T 0130/89 (Profile member) of 7.2.1990

European Case Law Identifier: ECLI:EP:BA:1990:T013089.19900207
Date of decision: 07 February 1990
Case number: T 0130/89
Application number: 80106683.8
IPC class: E06B 3/26
E06B 3/30
Language of proceedings: DE
Distribution:
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Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: DE | EN | FR
Versions: OJ
Title of application: -
Applicant name: Kömmerling
Opponent name: Hüls; Atochem
Board: 3.2.02
Headnote: The use of a known material on the basis of its known properties and in a known manner to obtain a known effect in a new combination is not normally inventive ("similar use"). Exceptions to this principle may be allowed in special cases, e.g. where a selection brings unexpected advantages, a known prejudice is orvercome or unforeseen difficulties are encountered, such as the need to alter another component.
Relevant legal provisions:
European Patent Convention 1973 Art 56
Keywords: Inventive step (no)
Two partial problems technically independent of each other
Inventive step - similar use
Catchwords:

-

Cited decisions:
-
Citing decisions:
T 0213/87
T 0398/89
T 0065/90
T 0173/90
T 0880/92
T 0615/93
T 0687/94
T 0009/95
T 0052/97
T 0080/98
T 0083/98
T 0127/99
T 0357/00
T 1216/05
T 0558/06
T 0330/07
T 1506/07
T 1535/08
T 2110/08
T 0422/09
T 2083/09
T 1574/11
T 0020/15

Summary of Facts and Submissions

I. European patent No. 0 028 775 comprising eleven claims was granted on 29 February 1984 in respect of the subject-matter contained in European patent application No. 80 106 683.8 filed on 30 October 1980.

II. Notices of opposition to the patent as granted were filed by the respondents in the present case (opponents 1 and 2), requesting that the patent be revoked on the ground that its subject-matter was not patentable. In their statements, they referred inter alia to the following documents: D1: DE-A-2 558 450 D2: DE-A-2 246 679 D3: DE-A-2 613 411

III. The Opposition Division revoked the patent in a decision dated 18 October 1988 and posted on 14 November 1988, on the ground that its subject-matter did not involve an inventive step within the meaning of Article 56 EPC vis-à-vis documents D1, D2 and D3.

IV. The appellants (patent proprietors) lodged an appeal against that decision on 13 January 1989, paying the fee for appeal at the same time. The written statement setting out the grounds of appeal was received on 21 March 1989. By letter of 17 April 1989 the appellants submitted a new set of claims (Claims 1 to 5).

The new Claim 1 reads as follows:

"A profile member for the outer and inner frames of external windows or doors, consisting of a hollow metal profile member (5) surrounded on all sides by an extruded casing of rigid PVC integral skin foam (4, 22) which is intimately bonded to it and has an almost non-porous to completely non-porous integral skin at the outer (2) and inner (3) surface, characterised in that

(a) the integral skin is reinforced - only at the surface visible from the outside and preferably also from the inside when the casement or leaf is closed - by a thin layer (7, 15, 26, 32, 37) of non-porous, rigid thermoplastic compact PVC material which is applied round the edges, is co-extruded with and intimately bonded to the integral skin foam (4, 22) and under which the integral skin (2) is thinner, and in that

(b) the layer (7, 15, 26, 32, 37) of rigid PVC material at the outer exposed face

(b1) is wood-coloured,

(b2) has a wood-like profile with a profile depth of 0.04 to 0.3 mm, and

(b3) is provided with coats of coloured primer (6) to obtain a decorative wood-grain effect and with top coats of varnish (6)."

V. Oral proceedings were held on 7 February 1990, at which the appellants maintained and the respondents denied that the subject-matter of the new Claim 1 was patentable. The appellants claimed inter alia that

- the problem itself contributed to the inventive step and was solved by the combined effect of all the features mentioned in Claim 1;

- the selection of the layer material was inventive;

- to further reinforce, with an additional layer, an integral skin that had already been reinforced was not obvious, and

- the process according to Document D2 could not be used for PVC foam extrudates.

VI. The appellants request that the contested decision be set aside and the patent be maintained on the basis of Claims 1 to 5 filed by letter of 17 April 1989. Both respondents request that the appeal be rejected.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments ... All the amendments therefore meet the requirements of Article 123 EPC.

3. Novelty ...

4. Closest prior art

The Board agrees with the parties that the closest prior art is that contained in Document D1 and referred to in the preamble to Claim 1.

