T 0863/05 20-11-2006

1. The appeal is admissible.

2. Main request - Amendments

2.1 Claim 1 amended according to the main request is based on claims 1 and 3 as granted and on the passage on page 4, line 17 et seq. of the patent specification as well as on the corresponding parts of the application as originally filed. Dependent claims 2 to 9 correspond to claims 2 and 4 to 10 as granted, respectively.

The respondent has objected to the amendment in claim 1 relating to the resin binder "conforming to the formula" specified in the claim as being unclear and therefore not admissible. However, the objected expression was already contained in claim 3 as originally filed (Article 123(2) EPC) as well as in claim 3 as granted. In addition, the combination of claims 1 and 3 as granted does not result in the formulation of the resulting amended claim being unclear as argued by the respondent since the fact that the resin binder "conforms to" the specified formula excludes the possibility that the resin binder might conform to a different formula, or to the same formula but with relative mole fractions different from those specified in the claim, as actually supported by the passage on page 4, lines 17 to 39 of the patent specification (Article 84 EPC). Accordingly, the objections raised by the respondent in support of the non-admissibility of the amendments to claim 1 do not convince the Board.

2.2 The subject-matter of claims 10 to 17 of the main request corresponds to that of claims 11 to 16 as granted, whereby the claims have been appropriately amended to take account of the fact that claims 11 to 16 as granted referred back to claims 1 to 10 as granted and the subject-matter of these claims has been amended during the appeal proceedings.

2.3 Claims 18 to 20 of the main request correspond to claims 17 to 19 as granted appropriately amended to take account of the amendments to claim 1 as granted to which the granted claims referred back.

2.4 The description has been amended during the appeal proceedings to make it consistent with the amended set of claims of the main request (Article 84 and Rule 27(1) (c) EPC).

2.5 The Board is therefore satisfied that the amendments made to the patent according to the appellant's main request are admissible (Rule 57a EPC) and comply with the formal requirements of the EPC, and in particular with those set forth in Articles 84, 123(2) and (3) EPC.

3. Main request - Claims 1 to 9

3.1 Novelty

It has not been disputed by the parties that example 4 of document D1 fails to disclose a polymer as claimed and that, consequently, the amended claim 1 overcomes the reasons on which the opposition division based its finding of lack of novelty.

During the oral proceedings, however, the respondent objected that the claimed composition is still anticipated by the disclosure of document D1, and in particular by the polymer disclosed in column 4, line 65 et seq. together with column 12, lines 26 to 38 and by the crosslinking reaction process disclosed in column 14, lines 14 to 25 and column 15, line 65 to column 16, line 19. This line of argument of the respondent in support of lack of novelty of the claimed composition does not convince the Board for the following reasons:

Document D1 discloses the photo-polymerisation of compounds having anthracene units (column 4, line 63 to column 5, line 35) and specifies in columns 5 to 12 a series of alternative anthracene compounds that may be used in the photo-polymerisation reaction. Among these alternatives, document D1 specifies in column 12, lines 26 to 38 esters of the general formula

FORMULA/TABLE/GRAPHIC

where R denotes a hydrogen atom or a methyl group, R**(1) denotes a chlorine or bromine atom, a methyl group or a nitro group, and m is zero, 1 or 2 (column 12, lines 53 and 54 together with column 5, lines 15 to 18). These esters are exposed to actinic radiation so that the esters are photo-polymerized but the resulting polymeric compound still remains photo-crosslinkable (column 4, line 65 to column 5, line 25). According to the submissions of the respondent, the photo-polymerisation of these esters would result in photo-crosslinkable homopolymers constituted by repeating units satisfying the formula specified in claim 1 for x = 1.0. This view has not been contested by the appellant.

However, as stressed by the appellant, claim 1 requires a crosslinker compound capable of causing a thermally-activated crosslinking reaction of the resin binder conforming to the formula specified in the claim. Thus, independently of the question raised by the respondent of whether or not the formulation of claim 1 also encompasses compositions having, in addition to those expressly specified in the claim, thermally crosslinkable epoxide components such as those specified in document D1 (column 14, lines 14 to 29 and column 15, line 65 et seq.), the question arises whether document D1 contains a clear and unambiguous disclosure of the provision in the composition of a crosslinker compound capable of thermally crosslinking the homopolymer referred to above as required by the express formulation of claim 1.

The disclosure of document D1 in column 4, line 63 to column 14, line 13 is confined to the photo-polymerisation and to the subsequent photo-crosslinking reaction of the different alternative compositions disclosed in the document. Then, in column 14, lines 14 to 25 and in column 15, line 65 to column 16, line 18 the document specifies that additional crosslinking may be achieved by thermal curing through epoxide groups, and the document discloses two alternative embodiments, namely a first embodiment in which the composition includes a photo-polymerisable compound having in the same molecule both a group as previously specified and a 1,2-epoxide group, and a second alternative in which an epoxide resin is included in the composition before photo-polymerisation. In the first alternative, however, the resulting resin binder would not be constituted by a polymer as claimed. As regards the second alternative, it cannot be excluded that a homopolymer as claimed is formed after photo-polymerisation of the composition which already includes the epoxide resin; nonetheless, there is no clear and unambiguous disclosure that the crosslinker agent to be incorporated in the composition for causing thermal-crosslinking of the epoxide resin would also additionally cause thermal-crosslinking of the homopolymer binder resin that has been previously photo-polymerised and photo-cured.

