T 1496/11 12-09-2012

1. The appeal is admissible.

2. Priority right, Article 87 EPC 1973

2.1 The general presentation of the invention on page 3, lines 21 to 29 of the priority document does not constitute a basis for omitting the "printed or embossed feature" from the security device disclosed in the context of the embodiment in which the self-verification means comprises an optical lens (priority document, page 4, line 13 to page 5, line 1) and on which the subject-matter of claim 1 is based, because this would constitute an intermediate generalisation in which said feature, which was only disclosed in combination with those of the embodiment, would have been arbitrarily omitted from the context of that combination.

Similarly, the alternative "distorting lens" merely constitutes "another form of optical lens" (priority document, page 4, lines 28 to page 5, line 1) and thus has to be understood in the overall context of the embodiment with the "optical lens" taken as a whole (priority document, page 4, line 13 to page 5, line 1) so that this does not form a basis for the omission of the "printed or embossed feature".

Thus the security device according to claim 1 (main request) has been generalised to include features produced by other means such as, for example, hot stamping or photo-lithography. The subject-matter of claim 1 (main request) thus does not constitute the same invention as that set out in the priority document (Article 87(1) EPC 1973).

2.2 Although the transparent portion is systematically described as "essentially indicia free" throughout the priority document, when understood in the context of the priority document taken as a whole, the requirement "essentially indicia free" does not go beyond the condition that the transparent portion in the security document has to be usable as a means for verifying, enhancing or optically varying a security device elsewhere on the document (priority document, page 3, lines 18 to 20) even when indicia are present in the transparent portion. The possible presence of translucent indicia in the transparent portion, as raised by the appellant, is not explicitly discussed in the priority document but would, in any case, still be subject to this condition.

Thus, the absence of an explicit statement in claims 1 and 9 to the effect that the transparent portion has to be "essentially indicia free" in itself does not make the subject-matter of claims 1 and 9 a different invention with respect to the one disclosed in the priority document, because these claims contain the limitation "that the self-verification means (11) can be used to verify or inspect the security device (10)".

2.3 The addition in claims 1 and 9 (main request) that the single flexible sheet may be "bent" instead of "folded" does give rise to an invention different from that disclosed in the priority document for the following reason: Folding the single flexible sheet to bring the first and second portions into register so that the self-verification means can be used to verify or inspect the security device necessarily involves bending the single flexible sheet. Conversely, bending the single flexible sheet to bring the first and second portions into register so that the self-verification means can be used to verify or inspect the security device is a process which can also be described as "folding". The addition of the term "bent" to the wording of claims 1 and 9 does not add any new possibilities which were not immediately and unambiguously derivable from the disclosure of the prior art document.

The appellant's argument that the covers of a bank pass book, which, for the sake of this argument, are to be assumed rigid and thus may be folded but not generally bent, cannot be accepted by the board, because the security document claimed in claims 1 and 9 (main request) comprises a single flexible sheet. The embodiments of the invention concern (flexible) banknotes and there is no support elsewhere in the patent in suit of a limitation to a security document with rigid covers joined to the single flexible sheet so as to only permit folding about a hinge-like region connecting these rigid covers but which is otherwise prevented from bending by the rigidity of the covers.

Thus, the addition of the term "bent" to the wording of claims 1 and 9 in itself does not make the subject-matter of claims 1 and 9 a different invention with respect to the one disclosed in the priority document.

2.4 The addition in claims 1 and 9 (main request) that the single flexible sheet may be "twisted" instead of or in addition to being "folded" was no longer contested and has a basis in the first paragraph of page 15 of the priority document.

2.5 The subject-matter of claim 9 (main request) thus constitutes the same invention as that set out in the priority document (Article 87(1) EPC 1973).

3. Late filed document G25; res judicata; request for remittal and novelty

In view of the foregoing, the subject-matter of claim 1 (main request) is only entitled to the filing date of 08 October 1997.

The divisional application G25 of the patent in suit discloses an embodiment in which a flexible banknote may be folded upon itself and a self-verification means in form of an optical lens used to view an area of microprinting which constitutes the security device (column 8, lines 21 to 34 and figures 1 and 2). The description of this embodiment is identical to that provided in the priority document (page 9, lines 19 to 27 and figures 1 and 2). This embodiment of the divisional application G25 is therefore entitled to the claimed priority date of 10 October 1996 and thereby anticipates the subject-matter of claim 1 (main request) which is only entitled to the filing date of 08 October 1997. These new facts were not addressed in the earlier decision T 1265/07 so that, according to established case law (e.g. T 27/94, item 2; T 378/88, item 4) there is no case of res judicata.

For these reasons, the divisional application G25 is prima facie relevant and the board exercised its discretion to introduce it into the proceedings.

