T 0569/10 01-12-2011

1. Procedural matters

The statement of the appellants in their fax dated 16 November 2011 that they will not attend the oral proceedings (see point VI above) is considered by the Board as a withdrawal of the auxiliary request for oral proceedings, as is consistent case law (see Case Law of the Boards of Appeal, 6th edition 2006, VI.C.2.2), the appellant thereby relying on its written submissions.

Since the appellants were not represented at the oral proceedings, which were held in accordance with Rule 115(2) EPC and Article 15(3) RPBA in their absence, the principle of the right to be heard pursuant to Article 113(1) EPC is not contradicted since that principle only affords the opportunity to be heard and, by absenting itself from the oral proceedings, a party gives up that opportunity (see the explanatory note to Article 15(3) RPBA cited in T 1704/06, not published in OJ EPO; see also the Case Law of the Boards of Appeal, 6thedition 2006, VI.B.3 to VI.B.3.2).

The subject-matter of claim 1 of the new single request dated 16 November 2011, which was filed less than one week before the date of the oral proceedings before the Board, is identical with the subject-matter of claim 1 as originally filed (see point VIII above) which had been considered by the Board as claim 1 of the main request in its communication annexed to the summons to oral proceedings (see points I and IV above). Taking account of the fact that clarity objections had been raised with respect to that claim 1 (see e.g. point 6.1 of the communication) the appellants could expect in the light of the prevailing legal and factual situation that the examination of the clarity requirement would be an issue at the oral proceedings before the Board.

That the appellants actually had the opportunity in the written proceedings to submit comments with respect to the clarity objections raised by the Board concerning claim 1 of the main request, i.e. claim 1 as originally filed is evident from their submissions of 20 October 2011 (see point IX above).

2. Clarity of claim 1 (Article 84)

Article 84 EPC defines: "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description".

2.1 According to the established case law of the boards of appeal Article 84 EPC has to be interpreted as meaning not only that a claim must be comprehensible from a technical point of view, but also that it must define the object of the invention clearly. That is to say to indicate all the essential features, i.e. all features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features. The indication thereof is seen in part as necessary to meeting the clarity requirement, and in part as a prerequisite for the support function laid down in the second sentence of Article 84 EPC (see the Case Law of the Boards of Appeal, 6th edition 2006, II.B.1.1.4).

2.2 The description of the present application as originally filed reveals under the heading "Background of the Invention" that vacuum coating of glass or other substrates has been done by sputtering conductive and dielectric material from rotating magnetrons by direct current (DC) for several years and that recently magnetrons driven by high-voltage alternating current (AC) have been introduced which are advantageous but have been plagued by reliability problems and high expense caused by the unique properties of a high-power AC system (see paragraphs [0003] to [0005]).

These high-power AC systems generate heat through a process known as inductive heating which causes conventional bearings and seals in the vacuum-coating system to fail (see paragraph [0006]). It further mentions that inductive heating arises when an alternating current flows through a conductive material such as metal and the current generates an electromagnetic field that affects nearby and adjacent materials in two ways. First, magnetisable materials develop a magnetic resistance to the fluctuating electromagnetic field which causes the material to heat up. Second, this field causes electron flows (current) within conductive materials and the internal resistance to these current flows also generates heat whereas non-conductive materials do not heat up (see paragraph [0007]).

In the subsequent paragraphs [0008] and [0009] of the description two documents of the prior art are identified and described (the second one thereof is D6) which relate to AC sputter systems using rotatable target tubes. Then it is stated "it is an aim of the present invention to arrange a power coupling such that no current flows through bearings" and that this is achieved by the subjects of the independent claims (see paragraphs [0010] and [0011]). Finally, it is mentioned in this part of the description that "engineers have developed several designs to minimize the impact of inductive heating in high-power, AC-coating systems. These designs, however, have proven to be difficult to service and expensive to implement. Accordingly, a system and method are needed to address this and other shortfalls of present technology and to provide other new and innovative features" (see paragraph [0012]).

2.3 Taking account of this technical background it is evident that the technical problem underlying the present application and as characterised by the claimed requirement "to thereby limit the current that flows through the bearing" is based on high-power AC rotating magnetron sputter systems only. The described problems with the bearings and the seals - which are due to the effects of the applied high AC current which is responsible for the heating up of magnetisable materials and the induced eddy currents - are linked with the use of rotating target tubes, which are driven by a drive system, in combination with AC high-power for the magnetron sputtering of the coating in a vacuum chamber. It is clear that the described problems do not exist when high-power DC sputter systems are used.

