T 0849/11 06-03-2015

Article 84 EPC

1. Main request

1.1 Statutory law

(A) Article 84 EPC requires that the claims define the matter for which protection is sought.

This means that

(1) the claims must be clear in themselves when read by the skilled person.

(2) the method for measuring a parameter (or at least a reference thereto) must appear completely in the claim itself, if the invention is characterised by a parameter to clearly define the scope of the claims.

This is set out in numerous decisions (e.g. T 1156/01 (reasons 2.2 and 2.3), T 412/02 (reasons 5.6 to 5.9), T 908/04 (reasons 3.1 to 3.8), T 555/05 (reasons 3.2.7) and T 1497/08 (reasons 2.2 to 2.6)).

(3) the applicant who chooses to define the scope of the claim by parameters should ensure that a skilled person can easily and unambiguously verify whether he is working inside or outside the scope of the claim.

(B) the requirements of Article 84 EPC would still be met if it could be convincingly shown that

(i) the method to be employed belongs to the skilled person's common general knowledge, or

(ii) all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy (see e.g. T 1156/01 (reasons 2.3)).

1.2 The present case

In the present case, claim 1 contains several parameters, namely

(a) the "visible light reflectance",

(b) "reflected color" and

(c) the "luminous transmittance".

As to (c), a measurement method is given in claim 1 for the luminous transmittance (Lta) and it is accepted that said method makes it possible to provide reproducible data for the Lta.

As to (b), a measurement method is given for the reflected color. However, this indication is incomplete, since it is not specified on which side of the article the measurement is to be taken.

As to (a), no measurement method at all is contained in claim 1 for the visible light reflectance.

As far as the reflected color (b) and the visible light reflectance (a) are concerned, the board will therefore verify whether conditions (i) and (ii) (see 1.1. (B)) are fulfilled.

1.3 Reflected color / visible light reflectance

Condition (ii) [result is the same, irrespective of the methodology]

As is apparent from Table 1 of the application as filed, the reflected colour was determined on the coated side and on the non-coated side.

The visible light reflectance values were calculated accordingly (R1 and R2) from the L* values obtained. There are considerable differences between the values L*, a* and b* obtained when measured on one side of the article compared to the values obtained from the measurements on the other side. This is also true for the calculated visible light reflectance values (divergence of up to 20%).

Therefore condition (ii) cannot be considered to be fulfilled.

Condition (i) [method is part of common general knowledge]

Furthermore, it cannot be argued that it was either known to the skilled person or evident in view of the disclosure on page 5, line 28 ("whether R1 or R2") that the reflected colour of the article is always determined on both sides of the article, since in samples A to E of example 1 only one value is given for L*, a* and b*, respectively.

It has not been specified on which side this value was obtained. This finding is also in line with the prior art, in which it is specified on which side the reflected colour was determined (see for example D3: claim 1: glass side reflectance vs. coated side reflectance; D4: column 5, lines 56 and 57, column 6, lines 12 and 13: "from the uncoated glass surface"; D10 and D11: claim 1: "reflected color when viewed from the glass side"; D15: column 5, lines 65 to 67 and D16: column 5, lines 62 to 64: "luminous reflectance [...] from the coated side [...] from the uncoated side of the glass").

Therefore condition (i) is considered not to be fulfilled either.

1.4 Visible light reflectance

1.4.1 Condition (i)[method is part of common general knowledge]

The "visible light reflectance" is a parameter for which no generally accepted measuring method exists. At the priority date of the patent application, several methods, such as ASTM 308-85 (see D11: column 9, lines 24 to 30) and JIS R3106, existed. They made it possible to determine simultaneously transmission, visible light reflectance and colour values.

Therefore, in a first approach it could be accepted that visible light reflectance (a) and luminous transmission (c) are obtained under the same conditions.

However, a closer look shows that this is not in line with the disclosure of the present patent application. As is apparent from Table 1 ("A 2°") and indicated in claim 1, the luminous transmittance (parameter (c)) was determined using C.I.E. (1976) standard illuminant "A" with a 2° observer over the wavelength range of 380 nm to 770 nm using a Lambda 9 spectrophotometer commercially available from Perkin Elmer or a BYK-Gardner TCS spectrophotometer commercially available from BYK-Gardner (see also page 23, lines 13 to 16 of the application). However, the reflected colour values (parameter (b)) L*, a* and b* shown in Table 1 were determined using an illuminant "D65" with a 10° observer. The visible light reflectance values (parameter (a)) R1 and R2 were apparently calculated from L* as indicated in the last column of Table 1.

