T 0921/90 14-04-1992

1. Admissibility of the appeal

The appeal complies with Articles 106 to 108 and Rule 64 EPC and is admissible.

2. Amendments of Claim 1

2.1. Before grant (Article 100(c))

In the application as filed, the user support (15) was described in Claim 1 as "connected to" the frame and the apparatus was characterised in Claim 6 by coupling means for "detachably coupling" said user support (15) to said frame.

The term "connected" is general and does not exclude any means of connection; moreover, the fact that claim 6 specifies that the means are detachable clearly shows that the term "connected" of Claim 1 covers both detachable and non-detachable coupling means.

In addition, it should be noticed that in the description of the application as filed (see page 4, lines 2 and 3 respectively 9 and 10) it is explicitly described that the socket member 13 is "secured" to the main beam and that the bench 17 is "securely pinned or bolted" to the socket member (see also the patent specification, column 4, lines 39 and 40 respectively 49 and 50).

Consequently, it appears clearly allowable to replace the general term "connected to" by the more restrictive "firmly attached" which is to be read as "securely connected to" in the light of the description, and thus to refer to the fixed angular relationship between the user support (15) and the frame (1) when the latter is configured for upright use (see Appellant's letter dated 4 June 1986). Claim 1 as granted has not been inadmissibly amended in contravention of Article 123(2) as objected to by Respondent 01 but on the contrary its subject-matter has been restricted in comparison with that of the original Claim 1 and remains in the content of the application as filed.

2.2. After grant (Article 123(2) and 3))

It is clear from the description and the drawings of the application as filed that the apparatus according to the invention is capable of being used in both the horizontal and vertical positions and not only in just one of them. Consequently, the replacement of the term "or" by "and" on line 3 of Claim 1 is justified and restricts the scope of the protection since an alternative is suppressed.

As described and represented on the drawings the apparatus comprises two pivoted movable levers, a left one and a right one and in Claim 1 of the application as filed, "at least" one handle was claimed. Therefore, to return to the text as originally filed is not objectionable in view of Article 123(2). Since, in the light of the description, the term "a" could not have been any way interpreted in the sense of "only one", this amendment also does not contravene Article 123(3).

The replacement of the term "by" by "on" clarifies the type of support the apparatus is provided with, said support being described as a "bench" (see col. 4, lines 48 and 53 and col. 5, line 10) i.e. a support for taking downwardly the weight of the user (see also Fig. 6a to d). The corresponding amendments have been made in the description to adapt it to the claims.

The Board is satisfied that none of the above-mentioned amendments contravenes Article 123(2) and (3) EPC.

3. Interpretation of Claim 1

In the context of the description, the following expressions should be interpreted accordingly:

3.1. Capable of use: Applied to an exercising apparatus, this expression clearly means "capable of being used in a normal, stable and secure way while generally recognised exercises are being performed on it".

3.2. "User support" (lines 54-56 and 60) This support is described as a bench in the specification (cf. col. 4, lines 48, 53, 58, 61 and col. 5, line 10) and it is clear from the Figures 2, 3 and 6a-e that the function of this element is to support from underneath the user sitting, lying or standing on it.

3.3. "Substantially perpendicular" (line 57)

This expression means that the user support is attached to the apparatus so as to extend in a direction making an angle of 90° with the frame with the usual manufacturing tolerances generally accepted on this type of apparatus or so near to 90° that the intended result is still obtained, viz. so that the user support allows use of the apparatus in an upright position in a normal, stable and secure way.

3.4. "during exercise" (line 61) It is clear from the description that the apparatus according to the invention is adaptable so that a range of different exercises are possible (cf. col. 2, lines 35-39) when the frame is upright (cf. Figs. 6a-d). The expression "during exercise" is therefore to be interpreted as "while exercising" i.e. when performing a range of conventional exercises and not only a specific one.

4. The public prior use

It cannot be contested that in the autumn of 1980, i.e. prior to the priority date of the European patent, document D1 made available to the public an hydraulic rower represented in a horizontal position on the three corresponding photos of the catalogue.

According to the short accompanying description, this prior apparatus comprises a padded footrest that doubles as a back rest and it can be seen on the photos that short legs substantially perpendicular to the frame are provided at both ends of the rowing board.

The photos of document D1 also clearly show that the footrest/backrest is not perpendicular to the rowing board but has some inclination thereto.

Concerning now the question of whether or not the use of this piece of apparatus in an upright position has been made available to the public at the relevant date, it has been established that there is no prepublished record, in the form of photographs or manuals showing the so-called Beacon 3002 rower for use in the upright position and there is also no written description of such use.

The only indications in favour of the existence of such a use come from documents D2, D3 and D10 wherein the authors, John Kucera and Leonard Weiss, both contend that the Beacon 3002 apparatus put on sale through document D1 was indeed demonstrated in the upright position in the autumn of 1980 before themselves and Eugene Weiss and Carl Stroh.

Nevertheless, it should be borne in mind that long intervals of time (5 years and 9 years respectively) took place between the alleged demonstration and the deposition of the witnesses (see documents D2, D10 and D3 respectively) and that meanwhile the witness had the opportunity of seeing an embodiment of the apparatus according to the impugned patent at the Chicago Show in 1983 (see document D6, paragraphs 12 and 14). Moreover, on page 55 of document D5 it is stated that Carl Stroh, who was designated as witness by Leonard Weiss in his deposition (see pages 48 and 50) could not recollect the exercising apparatus being demonstrated in a vertical position and, in paragraph 10 of document D6, Eugene Weiss also designated as witness by Leonard Weiss explicitly stated that he did not recall any form of vertical demonstration of the Beacon 3002 apparatus to John Kucera or anybody else. Indeed, he went further to say "Had it happened I would have certainly remembered because it would have been something different and new - it would have been an additional feature of importance".