5. Problem and Solution

5.1 It appears that profile members according to Document D1, consisting of a hollow metal profile member surrounded on all sides by an extruded casing of rigid PVC integral skin foam intimately bonded thereto, easily become unsightly, particularly round the edges, through rough handling - especially on building sites - despite the relatively hard outer layer. Also, according to the patentee, it was clear from the surface that they were plastic and the aesthetic effect of using plastic members of this kind for doors or windows was a disadvantage.

5.2 The patent proprietor also emphasised during the oral proceedings that it was difficult to emboss an integral skin for decorative purposes and that it was an advantage to have a two- colour profile member (white inside and wood-coloured outside).

5.3 The disadvantages of the profile member known from Document D1 raise the problem of altering the generic profile member so that the PVC integral skin foam round the edges of the exposed and visible parts is more impact-resistant (the first part of the problem) and also the ugly plastic look is avoided, at least on the outer exposed surface of the member (the second part of the problem).

5.4 These disadvantages and the resultant problem (or problems) are obvious and directly identifiable for a person skilled in the art, and the Board of Appeal cannot therefore share the patent proprietor's view that the problem had not previously been recognised and so could contribute to an inventive step. Both parts of the problem are merely self-evident requirements that any skilled person would make of such profile members.

5.5 This problem is solved to the Board's satisfaction by the subject-matter of Claim 1. In particular, the features grouped under (a) ensure that the areas at risk are reinforced and the features grouped under (b) improve the aesthetic appearance. The Board cannot agree with the comment made by opponent 2 during the oral proceedings that the PVC integral skin foam as such was not reinforced and the problem was therefore not solved, since the problem is not to be understood in a strict literal sense but in the spirit of the overall content of the patent.

5.6 The patent proprietor claimed that, contrary to the view taken by the opponents, there is only one problem involved here and the two results to be achieved (the mechanical treatment and the decorative design) are linked because the additional PVC layer applied to reinforce the profile also makes it easy to emboss the profile and apply the primer and top coats of varnish.

5.7 The Board of Appeal cannot agree with this view. The problem to be solved consists objectively of two technically independent parts, one of which (part 1) is to do with impact-resistance (mechanical treatment) and the other (part 2) with decorative design. It is not disputed that the first part of the problem is solved only by the features grouped under (a) in Claim 1 (that is, by the additional layer) and that the features grouped under (b) (the decorative design) in no way contribute to the mechanical treatment. It is also not disputed that the second part of the problem is solved only by the features grouped under (b). True, the decoration is applied by colouring and embossing a profile and applying coats of varnish to the layer needed for reinforcement (one of the features grouped under (a)), but that does not alter the fact that there is no combined effect in the sense of a functional interaction between the two groups of features. On the contrary, they are quite separate from each other. Of course, the solution of the second part of the problem requires that the reinforcing material selected be one to which colouring can be applied, but the material does not contribute to the aesthetic effect as such. In fact there is no discernible combined effect which is greater than the sum of the two separate effects and therefore surprising. And it is obvious that the measures necessary for decorative purposes must be taken on the outer face of the profile, either on the original basic profile (in this case the integral skin, where the reinforcing layer is not applied) or on the additional reinforcing layer (where it is), and merely applying it to the reinforcing layer cannot therefore be regarded as having an effect over and above that of the application itself.

6. Inventive step

6.1 Since no combined effect can be claimed as evidence of inventive step it must be seen whether the two groups of features, taken separately, are derived in an obvious way from the prior art. In considering the independence of the measures or components (in this case: plastic and pigment) by which two effects are obtained, it is usual to examine the various documents involved separately.

6.2 The first part of the problem (impact-resistance)

6.2.1 Document D2 describes a process and apparatus for extruding coated moulding profiles, preferably of thermoplastic plastic materials, whereby both an extruded moulding profile and an extruded coating on at least part of that profile can be produced in a single operation (Claim 1; page 1 - hand numbering page 6, penultimate paragraph; Fig. 10). The coating allows various properties of the basic material to be improved, for example the resistance to mechanical stress, the visual impression of the surfaces and the colouring. It also appears from page 2, lines 10 to 15 (hand numbering page 7) that a combination of working materials for a moulding profile made of shock-proof PVC with a layer of PMMA has already been used for window profiles and that this combination of working materials has excellent adhesive properties. And it is clear too from the same page (lines 20 to 23) that the surface of foam extrudates can be covered and thus upgraded by this process (simultaneous extrusion).

