T 1586/21 () of 1.6.2023

Summary of Facts and Submissions

I. The appeal of the opponent lies against the decision of the Opposition Division rejecting the opposition against the European patent No. 2817172.

II. In its decision the Opposition Division found among others that the invention according to granted claim 1 was disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person and that the subject-matter of granted claim 1 did not go beyond the content of the application as originally filed and involved an inventive step in view of D11 (see below) and common general knowledge of the skilled person (Article 100 EPC).

III. The following documents are relevant for the present decision:

D2: EP0760266 A2,

D11: EP2492144 A1,

P3: US 201261647179 filed on 15 May 2012,

P4: US 201261664438 filed on 26 June 2012, and

P5: US 201261665509 filed on 28 June 2012.

IV. Oral proceedings before the Board took place on 1 June 2023 as a videoconference with the consent of the parties.

The appellant (opponent) requested that the decision under appeal be set aside and that the European patent be revoked.

The respondent (patent proprietor) requested that the appeal be dismissed (main request) or, in the alternative, that the patent be maintained in amended form according to any of the auxiliary requests 1 to 18 filed with the reply to the statement of grounds of appeal.

V. Claim 1 of the main request, i.e. as granted, reads as follows (feature numbering according to the contested decision):

1. An exterior rearview mirror assembly (10) configured

for mounting at an exterior portion of a vehicle, said exterior rearview mirror assembly comprising:

2. a second actuator (22),

2.1 configured for attachment at a structure

2.2 that is fixed relative to a vehicle equipped with

said exterior rearview mirror assembly and

2.3 that is at an exterior portion of the equipped

vehicle,

2.4 wherein said second actuator (22) is operable to

pivot an outer bracket (20) relative to the structure at the exterior portion of the equipped vehicle;

3. a first actuator (18)

3.1 attached at said outer bracket (20) and

3.2 operable to pivot a bracket (16) relative to said

outer bracket (20);

4. a mirror head

4.1 attached at said bracket (16) and

4.2 movable with said bracket (16),

4.3 wherein said mirror head (14) comprises a mirror

casing;

5. a mirror reflective element (12)

5.1 fixedly attached at said mirror head (14),

5.2 wherein said mirror head comprises an attachment

portion (14a) and

5.3 wherein said mirror reflective element (12)

attaches at said attachment portion (14a);

6. wherein said second actuator is operable to move said

outer bracket (20) relative to the structure at the exterior portion of the equipped vehicle about a second axis (22a);

7. wherein said first actuator (18) is operable to move

said mirror head (14) relative to said outer bracket (20) about a first axis (18a);

8. wherein said first and second actuators are

cooperatively operable to move said outer bracket (20) about said second axis (22a) and to move said mirror head (14) about said first axis (18a); and

9. wherein said mirror reflective element (12) moves in

tandem with movement of said mirror head (14) relative to the structure at the exterior portion of the equipped vehicle to adjust the rearward field of view of a driver of the equipped vehicle, characterized in that:

10. said mirror head (14) houses at least one accessory

10.1 that is disposed in said mirror casing of said

mirror head (14) and behind said mirror reflective element (12); and

11. said first and second actuators (18, 22) are

cooperatively operable to provide a powerfold function.

The auxiliary request 1 differs from the main request in that feature 2.1 of claim 1 has been amended as follows and feature 2a (numbering by the Board) has been added in claim 1 between features 2.4 and 3:

2.1 having an inner end attached at a structure

2a. the second actuator (22) being attached at or

disposed at or in an outer cover (24), the outer cover (24) being pivotally or rotatably mounted at a side portion of the vehicle via the second actuator;

Reasons for the Decision

Main request - granted patent -

1. Priority and prior art

1.1 The priority of documents P3 to P5 is not validly claimed for the subject-matter of granted claim 1 (Article 87(1) EPC). Consequently, D11 (published on 29 August 2012) represents state of the art under Article 54(2) EPC because the resulting earlier possible effective date for the subject-matter of granted claim 1 under Article 89 EPC would be that of the next earliest priority document which would be 6 September 2012.

