T 0013/11 (Security ink/SICPA) 03-02-2015

1. The appeal is admissible.

2. Main request

2.1 This request comprises the claims as granted (see point III a) above). It was disputed whether grounds under Article 100(c) EPC prejudiced the maintenance of the patent as granted, in particular in view of the amendments in claim 1.

2.2 In particular, it was disputed whether or not the feature

(a) at least one dye or pigment having property A

and

(b) at least one other dye or pigment having property B

in claim 1 as granted has a basis in the application as originally filed (where properties A and B are as defined under point IV above).

2.3 The appellant indicated original claims 1 and 2, example 4 and pages 4, 5 and 19 of the description as originally filed as a basis for amended claim 1 as granted (see point V above).

2.4 Whereas original claim 2 is silent on properties A and B, original claim 1 requires that

at least one dye or pigment having property A and/or B

is present in the ink.

Original claim 1 thus leaves open whether the same or different dyes or pigments show properties A and B. Hence, the combination of original claims 1 and 2 is not sufficient as a basis for claim 1 as granted.

2.5 The appellant also relied on page 4, line 4 ff, in particular on lines 11-18, of the application as filed as a basis for the amendments. The passage on page 4, lines 11-18, reads as follows: "The marking on a value document or article according to the present invention comprises i) visible colors which are not used in ordinary color reproduction or printing, ii) narrow-band absorbers which do only yield pastel shade color, and iii) invisible 'colors' which correspond to absorption outside the visible range (400 to 700 nm) of the electromagnetic spectrum, either in the ultraviolet (below 400 nm) or in the infrared region (above 700 nm)".

This sentence does, however, not directly and unambiguously disclose that the feature i) (which corresponds to property A) and feature ii) (which corresponds to property B) may belong to different dyes or pigments.

This is confirmed in the following paragraph on page 4 ("Thus, the present invention is related to ...") which is related to inks containing at least one dye or pigment having property A or C and/or B, and thus is even less specific than original claim 1.

2.6 Whether or not pages 5 and 19 of the application as filed disclose that features A and B have different effects and advantages and both contribute to the solution of the problem posed is not relevant for the current issue as neither of these pages discloses that at least one dye or pigment is to have the property A and at least one different dye or pigment is to have property B.

2.7 The view that the amendment was only a selection of four out of six possible combinations covered by original claim 1 was raised on pages 6 and 7 of the statement setting out the grounds of appeal.

As the board pointed out in section 3.8 of its communication, the analysis of the appellant only covers the cases where two different dyes or pigments absorbing in the visible region are used in addition to the one absorbing IR- or UV-radiation. It does not take into account the cases covered by original claim 1 where only one "visible" dye or pigment is used.

The appellant provided no arguments as to why it deemed that the combination of

(a) the selection of at least two dyes or pigments

absorbing visible light from "at least one" such

dye or pigment with

(b) the selection of one dye or pigment having

property A and a different dye or pigment having

property B from dyes or pigments having properties

A and/or B

was directly and unambiguously disclosed in original claim 1.

2.8 Finally, the appellant relied on example 4 as originally filed. This example relates to an ink prepared by mixing Ink 1, Ink 2, Ink 3 and Ink 4 of formulation 3 (see page 25, lines 5-8, of the application as filed). Each of these Inks contains one specific dye or pigment. These dyes or pigments have absorption maxima at 550 nm (Ink 1), 610 and 680 nm (Ink 2), 440 nm (Ink 3) and 800 nm (Ink 4) (see pages 23 and 24 as originally filed). Only the absorption maximum of 800 nm of Ink 4 is outside the visible region (it absorbs in the infrared). Hence, the product of example 4 contains three specific dyes or pigments having a total of four absorption maxima in the visible region.

Whereas the appellant argued that this example fell under the scope of claim 1 and thus was a pointer to this claim, the respondent considered claim 1 to be an undue generalisation of this example.

First of all, the appellant pointed out that he never had argued that claim 1 was a generalisation of example 4 (see the statement dated 21 February 2011 setting out the grounds of appeal, the second complete sentence on page 4). Therefore, the board does not need to give reasons why it concurs with the respondent that such a generalisation would not be permissible under Article 100(c) EPC.

Secondly, as pointed out by the respondent, example 4 is silent on property B and the appellant did not provide any evidence that any of the dyes or pigments used in this example had this property (see respondent's letter dated 29 June 2011, the last complete paragraph on page 4). For this reason alone, example 4 cannot be a "pointer" to the subject-matter claimed.

