T 1673/15 05-11-2019

1. Admissibility of the appeal

1.1 In its reply to the appeal, the former respondent (opponent) pointed out that, in its decision regarding lack of inventive step, the opposition division had considered document D2 as being the closest prior art and had concluded that the obvious combination of D2 with D1 rendered the subject-matter of claim 1 of the First Auxiliary Request then on file (corresponding to the current Main request) obvious. In contrast to that, the proprietor in its statement of grounds of appeal argued for the presence of inventive step in claim 1 of the Main Request starting from D1 as closest prior art. Hence, there was no "sufficient link between the contested decision and the grounds of appeal". The appeal was therefore inadmissible (see former respondent's letter dated 4 March 2016, page 1, point B).

1.2 The board notes that the reasoning of the opposition division was based on Example 7 of D2 (starting on page 23 of D2) in which there is a direct reference to the apparatus ("processor") of D1 (page 23, line 20). The opposition division's objection was essentially based on the features of the apparatus of D1 and on the question of whether it would have been obvious for the skilled person to combine it with the description of Example 7 of D2, especially in relation to the "infrared preheat lamp" mentioned therein (page 23, lines 22 and 23 of D2); see points 22 to 33 of the impugned decision.

1.3 In the statement setting out the grounds of appeal, the appellant stated that "[t]he apparatus taught in document D1 is the closest prior art and D1 is identified in the introduction to this application" (last lines on page 2). The subsequent argumentation related to the features of this apparatus and whether it could be considered obvious to combine it with the disclosure of Example 7 of D2, in particular in relation to the "infrared preheat lamp" (see pages 3 to 6 of the statement of grounds of appeal).

1.4 In the board's view, the basis of the argument regarding inventive step was in both the impugned decision and the statement of grounds of appeal the disclosure related to the apparatus of D1. The particularity of having a direct reference to D1 in the Example of D2 renders it irrelevant which of the two documents was formally selected as closest prior art.

1.5 The board considers, therefore, that the statement of the grounds of appeal was sufficiently addressing the grounds of refusal and, hence, that the appeal is admissible.

2. Main Request

The claims of the Main Request correspond to the claims of the First Auxiliary Request underlying the decision under appeal and to claims 1 to 6 of the patent as granted.

2.1 Sufficiency of Disclosure (Articles 100(b) and 83 EPC 1973)

2.1.1 In the decision under appeal, the opposition division came to the conclusion that the current Main Request fulfilled the requirements of Article 83 EPC (see points 7 to 14 of the impugned decision).

2.1.2 In its reply to the grounds of appeal, the former respondent had argued that the Main Request did not fulfil the requirements of Article 83 EPC mainly because it was not possible for the skilled person to determine whether he was working within the claimed scope or not (see points 136 to 141 of the former respondent's letter of 4 March 2016).

2.1.3 The board notes that, according to established case law of the boards of appeal, the question of whether a skilled person is working or not within the claimed scope ("forbidden area" of a claim) is related to the definition of the scope of protection sought (Article 84 EPC) and not to the sufficiency of disclosure of the invention (Article 83 EPC); see Case Law of the Board of Appeals of the EPO, 9th Edition, July 2019, II.C.6.6.4 and II.C.8.2.

Moreover, since the claims of the Main Request correspond to granted claims 1 to 6, they are not open to objections under Article 84 EPC.

2.1.4 In the board's view, therefore, this objection of the former respondent is not relevant with respect to the ground of opposition under Article 100(b) EPC 1973.

2.1.5 The board is, thus, satisfied that the Main Request fulfils the requirements of Article 83 EPC 1973 and that the opposition ground under Article 100(b) EPC 1973 does not prejudice the maintenance of the patent according to this request.

2.2 Novelty (Article 100(a) and 54(1) EPC 1973)

2.2.1 In the opinion of the opposition division the subject-matter of the claims of the Main Request (First Auxiliary Request in the impugned decision) was new in view of documents D1, D2 and D3 (see points 15 to 20 of the decision under appeal).

2.2.2 In its reply to the grounds of appeal, the former respondent essentially re-iterated its objections from the first instance proceedings, arguing that the subject-matter of claim 1 is not new in view of documents D1, D2 or D3 (see points 11 to 66 of the letter of the former respondent dated 4 March 2016).

2.2.3 The board notes that the former respondent did not bring forward any arguments that contradict the conclusions of the opposition division that none of D1, D2, and D3 disclosed, directly and unambiguously, an apparatus according to claim 1 of the (current) Main Request comprising first heating means adapted to heat the exterior surface of the layer at a temperature sufficient to cause at least a portion of the layer to liquefy (see points 15 to 20 of the impugned decision).

The board shares, therefore, the opposition division's conclusion that the subject-matter of claim 1 of the Main Request is new over the disclosures of D1, D2 and D3.