1.2 The Opposition Division decided that the priority was not validly claimed since the powerfold function of granted claim 1 under feature 11 was not directly and unambiguously disclosed in P3 to P5 (see point 17.1 of the decision under appeal).

1.3 The respondent essentially argued that a +/- 60° adjustment of an external rearview mirror housing as disclosed in P3 to P5 would, for the skilled person, inevitably correspond to a position alongside the vehicle (see paragraphs [00187], [00198] and [00200] respectively, as well as figures 53 to 55(B) in P3 to P5).

1.4 It is established case law of the Boards of Appeal that the criterion for assessing whether the requirement of the "same invention" referred to in Article 87(1) EPC is met is the gold standard, namely, whether the claimed subject-matter derives directly and unambiguously either explicitly or implicitly and using common general knowledge from the previous application as a whole (see G 2/98 headnote and G 2/10 points 4.3 and 4.6).

1.5 In the present case this criterion is not met. The Opposition Division's assessment is correct at least for two reasons. Firstly, a powerfold function of the exterior rearview mirror assembly according to the invention is such that the mirror head is pivoted about the first and second axes to fold or move so as to be generally along the side of the vehicle (see paragraph [0014] last sentence of the contested patent). According to P3 to P5 the mirror head is specifically pivoted about an axis to laterally adjust the rearview field of view e.g. within about a +/- 60 range of pivotal movement. A powerfold function as recited in granted claim 1 is however not limited to such a range of movement but also includes values outside the range of +/- 60, like +/- 70°, +/- 80° or even +/- 90° depending on the specific configuration and orientation of the rearview mirror. Consequently, by generalising the original disclosure in the priority documents cited from +/- 60° to the generally claimed powerfold function further technical information has been added to the subject-matter claimed not directly and unambiguously disclosed in P3 to P5.

Secondly, as pointed out by the Opposition Division in its decision, the pivotal adjustment within +/- 60° range about the first pivot axis is directed in P3 to P5 to an adjustment of the rearward field of view of the driver and not to a powerfold function. A powerfold function is clearly not intended to provide a field of view to the driver in use.

2. Inventive step

2.1 The subject-matter of granted claim 1 does not involve an inventive step in view of the rearview mirror assembly of D11 in combination with common general knowledge of the skilled person (Article 100(c) EPC together with Article 56 EPC).

2.2 In dispute between both parties was whether the rearview assembly in figure 1 of D11 disclosed features 3.2, 4.1 and 4.2 of claim 1, specifically with reference to the bracket at which the mirror head was attached and movable therewith as a pivotal movement relative to the outer bracket operated by the first actuator, as well as features 8 and 11.

2.2.1 The Opposition Division found that features 3.2, 4.1 and 4.2 were not disclosed in figure 1 of D11 because the actuator 11 was attached directly to the mirror housing and rotated with it and accordingly no bracket between the mirror housing and the first actuator was present.

The appellant contested the Opposition Division's findings. In their view a bracket was implicitly disclosed in D11 since a connection element between the actuator 11 and the mirror head 3 was necessary in order for the actuator to apply a torque between bracket 2 and mirror head 3. A bracket amounted merely to a connection means (making reference to paragraphs [0007] and [0017] of the contested patent) such that the skilled person would at least read along a screw connection between actuator 11 and mirror head 3.

However, a bracket as required by features 3.2, 4.1 and 4.2 is not directly and unambiguously derivable from the disclosure of the rearview mirror in figure 1 of D11. A bracket as claimed is not solely a connection means between two parts but rather - as explained by the respondent - an element onto which something is supported.

In fact, the disclosure of figure 1 of D11 is silent on the kind of structural connection between the actuator 11 and the mirror head 03. Accordingly, it is not directly and unambiguously derivable from D11 whether the actuator 11 is connected directly or indirectly (i.e. through any kind of element such as a bracket) to the mirror head, let alone through a common screw connection.