6.2.2 Thus a skilled person could find the idea of applying an additional reinforcing layer to a basic material even in the same technical field of extrusion. This teaching does not go beyond the generally applicable technical teaching that a vulnerable part of an object should be additionally protected by means of a reinforcing layer. There was no prejudice that might have prevented a skilled person from further reinforcing an integral skin already reinforced at the edges, nor has convincing evidence been brought of any such prejudice. The fact that the remark in Document D2 regarding foam extrudates was, for whatever reason, deleted from the German patent granted in respect of the D2 application is therefore irrelevant. The Board takes the view that it was obvious to a person skilled in the art, on the basis of his general technical knowledge, that an integral skin should be reinforced, where necessary, with an additional reinforcing layer. The use of well-known data, without new and surprising effects, cannot contribute to an inventive step.

6.2.3 In the light of the teaching contained in Document D2, it was also obvious to use an extrusion process (and the resultant bonding of materials) enabling the layer to be adequately bonded with the basic material (the integral skin) (Document D2: page 2 - hand numbering page 7, lines 6, 7 and 16; page 6 - hand numbering page 11, line 8). The Board considers that the good adhesion in the present case, which must be regarded as the result of adequate bonding between the applied layer and the basic material, indicates "intimate" bonding. The expression "intimate bonding" refers to a specific bonding only. It cannot however be used to describe a qualitative difference between such bondings.

6.2.4 The choice of a rigid compact PVC and a suspension PVC with a K value of 65 to 70 is not, for a skilled person, a choice that contributes to an inventive step because, given the properties required for a coating of this kind and given the Document D2 teaching, only a non-porous, rigid thermoplastic compact plastic material will do. The use of a known material in a combination on the basis of its known properties and in a known manner to obtain a known effect is not normally inventive, i.e. except in special and unexpected circumstances such as where the choice produces additional advantageous effects, unforeseen difficulties or known prejudices are overcome or another component has to be changed ("similar use"). The Board considers that the general technical knowledge of a skilled person is sufficient for him to use the known properties of a known material (rigid compact PVC) for a reinforcing layer, just as it was clear to a skilled person that the PMMA layer mentioned in Document D2 could be used to improve the light- and weather-resistance of a window profile. Moreover, no new and surprising reasons were advanced for the choice of rigid compact PVC.

6.2.5 Nor does the fact that the integral skin is thinner under the additional layer contribute to any inventive step. The patent proprietor has emphasised that the layer partly replaces the non- porous integral skin. The Board considers that this feature does not make any appreciable difference because, on the one hand, it does not involve a clearly defined thickness of integral skin and, on the other, it in no way contributes to the solution of the problem. In fact, the profile member as a whole must be designed so as to be no longer liable to become unsightly as a result of rough handling. Consequently, it does not matter whether the integral skin under the protective layer is slightly thinner or not. The point is that between them the protective layer and the integral skin foam solve the problem.

6.2.6 A person skilled in the art would therefore be able to solve the first part of the problem described in Claim 1 by known means and without inventive activity.

6.3 The second part of the problem (decorative design)

6.3.1 It was normal practice in the same technical field to manufacture plastic materials as a wood-substitute, adding either a chosen colouring (Document D2: page 6 - hand numbering page 11, line 6) or keeping to the existing colouring. Moreover, it was already known on the priority date (Document D3) how to manufacture members that looked like wood from thermoplastic plastic materials; and colouring (page 12 - hand numbered 14-16, lines 1 to 8), embossing (page 13 - hand numbered 15-17, 3rd paragraph) to a preferred depth of 0.05 to 1 mm, preferably 0.1 to 0.5 mm (page 19 - hand numbered 21-23, 2nd paragraph), and using coats of varnish (page 11 - hand numbered 13-15, 2nd and 3rd paragraphs) were a normal part of that process.

6.3.2 Thus a skilled person would find in Document D3 an indication to use colouring, embossing and coats of varnish on extruded thermoplastic plastic materials to obtain the appearance of wood. To use these known measures for a profile member as well cannot be regarded as inventive because the results obtained are not unexpected but quite normal. The slightly different range of profile depth cannot contribute to inventive step either, as the difference does not affect the aesthetic appearance. As explained under 6.2.4 above, colouring is employed in this case for the known purpose, without causing any surprises.

6.3.3 Here too, therefore, a person skilled in the art would be able to solve the second part of the problem described in Claim 1 by known means and without inventive activity.

6.4 In conclusion, the Board believes that the solutions to the problems given in Claim 1 are obvious having regard to the state of the art and the general technical knowledge of a skilled person and cannot therefore be considered as involving an inventive step (Art. 56 EPC). Claim 1 and its dependent Claims 2 to 5 cannot therefore be maintained.

ORDER

For these reasons it is decided that: The appeal is dismissed.

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