The submission of the respondent that some of the thermal crosslinker agents listed in document D1 for causing thermal-crosslinking of the epoxide resins (column 16, lines 8 to 18), and in particular those of the amine-based type also considered in paragraph [0018] of the patent specification and in claim 7 as granted (now dependent claim 6), would not only cause photo-crosslinking of the epoxide resins but also inherently and inevitably photo-crosslinking of the homopolymer is not disputed by the Board. However, this submission is not sufficient to conclude that the claimed composition is anticipated by the disclosure of document D1 since such a conclusion would require a line of reasoning relying on

- first, the selection from among all the alternative components disclosed in columns 5 to 12 of the esters mentioned above and conforming to the claimed formula,

- second, the selection of the second of the alternative photo-crosslinking processes disclosed in the document and referred to above and

- third, the selection, from among the crosslinker agents listed in the document for causing thermal-crosslinking of the epoxide resins, of those agents that would also additionally cause thermal-crosslinking of the homopolymer.

Thus, in the absence of an express or at least implicit disclosure or clear teaching in document D1 towards the selection and the subsequent combination of the particular alternatives specified above, the line of reasoning of the respondent that the combination of specific ones of the alternatives disclosed in document D1 would inherently result in the claimed composition falls outside the ambit of the assessment of lack of novelty within the meaning of Article 54(1) EPC.

The Board concludes that document D1 fails to clearly and unambiguously disclose the composition defined in claim 1. Accordingly, claim 1 as well as dependent claims 2 to 9 appendant thereto define novel subject-matter (Article 52(1) and 54 EPC) over the documents considered during the proceedings.

3.2 Inventive step

Document D1 addresses the problem of avoiding the use of organic solvents in coating compositions (column 1, lines 25 to 35) and fails to address the primary technical problem considered in the patent in suit, i.e. the provision of compositions for forming coatings having predetermined antihalation and adhesion properties (claim 1 and paragraphs [0005] to [0010] of the patent specification). Thus, there is no reason a priori why the skilled person would have considered the disclosure of document D1 as a starting point when considering the problem of providing compositions for coatings having specific antihalation and adhesion characteristics. In addition, as already stated in the penultimate paragraph of point 3.1 above, there is no disclosure or teaching in document D1 towards the specific combination of the features of the composition defined in claim 1 and, more particularly, towards the thermal crosslinking reaction of a polymer containing anthracene groups but no epoxide group as claimed. Consequently, in the absence of any other pertinent disclosure or teaching in the prior art, the respondent's submissions that the skilled person seeking alternative compositions to those disclosed in document D1 would have considered, from among the alternatives disclosed in document D1, the specific combination of alternatives that would have resulted in the claimed subject-matter fails to persuade the Board.

The Board concludes that the subject-matter of claim 1 and that of dependent claims 2 to 9 involves an inventive step (Articles 52(1) and 56 EPC) over the prior art considered during the proceedings.

4. Main request - Claims 10 to 17

The subject-matter of claims 10 to 17 of the main request corresponds to the subject-matter of claims 11 to 16 as granted, the claims having been amended only to preserve the subject-matter actually defined in the respective granted claims (see point 2.2 above). In addition, claims 11 to 16 as granted were not opposed. Accordingly, apart from the formal admissibility of the amendments referred to above and required to take account of the amendments made to claim 1 as granted (point 2.2 above), claims 10 to 17 of the appellant's main request are not open to examination in the present opposition appeal proceedings (G 9/91 OJ EPO 1993, 408).

5. Main request - Claims 18 to 20

The subject-matter of claims 18 to 20 of the main request corresponds to that of claims 17 to 19 as granted, the claims having been amended only for formal reasons (point 2.3 above). In addition, claims 17 to 19 as granted were opposed only on the grounds for opposition under Article 100(b) EPC. In the decision under appeal, however, the opposition division concluded that the patent discloses the invention as defined in claims 17 to 19 as granted in a manner sufficiently clear and complete within the meaning of Articles 100(b) and 83 EPC, and this finding was not contested by the respondent during the present appeal proceedings. In addition, the Board has no reason for departing from the opposition division's view in this respect.

Accordingly, the Board concludes that the grounds for opposition under Article 100(b) EPC invoked by the respondent with regard to claims 17 to 19 as granted do not prejudice the maintenance of the patent as amended according to the main request of the appellant.

6. In view of the above conclusions and considerations, the Board concluded during the oral proceedings that the patent as amended according to the appellant's main request and the invention to which it relates met the requirements of the EPC and that consequently the patent was to be maintained as amended according to the main request (Article 102(3) EPC).