2.2.2 The respondent further argued that the rearview mirror of D11 did not disclose features 8 and 11 of granted claim 1. In particular, D11 did disclose a powerfold function but failed to specify that the two actuators operated together in a cooperative manner to provide the powerfold function.

The Opposition Division considered that D11 failed even to disclose a powerfold function as required by feature 11 (see page 11, fourth paragraph of the contested decision).

The wording of claim 1 however is limited to operators "cooperatively operable to move/provide..." and not to operators "cooperatively operated to move/provide...". Accordingly, the claim is limited to a suitability of the mirror to operate in that manner. According to paragraphs [0055] and [0056] of D11 the actuators for pivoting around axes 08 and 09 are able to be operated cooperatively and independently from each other and they provide a powerfold function of the mirror head 03 ("Anklappstellung"). This is carried out by a controller 12 that operates simultaneously and cooperatively both actuators (see paragraphs [0030], and [0066] of D11). It follows that the rearview mirror in figure 1 of D11 discloses features 8 and 11 of claim 1.

2.3 Consequently, the subject-matter of granted claim 1 differs from the rearview mirror in figure 1 of D11 only on one count: the bracket at which the mirror head is attached and is movable therewith, and which is pivotable relative to the outer bracket by the first actuator, i.e. features 3.2, 4.1 and 4.2.

2.4 The respondent argued, making reference to paragraphs [0041] and [0043] of the contested patent, that the technical effect of the distinguishing features was to provide adaptability of the rearview mirror assembly with a powerfold function to a range of vehicle models by using a common mechanism finalizing at the bracket, which allowed mounting different sizes, shapes and styles of mirror head. Accordingly, the objective technical problem was how to adapt the mirror of D11 to make it adaptable to be used with multiple vehicles.

When trying to solve the posed problem, the skilled person would not find any hint or motivation in its common general knowledge to provide the mirror of figure 1 of D11 with a mounting bracket between actuator 11 and mirror head 03 without hindsight.

In contrast, the Opposition Division formulated the objective technical problem resulting from the difference such as how to provide an easy replacement of the mirror head while maintaining the adjusting structure (see page 10 last paragraph of the impugned decision).

2.5 The Board concurs with the appellant that the respondent's formulation of the objective technical problem is too restrictive. The Board also does not share the formulation of the problem made by the Opposition Division since it is based on the assumption of the presence of a direct connection between the actuator and the mirror head.

The skilled person reading D11 and seeking to put in practice the exterior rearview mirror of figure 1, would necessarily be confronted with the problem of filling the gap in the disclosure of D11 concerning the attachment of the actuator 11 to the mirror head in order to provide the pivoting between the mirror head and the bracket 2 around axis 09.

The Board concurs with the appellant that one of the possible ways of "filling the gap" which would readily occur to the skilled person would be to use a bracket, which is, in general terms, an intermediate supporting element, for supporting the actuator 11 to the mirror head 03.

The skilled person would thus arrive at the claimed subject-matter without the need of being prompted by any suggestion or hint in a document but only by relying on their common general knowledge for solving the posed objective technical problem.

The Board does not share the view of the respondent and the Opposition Division that this line of argumentation is based on hindsight since it belongs to common general knowledge of the skilled person to support an actuator by using a bracket to another structural element.

Auxiliary request 1

3. Article 100(b) EPC - sufficiency of disclosure

3.1 The patent discloses the invention according to claim 1 and 11 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

3.2 The appellant did not raise any further objections in addition to those put forward for the invention according to the granted patent (main request of the respondent). Those objections equally apply to the auxiliary request 1.

In particular, the appellant argued that there was a problem of insufficiency of disclosure arising from the group of features 5 versus the group of features 10 of granted claim 1. It was allegedly not sufficiently disclosed how the mirror reflecting element was to be attached to the attachment portion of the mirror head and at the same time the accessory disposed in the mirror casing behind the mirror reflective element.