Therefore, the luminous transmittance (parameter (c)) and the visible light reflectance (parameter (a)) values presented in Table 1 were not obtained under the same measurement conditions. The skilled person would not know which conditions to employ for measuring the visible light reflectance (parameter (a)) indicated in claim 1.

Condition (i) mentioned above (point 1.1 (B)) cannot be considered to be fulfilled.

1.4.2 Condition (ii) [result is the same, irrespective of the methodology]

It is known that the values obtained with a 10° observer are not identical to the values obtained with a 2° observer. No data are available to prove the contrary or to prove that the values obtained by the different methods are within the appropriate limit of measurement accuracy.

Condition (ii) cannot be considered to be fulfilled either.

1.4.3 Disclosure of the description

According to the description (page 5, lines 27 to 29), the reflected colour (parameter (b)) is determined with a 10° observer, as is conventional in the automotive field. This does not mean that the skilled person would have recognised from this that the visible light reflectance (parameter (a)) was also always determined with a 10° observer, since this indication related to the reflected colour value only.

In addition, it has not been indicated there how the visible light reflectance values R1 and R2 (parameter (a)) presented in Table 1 are calculated from L*. Furthermore, claim 1 is not really limited to the automotive field, so it cannot be argued that it was implied that all the parameters (a), (b) and (c) present in claim 1 had to be regarded as known to the skilled person of the automotive field. As indicated above (point 1.4.1), it rather seems that the skilled person would have expected all the parameters to be determined under the same conditions in view of the standard methods known to him.

1.4.4 Parameter ranges

A coated article according to claim 1 comprises

- a first substrate selected from glass or polymeric material; and

- a multi-layer coating stack consisting of one aesthetic coating having a thickness of up to 1000­ Å and consisting of at least one zinc stannate layer having a thickness in the range of 100 Å to 300 Å and

at least one titania layer having a thickness in the range of 100 Å to 300 Å deposited over at least a portion of the substrate.

The appellant alleged that such a coated article will always have the parameters within the ranges given in claim 1.

This is neither plausible nor corroborated by data.

Although claim 1 has been considerably restricted with respect to claim 1 as originally filed, there are still many embodiments falling within the scope of claim 1 that can vary substantially depending on the type of polymer or type of glass and thickness of the first substrate, and depending on the thickness and crystal structures of the zinc stannate and titania to be deposited on the substrate.

There is not a single example or sample falling within claim 1 and that would support said allegation.

This is also in line with the argument brought forward by the appellant with respect to Article 83 EPC that the skilled person would only need to conduct a very limited number of experiments to obtain further embodiments within the whole scope of the claims. If the allegation discussed above was correct, no experiments at all would be necessary.

The board cannot accept this line of argument.

1.5 Conclusion

Neither the measuring method of the reflected colour (parameter (b)) nor that of the visible light reflectance (parameter (a)) has been clearly defined, so that the scope of claim 1 is not known.

Claim 1 does not fulfil the requirements of Article 84 EPC.

2. First to third auxiliary requests

The limitations introduced in the auxiliary requests do not overcome the objections raised to claim 1 of the main request.

It is true that claim 1 of the third auxiliary request, which is the most limited claim 1 of all the requests, is now limited to a coated article consisting of a first substrate selected from glass or polymeric material; and one aesthetic coating consisting of a first stannate layer having a thickness in the range of 100 Å to 300 Å and a second titania layer.

However, the allegation that such an article will inevitably have the parameters within the range claimed can still not be followed, for the same reasons as given in 1.4.4 above. The type of substrate and the thickness and crystal structure of stannate and titania have a considerable influence on luminous transmittance (parameter (c)) and visible light reflectance (parameter (a)) so that this allegation does not appear plausible.

Therefore, the objection raised to the main request also applies to the claims of the auxiliary requests, and these requests must also fail.