected the Appellant's view.

As to the changes or amendments concerning the Rules of Procedure of the Boards of Appeal, which allegedly occurred at the time of filing the auxiliary requests, the Board notes that the Respondent's reply to the statement of grounds of appeal was filed on 1 April 2022, which is well after said changes occurred.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The European patent is revoked.