Additionally, the appellant objected that the patent did not indicate at least one way of carrying out the invention as no single embodiment showed all the features of granted claim 1. In particular, the embodiment of figures 1 to 1B and the embodiment of figure 17D were incompatible and excluded each other since the actuators of figure 1 were disposed within the mirror housing whereas the disclosure of the embodiment of figure 17D specified that the actuators were not within the housing (see paragraphs [0049] and [0050] of the patent).

Finally, the appellant put forward for the first time in appeal that there was an incompatibility between the subject-matter of claim 11 dependent on claim 1 and the embodiment of figure 1 which lead to an insufficiency of disclosure. According to claim 11 the inboard region of the bracket was disposed at an outboard region of the outer bracket. Claim 1 specified that the first actuator was arranged between the outer bracket to which it was attached and the bracket which it was to rotate. Referring to figure 1, both the outboard region of the first actuator and the outboard region of the outer bracket could not extend into the bracket.

3.3 The Board disagrees and shares the view of the respondent.

Regarding the objection directed to group of features 5 vs. 10 the skilled person in view of their common general knowledge is aware of how to provide an accessory in the mirror casing and behind the mirror reflective element, for instance, through a hole or access in the mirror casing, by detaching the attachment portion to access the interior of the mirror head casing or by providing the mirror casing as a clamshell (see paragraphs [0045], [0049] to [0050] of the contested patent).

The rationale of the appellant on the incompatibility regarding the embodiments of figures 1-1B and figure 17D is not persuasive for the following reasons. As explained by the respondent, figures 17 to 17D schematically represent the actuator device of the rearview mirror assembly. The description of those figures specifies by making reference to the dual actuator arrangement disclosed previously in the embodiments of figures 1 to 16 (actuators adjusting the mirror head and reflective element in tandem) that said actuators of the invention do not require space in the mirror head for conventional actuators and leave space without concerns of interference with said conventional actuators for inclusion of other accessories. Accordingly, the disclosure of figures 17 to 17D is related to the dual actuator arrangement disclosed in figure 1. Therefore, even if the embodiment of figure 1 does not explicitly address the inclusion of accessories in the mirror head, this is clearly taught for that embodiment later on in the description with reference to figures 17 to 17D. Lastly, the description of figures 17 to 17D does not explain that part of the actuators cannot be located within the mirror housing - as shown in figures 4, 10A and 10B - but that, in contrast to conventional actuators, space in the mirror casing behind the mirror reflective element is provided for accessories (see paragraph [0051]).

Irrespective of the admissibility of the objection directed to claim 11, the Board concurs with the respondent that claim 11 is very broad and refers to outboard and inboard regions of the brackets and not of the first actuator. Figure 1 shows the claimed spatial disposition of the mirror head and the brackets. Claim 1 does not specify the location of the first actuator but merely its connections to the other structural elements of the claim. Consequently, the objection of the appellant does not hold.

4. Articles 100(c) and 123(2) EPC

4.1 The subject-matter of claims 1, 7 and 11 does not extend beyond the content of the application as originally filed.

4.2 The appellant put forward different objections regarding the subject-matter of claim 1.

4.2.1 In their view the subject-matter of claim 1 resulted from the combination of features of different concepts taken from the disclosure of different embodiments, those embodiments being the ones of figures 1 to 1B (the arrangement of the dual actuators according to groups of features 2 to 4) and of figures 17 to 17D (housing of one accessory in the mirror head per group of features 10). Picking features from the different embodiments did not meet the criterion of the gold standard because the features were originally nowhere disclosed in combination. In this same line of reasoning the appellant argued that the embodiment of figures 1 to 1B was neither disclosed in combination with a powerfold function of the mirror assembly (feature 11 of claim 1).