The board considered that, in the absence of an absolute right to have an issue decided upon by two instances, the question of novelty with respect to the divisional application G25 did not warrant a remittal at this advanced stage of the proceedings. The board thus exercised its discretion to refuse the respondent's request for remittal to the first instance.

The lack of novelty of the subject-matter of claim 1 (main request) with respect to the divisional application G25 under Article 54(3) EPC was subsequently not contested by the respondent.

Hence, the subject-matter of claim 1 (main request) lacks novelty with respect to the divisional application G25 under Article 54(3) EPC.

4. Auxiliary request 1

Claim 1 according to the auxiliary request 1 specifies that the security device "comprises a printed or embossed feature" and is thus the same invention as that disclosed in the priority document.

5. Inventive step, Article 56 EPC (auxiliary request 1)

5.1 Claim 1

5.1.1 The subject-matter of claim 1 (auxiliary request 1) differs from the invention disclosed in document G1 in that the claimed security document comprises a single flexible sheet with an optical lens for inspecting, enhancing or optically varying the security device. Such a security document has a different structure from that of a booklet used for bank pass books (document G1) or passports.

Document G1 does not disclose the cover as a single flexible sheet nor does it teach disposing the reading screen and the scrambled indicia laterally spaced on a single flexible sheet. Document G1 mentions the prior art possibility of a security feature involving a lenticular screen (column 1, lines 23 to 29) in a conditional manner ("If this system were used …"). It thus remains indeterminate, whether this possibility forms part of the teaching of document G1 or not. However, according to document G1, the preferred method of scrambling the indicia involves a different arrangement with a regularly lined image disposed on a regularly lined background together with an overall random pattern (column 1, line 40 to column 2, line 33) and is used in the embodiment of document G1.

Even though the term "security document" may generally be understood to refer to items such as passports, security passes, identity cards, banknotes, credit and identity cards (see page 12 of the grounds of appeal), it is not clear that this term would necessarily encompass all of these types of security documents in the context of document G1, because not all security documents are in book form. Security documents not in book form include some typically inherently rigid security documents, such as credit or identification cards, while others such as banknotes are usually in form of a single flexible sheet. There are no indications in document G1 as to whether or how the invention may be applied to security documents not in book form. Since the invention of document G1 is only disclosed with the example of a bank pass book, the reference to security documents in general thus does not immediately extend the invention of document G1 in any obvious way to security documents not in book form. Thus, it cannot be deemed obvious to the skilled person that security documents which are not in book form may also be suitable for the invention of document G1 without having been motivated to investigate such matters.

Even if, as advanced by the appellant, the person skilled in the development of security features were to consider applying the invention of document G1 to banknotes, he would arrive at a banknote incorporating a method of scrambling the indicia which involves the arrangement with the regularly lined image disposed on a regularly lined background together with an overall random pattern (column 1, line 40 to column 2, line 33). There is no motivation in document G1 to cause the skilled person to deviate from the preferred embodiment and instead, as an additional measure, seek to investigate the possibility of configuring part of a banknote as a lenticular screen in accordance with the passage column 1, lines 23 to 29 of document G1.

Although documents G1, G2 and G3 each disclose an invention in which two elements of a security device are brought into register for the purpose of verification, this only occurs in the context of the particular security device respectively disclosed in each of these documents. None of these documents teach that the process of folding and bringing into registry a self-verification element and a security device is a general principle in which the nature of the self-verification element and security device may be arbitrarily varied. A multiple step process in which a skilled person first has to consult several documents, such as documents G1, G2 and G3, in order to infer a general teaching of folding a transparent verification feature of a single flexible sheet onto a security feature laterally spaced on the same single flexible sheet for the purpose of self-verification before then selecting an alternative security device and verification means such as spherical microlenses and microimages (document G19) demonstrates a lack of obviousness rather than the contrary, because there is no motivation for the skilled person to carry out such an investigation, other than hindsight.

5.1.2 Document G19 discloses a security document in which an array of micro-lenses is fixed in the thick plastic substrate above the microimages (page 21, lines 9 to 20, figure 5). If document G19 is considered to form the closest prior art, the subject-matter of claim 1 (auxiliary request) differs from the embodiment of figure 5 in that the lens and the printed feature are spaced laterally on the single flexible sheet and thus require folding the lens onto the printed feature for inspecting or verifying the security document. The verification process is thus not as immediate as with the security document of document G19 which only requires looking at the security feature. The kind of security documents considered in document G19 are "banknotes, credit cards and the like" (page 1, lines 5 to 9). It is not clear what would motivate a skilled person to consult a document concerned with a bank pass book such as document G1 when concerned with "banknotes, credit cards and the like". Nevertheless, in order to arrive at the subject-matter of claim 1, the skilled person, in combining the teachings of documents G19 and G1, would have to selectively choose to retain the plastic substrate, the microlenses and microimages from the invention of document G19, discard the book, the printed reading screen and scrambled indicia of the invention disclosed in document G1, while laterally spacing the microlenses from the microimages on a same single flexible sheet. In particular, placing self-verification means spaced laterally from the security device on a "single flexible sheet" is not derivable from either document and there is, thus, no motivation for the skilled person to do so, other than hindsight.