2.4 Since independent claim 1 neither defines a sputtering target nor the rotating high-power AC magnetron sputter system including a drive system for the rotating target it does not comply with Article 84 EPC for not defining all the features which are necessary for solving the technical problems underlying said high-power AC rotating magnetron sputter systems, and are therefore considered to represent essential features.

2.5 The above assessment and conclusion was notified by the Board to the applicants in its communication of 2 August 2011, annexed to the summons to oral proceedings, see point 6.1.

2.6 The appellants' subsequent arguments to the contrary cannot hold for the following reasons.

2.6.1 First of all, it is quite clear that it is the applicant who decides which features are incorporated into the subject-matter of an independent claim. However, it is the task of the Examining Division, and by virtue of Article 111(1) EPC the Board of Appeal in examination-appeal proceedings, to examine whether an application complies with Article 84 EPC. If not, it is up to the applicant to make it comply, if it does not wish its application to be (irrevocably) refused. As far as essential features are concerned, these are primarily determined by the technical problem underlying the application as derivable therefrom (see point 2.1 above). Insofar it is also not relevant that the features in question are not - explicitly - highlighted in the present application as being essential.

2.6.2 The article (W. Anders, GRUR 2001, 867) submitted with the final submission of the appellants (see point V above) purportedly supporting the aforementioned appellants' position primarily deals with the German patent system which is not necessarily the same in respect of the requirements of clarity and support as the European system as defined in the EPC. It comprises some remarks with respect to the corresponding articles of the EPC and quotes some decisions of the Boards of Appeal. In the context of the issue of whether or not all essential features necessary for solving the technical problem have to be comprised in the main claim the decision "Steuerschaltung/ICI", i.e. T 32/82 (OJ EPO, 1984, 354) is cited and its content is briefly discussed (see page 870, left hand column, last paragraph to right hand column, second paragraph and footnote 52). However, this content corresponds to the statement in point 2.1 above and in this respect the article cannot support the appellants' view.

Furthermore, the Board remarks in this context that the mere filing of an article cannot substitute for a missing substantive submission.

In fact, the appellants' response dated 20 October 2011 is totally silent with respect to the named specific features of the high-power AC sputtering system and does not contain any counter-argument to the objections under Article 84 EPC raised in point 6.1 of the Board's communication. These objections were based on the aforementioned technical problem underlying the present application (see point 2.3 above) and addressed each of these missing features. In the absence of contrary argumentation the Board has no reason at all to deviate from its provisional opinion as given in that communication.

2.6.3 The argument based on decision G 0001/98 (OJ EPO 2000, 111, point 3.1 of the reasons) cannot hold either.

First of all, the passage quoted from point 3.1 thereof does not deal with the issue of clarity but only with the question what is covered by the subject-matter of a claim which comprises but does not individually claim plant varieties.

2.6.4 Secondly, the first part of the passage cited has been omitted which in full reads (emphasis added by the Board): "An inventor who has invented fastening means characterised in that they consist of a specific material has invented neither a nail, nor a screw, nor a bolt. Rather his invention is directed to fastening means generally. This is not a question of form but of substance: the applicant may claim his invention in the broadest possible form, ie the most general form for which all patentability requirements are fulfilled. If he has made an invention of general applicability, a generic claim is not the consequence of the verbal skill of the attorney, as the referring decision seems to suggest (Reasons, point 20), but of the breadth of application of the invention". From this passage it can therefore be concluded that, although the applicant may claim its invention in the broadest terms possible, the most general form of the claim has to fulfil the patentability requirements of the EPC, i.e. those of Articles 52 to 57 EPC. This decision is silent on the requirements of Article 84 EPC. Hence the cited decision G 0001/98 is not relevant for the present case.

In respect of Article 84 EPC and the requirement that the claim should comprise the essential features, the Board wishes to make reference to G 6/88, OJ EPO 1990, 114, point 2.5 of the reasons and G 1/04, OJ EPO 2006, 334, point 6.2.4 of the reasons, which both state that the claims must recite all the essential features for clearly and completely defining the invention.

2.7 Consequently, claim 1 of the single request contravenes Article 84 EPC. The single request is therefore not allowable.

3. Since no formally allowable request is on file the appellants' request for remittal to the department of first instance has to be rejected.