As explained above under point 3.3 third paragraph, the embodiments in figures 17 to 17D are indeed originally described by making reference to the actuator arrangement explained in the previous figures 1 to 16 (it is noted that even if the paragraphs referred to above correspond to those of the published patent specification, these are equally present in the application as originally filed, namely paragraphs [0085], [0089] to [0091]). Accordingly, the objection of the appellant does not hold, since the skilled person derives directly and unambiguously that the arrangement of the accessory in the mirror head is rendered possible by using e.g. the actuator arrangement of figures 1 to 1B.

The objection regarding the powerfold function for the mirror assembly is also not persuasive since it derives directly and unambiguously from paragraph [0004] as originally filed that the exterior rearview mirror assembly according to the invention includes two actuators that provide a powerfold adjustment to move the mirror head relative to the side of the vehicle. Further, paragraph [0055] which describes the operation of the mirror of figures 1 to 1B explicitly repeats the powerfold function provided by that rearview mirror assembly.

4.2.2 The appellant objected also to the groups of features 2 and 3 arguing that it derived from the comparison of terminology of originally filed claim 14 with claim 11 of the auxiliary request 1 that the term non-movable portion equated to the outer bracket (20) and the term movable part to bracket (16). It was then contradictory that the outer bracket was at the same time a movable portion and a non-movable portion.

However, the alleged contradiction in terminology is not present in the subject-matter claimed. Both brackets in claim 1 move and therefore are not non-movable and claim 11 does not refer to any non-movable portion.

4.2.3 Regarding the original disclosure of the embodiment of figures 1 to 1B relating to the actuator arrangement of the mirror assembly, the appellant also objected that the subject-matter of claim 1 represented an unallowable intermediate generalisation of that embodiment. In particular, the mirror head being a mirror housing, the bracket being a inner bracket and the resulting nesting of components as shown in figure 1 were omitted.

As regards the feature of the mirror housing, claim 1 already specifies that the mirror head has a casing. Further, the term "inner" in paragraph [0047] of the application as originally filed does not have any specific meaning but merely refers to the bracket 16 as opposed to the bracket 20 which is identified as "outer", so as to differentiate them with respect to the mirror head. This is reflected already in the wording of claim 1, in particular in groups of features 2 to 4.

The disclosure of the embodiment of figures 1 to 1B is silent on the nesting of components, and the figures of the patent are schematic. The Board does not infer therefrom any direct and unambiguous disclosure of nesting of components.

Accordingly, no further technical information has been added with the amendments made to claim 1 with respect to the disclosure of the embodiment of figures 1 to 1B.

4.2.4 The appellant also submitted that the non-movable portion feature of originally filed claim 1 which was configured for attachment at an exterior portion of a vehicle had been omitted in claim 1. This non-movable portion was now specified in the claim as belonging to the second actuator (feature 2.1). By omitting the feature, there were assemblies which could be attached to the inner non-movable portion of the vehicle.

The Board in line with the submissions of the respondent is satisfied that paragraph [0047] of the application as originally filed serves as basis for the omission of the non-movable portion specified in claim 1 as originally filed. According to that paragraph, the second actuator 22 has its inner end attached at a structure that is fixed relative to the vehicle. Said actuator imparts the rotation of bracket 22 and first actuator 18 and bracket 16 and mirror head 14 about the second axis relative to the base of the mirror (i.e. its non-movable portion) and/or the side of the vehicle at which the mirror assembly is mounted. Claim 1 has been amended to be limited to the latter alternative.

4.2.5 Finally, the appellant objected to the combination of features from groups of features 4 and 5 since originally it was the mirror casing which comprised the attachment portion at which the mirror reflective element attached and not the mirror head (see claim 6 and paragraph [0046] as originally filed). By taking out that requirement the subject-matter of claim 1 included embodiments in which the mirror reflective element further included anything for the attachment portion such as a shroud or bezel.