The above-mentioned considerations and contradictory allegations must be considered by the Board, and weighed against the depositions of John Kucera and Leonard Weiss. They introduce into the proceedings such a high degree of uncertainty that the Board cannot consider the alleged prior use in a vertical position as being sufficiently proven to be taken into consideration when considering the patentability of the subject-matter of the impugned patent.

5. The state of the art (Article 54(2))

In the present case, the state of the art taken into consideration by the Board is thus composed by the teaching of all the patents and brochures cited during the proceedings and in particular documents D1, D8 and D9 but not by the alleged prior demonstration of the Beacon 3002 apparatus in the upright position.

6. Novelty

The main objection raised by the Respondents against the grant of the impugned patent is lack of novelty against the Beacon 3002 apparatus depicted on document D1.

The Board cannot follow this argumentation for the following reasons:

6.1. It appears clearly from the photos of document D1 that the backrest is not "substantially perpendicular" to the frame as specified in Claim 1 within the meaning given in section 3.3 above, but extends obliquely thereto. Indeed, the backrest/footrest must be inclined (at 116° or 64°) to perform its proper function.

For this first reason alone the subject-matter of Claim 1 is already to be considered as novel compared to the Beacon 3002 apparatus depicted in document D1.

6.2. Moreover, as already stated under section 4, document D1 gives absolutely no indication or hint which suggests that the Beacon 3002 apparatus can be used in another position other than the horizontal one. This known machine looks like a usual rowing apparatus whose usual working position is having its frame substantially parallel to the floor (see photos). This is confirmed by the fact that it comprises supporting feet perpendicular to its frame; since supporting feet are generally oriented substantially vertically, the normal position of the frame presumably should be horizontal.

The provision of a cushion on the footrest is justified by the fact that it has also the second function of a backrest; the interpretation according to which it can be used as a support in the sense of the invention (see section 3.2) is not supported by any indication and appears to be the result of ex post facto analysis.

Consequently, nothing in document D1 permits the conclusion that the Beacon 3002 apparatus has been designed for use in both the horizontal and vertical positions and even if it can be used in these positions, the Respondent failed to prove that it is capable of such a use in the meaning of the invention (see section 3.1 above).

6.3. Finally, document D1 gives no indication that the footrest/backrest of the known apparatus is a support in the meaning of the invention (see section 3.2).

Therefore the exercising apparatus called "Beacon 3002" depicted in document D1 does not destroy the novelty of the subject-matter of Claim 1. Since among the other cited documents, none of them discloses in combination all the features of Claim 1, its subject-matter should be considered as novel in the meaning of Article 54(1) EPC.

7. The closest state of the art

7.1. Since the Beacon 3002 apparatus is not capable of use in horizontal and vertical positions (see above section 6.1) in the sense of the invention, document D1 does not appear to describe the prior state of the art closest to the invention.

Such prior art can only be found in documents such as D8 and D9 concerning apparatuses expressly designed to be used horizontally as a rowing machine and vertically for performing other exercises and, among these documents, D8 appears to describe the closest prior art.

The apparatus according to Claim 1 differs from it in that it is free-standing in both horizontal and vertical positions and not only in the horizontal one; in that it comprises at least a pivotable resisting lever instead of a system of springs, cables and pulleys; and in that means for bracing the user's feet are provided together with a user support firmly attached to the frame in a perpendicular direction.

8. The problem and the solution

When starting from the above-mentioned closest prior art, the problem to be solved by the person skilled in the art appears to be as set out in column 2, lines 35-39 of the patent. That is, the provision of a simple and compact exercising apparatus which is adaptable so that a range of different exercises including rowing exercises are possible with one machine.

The Board is satisfied that the subject-matter of Claim 1 solves the said problem.

9. Inventive step

It should be noticed and emphasised first that absolutely no hint can be found in the background art for using an exercising apparatus in a free-standing upright position. According to the teaching of all the cited documents, the training apparatus should be used either lying on the floor for use in the horizontal position or fixed on a wall (see documents D8 and D9) for use in the upright position. A priori, it seems unthinkable to use such an exercising apparatus vertically without being fixed when consideration is taken of the not inconsiderable forces exerted by the user on the machine.

Consequently, alone the idea of using a free-standing apparatus in the upright position is already indicative of an inventive step per se.

Moreover, it is to be noticed that the known versatile training apparatuses capable of being used in an upright position are usually equipped with sets of tension springs and cables (see documents D8 and D9). The use of pivoted movable levers appears to be reserved for conventional rowing apparatuses lying in a horizontal position and to combine resisting pivoted levers to a free-standing frame is suggested nowhere in the prior art. Such a combination contrary to the teachings of the background art documents thus implies also an inventive step per se.

Finally, to provide a user support firmly connected perpendicularly to the frame so that the user's weight can be used to stabilise the apparatus during exercising in the upright position is suggested in none of the documents cited during the proceedings. On the contrary, as already mentioned above, according to the teaching of the documents relating to vertically used training apparatus, the stabilisation of the device is obtained through the fixing means of the frame to the wall. In the absence of any hint in the prior art, it would not be obvious for the skilled person to abandon said conventional attaching means and to use the user's own weight for stabilisation.

The aforementioned reasons lead the Board to the conclusion that the subject-matter of Claim 1 implies an inventive step in the sense of Article 56 EPC and is patentable according to Articles 52 and 102(3) EPC.