5.1.3 A further solution disclosed in document G19 involves the use of a separate verification device incorporating the microlenses (page 26, figure 6). Document G2 discloses, as an alternative to a separate testing device, a security document in which the two multilayer coatings are filters which, when placed in series, would not transmit any light and which are affixed to the security document, so that by folding, one coating can be tested against the other using any white light source (page 931, last paragraph, figure 11). Similarly, document G3 proposes as an alternative to separate testing devices (column 1, lines 22 to 27 and 34 to 36), a security document with two apertures with polarising films such that the axes of polarisation are mutually at right angles when the security document is folded so as to bring these two apertures together.

In order to arrive at the subject-matter of claim 1 by combining the teachings of document G19 and either one of documents G2 and G3, the skilled person would have to selectively choose to retain the plastic substrate, the microlenses and microimages from the invention of document G19, discard the multilayer films or polarising films of the inventions disclosed in documents G2 and G3 but laterally space the microlenses from the microimages on a same single flexible sheet. There is no motivation for the skilled person to select this particular combination of features. Furthermore, the embodiment shown in figure 5 of document G19 already avoids the need for a separate testing device by incorporating the lenticular screen above the printed image. Thus, there is no motivation for the skilled person to selectively isolate such a particular combination of features from document G2 or G3, other than hindsight.

5.1.4 Therefore, the subject-matter of claim 1 (auxiliary request 1) is based on an inventive step (Article 56 EPC 1973).

5.2 Claim 9

5.2.1 The subject-matter of claim 9 (auxiliary request 1) differs from the invention set out in document G1 in that the claimed security document comprises a single flexible sheet printed with metameric inks and an optical filter for viewing the thus printed area.

5.2.2 Document G5 discloses the use of metameric inks for inhibiting forgery of thus printed matter and involves the use of a separate filter for verification (page 1, lines 10 to 29 and 59 to 62; page 2, lines 66 to 78). The subject-matter of claim 9 (auxiliary request 1) differs from the invention set out in document G5 in that the claimed security document further includes the optical filter for viewing the area printed with metameric inks when folded so as to bring the filter into register with the printed area.

5.2.3 There is no indication in either document G1 or document G5 that the security device and the self-verification means are to be spaced apart on a single flexible sheet. In addition, there is no indication in document G5 that the filter is suitable for integration into a security document. The combination of the teachings of documents G1 and G5 thus, at best, leads to a bank pass book with a security device printed with metameric ink and a reading screen including the filter. Thus, starting from either document G1 or document G5, in combination with the other one of documents G1 and G5, does not lead the skilled person to the subject-matter of claim 9, even if he were motivated to make such a combination.

5.2.4 Document G3 mentions invisible markings on valuable documents such as bank notes and identifies the problem of avoiding the inconvenience that these require separate verification equipment (column 1, lines 10 to 27). Document G3 discloses the use of areas of polarisation with polarisation axes mutually at right angles when folding the security document brings together these polarising areas (column 1, lines 47 to column 2, line 11, figures 1 to 9). Thereby document G3 solves the problem of avoiding additional equipment for verification.

The subject-matter of claim 9 differs from the inventions disclosed in documents G3 (or in document G2) by the use of metameric inks for the security device and of an optical filter as self-verification means.

It is not clear why the skilled person would be motivated to replace the polarising filters of document G3 or the multilayer filters of document G2 by other means. There is also no indication in either document G3, G2 or G5 that the kind of optical filter for verifying the metameric inks is immediately suitable for integration into a single flexible sheet. Therefore, the skilled person starting from document G5 is not directed towards a single flexible sheet with a security device printed with metameric ink laterally spaced from a filter for these metameric inks forming the self verification means.

5.2.5 The subject-matter of claim 9 (auxiliary request 1) is based on an inventive step (Article 56 EPC 1973).

5.2.6 Verification method claim 20 is carried by the independent device claims 1 and 9 and is thus also based on an inventive step (Article 56 EPC 1973).

6. Request for reimbursement of the appeal fee

A requirement for reimbursement of the appeal fee under Rule 103(1)(a) EPC is that the appeal itself be deemed allowable. As this requirement has not been met, the reimbursement of the appeal fee cannot be allowed (Rule 103(1)(a) EPC).