It is true that according to the originally filed application the mirror head comprises a mirror casing that comprises an attachment portion at which the mirror reflective element attaches. However and as pointed out by the respondent by making reference to paragraphs [0111] and [0120], that disclosure does not exclude that the mirror reflective element can comprise other elements between the attachment portion and the mirror reflective element like a shroud or a bezel. Additionally, the original disclosure does not specify a direct attachment between mirror reflective element and the mirror housing. Since according to claim 1 the mirror head comprises the housing and the mirror reflective element is fixedly attached to the mirror head, an attachment portion (in whatever form) between the mirror reflective element and the mirror housing is implicit. Consequently, there is no further technical information added by specifying that the mirror head comprises an attachment portion at which the mirror reflective element attaches.

4.3 The appellant argued that the subject-matter of dependent claim 7 was not originally disclosed because a camera was not disclosed in connection with the embodiment of figures 1 to 1B.

As explained under point 4.2.1 above, the features referring to the accessory within the mirror casing find their basis in the disclosure of the embodiment according to figures 17 to 17D. A camera being one of the possibilities for that accessory is directly and unambiguously disclosed in paragraph [0087].

4.4 Regarding dependent claim 11, the appellant submitted that it could not be inferred from figure 1 that the inboard region of the bracket 16 is disposed at an outboard region of the outer bracket 20 but rather that the inboard region of the bracket 16 is disposed at an outboard region of the first actuator 18.

The Opposition Division in the decision (see last paragraph on page 6 of the decision) and the respondent in the reply found figure 1 as originally filed to form a basis supporting the subject-matter of dependent claim 11 since the disposition claimed was shown in the figure. The Board holds this view to be correct. The former disposition referred to by the appellant is directly and unambiguously shown in figure 1 of the application as originally filed whereas the latter is not shown since the final mounting position of the first actuator is not shown in figure 1.

5. Objections concerning the prior art disregarded

5.1 With letter of 3 April 2023, after notification of the summons to oral proceedings, the appellant submitted in general that the auxiliary requests were not allowable for lack of novelty and inventive step. As regards the first auxiliary request, the appellant only specifically submitted that the additional features of claim 1 were known from D2 (point V.2.1 of the a.m. letter). During the oral proceedings, the appellant stated that they intended to argue inventive step starting from D11 in combination with common general knowledge and with D2.

5.2 Under Article 13(2) RPBA 2020 (Rules of Procedure of the Boards of Appeal OJ EPO 2021, A35) any amendment to a party's appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

5.3 The appellant failed to justify in the letter of 3 April 2023 the reasons for raising objections based on the prior art for the auxiliary requests at that point of the appeal procedure. During the oral proceedings the appellant argued that in their letter they submitted an inventive step objection which contained all arguments put forward during the opposition proceedings as regards auxiliary request 1, which corresponded to the auxiliary request 1 underlying the contested decision and upon which the Opposition Division did not decide.

5.4 The Board judges that the circumstances of the present case do not qualify as exceptional. The respondent with the reply to the statement of grounds of appeal resubmitted the auxiliary requests which correspond to those filed before the Opposition Division. Said reply was filed on 4 April 2022 and the summons for oral proceedings were sent on 22 February 2023. The appellant had ample time to file the objections submitted with letter 3 April 2023 before the summons to oral proceedings in order to complete its appeal case. The more so, since these objections allegedly represent a mere resubmission of objections filed during the opposition proceedings.

Since there are no reason justifying the amendment to the appellant's case consisting in filing the inventive step objection with letter of 3 April 2023, and since there are a fortiori no reasons justifying completing and/or substantiating inventive step objections during the oral proceedings before the Board, these objections are not taken into consideration pursuant to Article 13(2) RPBA 2020.

6. Since there are no further objections on patentability for the auxiliary request 1, the Board has no reasons to question the non-obviousness of the subject-matter of claim 1 of the auxiliary request 1.

7. The claims of auxiliary request 1 together with the figures of the published patent form therefore a suitable basis for the maintenance of the patent in amended form.

The appellant considered that the description needed adaptation and both parties agreed that the case be remitted to the opposition division for adaptation of the description.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent as amended in the following version:

- Claims n° 1-11 according to auxiliary request 1 filed with the reply of the respondent on 4 April 2022, and

- a description to be adapted thereto.