2.9 For theses reasons, grounds under Article 100(c) EPC prejudice the maintenance of the patent on the basis of the claims as granted. Therefore, the main request was refused.

3. Auxiliary request

3.1 The claims of this auxiliary request were filed under cover of a letter dated 5 December 2014 i. e.

- after the statement setting out the grounds of appeal dated 21 February 2011,

- after the board issued a communication and summoned the parties to oral proceedings on 4 August 2014 and

- prior to the oral proceedings before the board which took place on 3 February 2015.

This new auxiliary request replaced the one filed with the statement setting out the grounds of appeal, the claims of which being identical to those of the auxiliary request filed on 8 July 2010 which was decided upon in the decision under appeal.

3.2 According to decision T 936/09 of 1 March 2012, headnote, "the patent proprietor is not free to present or complete his case at any time that he wishes during the opposition or opposition appeal proceedings, depending, for example, on his procedural strategy or his financial situation. In view of the judicial nature and purpose of inter partes appeal proceedings (...) and in the interests of an efficient and fair procedure, the board considers it necessary that all parties to opposition proceedings complete their submissions during the first-instance proceedings in so far as this is possible. If a patent proprietor (...) chooses not to complete his submissions at the stage of the first-instance proceedings, but rather presents or completes his case only in the notice of appeal or the statement setting out the grounds of appeal, then he will need to face the prospect of being held to account for such conduct by the board when, for example, exercising its discretion under Article 12(4) RPBA. (...)."

3.3 The board concurs with these principles. In the board's judgment, the above considerations, which were applied in the exercise of the discretion under Article 12(4) RPBA, can also be applied by the board when exercising its discretion under Article 13(1) RPBA. Otherwise it would be easily possible for the appellant to circumvent the provisions of Article 12(4) RPBA (T 361/08 of 3 December 2009, point 13 of the Reasons).

The board therefore considers, in agreement with the respondent, that admission of the present auxiliary request hinges on the question whether or not the appellant could have presented this auxiliary request during the opposition proceedings.

3.3.1 In its opposition brief, the respondent inter alia based its opposition on grounds under Article 100(c) EPC (see the letter dated 2 March 2009, section 2 on page 4). In particular, it was argued that there was no basis in the application as filed for the requirement in claim 1 as granted for the feature that at least one dye or pigment had property A whereas a different dye or pigment had property B.

In its communication dated 29 April 2010 annexed to the summons to oral proceedings, the opposition division gave a reasoned preliminary opinion why it concurred with the opponent in that respect (see point 1.3 of the communication).

The patent proprietor filed claims forming the base of an auxiliary request on 8 July 2010. These claims differed from the ones as granted in that granted claims 1 and 2 were combined (see section 2 on page 5 of the respective letter). Neither did this amendment modify or replace the feature objected to by the opponent and the opposition division, nor did the patent proprietor give any reasons in said letter why the combination of granted claims 1 and 2 were to overcome said objection.

No further auxiliary request was submitted during the opposition proceedings.

3.3.2 Consequently, the patent proprietor and present appellant could have filed claims which were likely to overcome the objection under Article 100(c) or 123(2) EPC in response to the communication of the opposition division at the latest.

The appellant's argument that the auxiliary request resulted from consideration of the board's preliminary opinion in the annex to the summons to oral proceedings does not justify the admittance of the late filed request. First, the board's preliminary opinion did not introduce any new issues, facts, or arguments which would justify the appellant's auxiliary request. Second, parties to appeal proceedings are not entitled to wait for the board's preliminary opinion before dealing in substance with an issue or argument raised by the other party (T 1732/10 of 19 December 2013, points 1.3 and 1.4 of the Reasons). For a complete reply to the objections raised by the opponent under Article 100(c) EPC, the appellant should therefore have filed an appropriate set of amended claims during the opposition proceedings. In doing so, the present situation could have been avoided where the admission of the auxiliary request would have either required consideration by the board of grounds for opposition on which the opposition division had not taken a decision, or remittal to the department of first instance for further prosecution.

3.3.3 For these reasons, the board exercised its discretion under Article 13(1) RPBA by not admitting the auxiliary request into the proceedings.

4. As mentioned above, grounds under Article 100(c) EPC prejudice the maintenance of the patent based on the main request of the appellant. The sole auxiliary request of the appellant was not admitted into the proceedings. Consequently, the appeal was dismissed.