2.3 Inventive Step (Articles 100(a), and 56 EPC 1973)

2.3.1 In the decision under appeal, the opposition division came to the conclusion that the subject-matter of claim 1 of the Main Request (then First Auxiliary Request) did not involve an inventive step in view of documents D2 and D1 (see points 22 to 33 of the decision under appeal).

It is uncontested that in Example 7 of D2 (starting on page 23) there is a direct reference to the apparatus ("processor") of D1 (page 23, line 20). The opposition division, combining the disclosure of Example 7 of D2 with the description of the apparatus in D1 reached the conclusion that the skilled person would arrive at the claimed apparatus in an obvious manner.

2.3.2 A point of contention during the opposition procedure was how the "infrared (IR) preheat lamp" mentioned in Example 7 of D2 (page 23, lines 22 and 23) was to be understood in view of the fact that there was no such lamp in the apparatus described in D1.

The opposition division was of the opinion that the mention of three different settings for the heating means in Example 7 of D2 (page 23, lines 21 to 24) indicated that there were three distinct heating means in the apparatus. The infrared lamp was, thus, a further heating means, which was added to the apparatus of D1. This infrared lamp was external to the drum and placed in a similar way as the first heating means (300) of the claim (see also Figure 6 of the patent); see points 25 to 29 of the impugned decision.

The appellant pointed out that, since there was no infrared lamp in the apparatus of D1, its mention in Example 7 of D2 in relation with the reference to D1 was a mistake and should not be taken into account. It pointed out further, that the infrared lamp in Example 7 of D2 was characterised as "preheat lamp" and this meant therefore that the infrared lamp was used to (pre)heat the drum, i.e. it was internal to the drum of the apparatus. There was nothing in D2 or D1 that would lead the skilled person to add an external heating means like the first heating means of claim 1 in the apparatus of D1 without hindsight (see pages 3 to 6 of the statement of the grounds of appeal).

2.3.3 For ease of understating, the board repeats here the relevant passage of Example 7 of D2:

"After irradiation the imaged multilayer plate was thermally developed, to remove the unexposed regions of Layer C and the part of Layer D which was over these regions, using a processor of the type described in U.S. Patent 5,279,697. The circumferential speed of the processor was fixed internally at 30 inches/minute (76.2 cm/minute), The infrared (IR) preheat lamp was set to 50% of full power; the temperature of the roll supporting the multilayer plate was set at 72°C; the temperature of the developing roll bearing the absorbent material was set at 140°C; and six passes (each pass being against fresh absorbent material) were used to thermally develop the plate." (page 23, lines 17 to 26; emphasis by the board; the U.S. Patent mentioned corresponds to D1).

The "roll supporting the multilayer plate" is the preheating drum 18 in D1. The "developing roll bearing the absorbent material" is the hot roller 78 in D1 (see Figure 6).

2.3.4 In the board's view, the skilled person reading this passage would first look up the mentioned processor (i.e. apparatus) in D1. As can be seen in Figure 6 of D1, the described apparatus is similar to the claimed apparatus (compare with Figure 6 of the patent). It is, however, evident that the apparatus of D1 does not comprise any infrared preheat lamp (see "300" in Figure 6 of the patent - the "first heating means" of the claim).

In the board's opinion, the skilled person would conclude that either the mention of the infrared preheat lamp in D2 or the reference to D1 was a mistake. In either case, the skilled person would not reach the conclusion that the processor mentioned in Example 7 of D2 was to be understood as the apparatus of D1 with an additional infrared lamp, especially since no hint of such lamp is to be found in D1 and no indication of a possible addition of such a lamp to the apparatus of D1 is present in D2.

2.3.5 In D1 the apparatus comprises a drum with preheating means, which heat the layer up to a temperature that is below the melting point of the non-irradiated part of the layer (see column 7, lines 27 to 37 and column 9, lines 20 to 31). Moreover, it is specifically mentioned that the substrate layer has a much higher melting point than the temperature of the preheated drum so that its mechanical properties are not "significantly altered" by the preheating (see column 7, lines 38-42).

The melting of the layer is achieved by the hot roller (78), which elevates the temperature of the web (76) of the absorbing material to a temperature exceeding the melting point of the upper layer of the film (see column 9, lines 58 to 66). D1 is concerned with determining the suitable processing temperature and speed for the preheated drum and the hot roller as well as other design criteria of the apparatus in combination with the properties of the film sheet to be processed (see column 10, lines 17 to 20). There is a detailed discussion (starting in line 21 of column 10) about the properties of the processed film, the speed and the temperatures of the roller and the drum. There is never any hint or suggestion of adding further heating means in the described apparatus.

In the board's opinion, there is nothing in D1 that would motivate the skilled person to add a further heating means, such as an infrared preheat lamp in the apparatus of D1.

2.3.6 Even if the opinion of the opposition division were to be followed, considering plausible that the skilled person reading Example 7 of D2 would come to the conclusion that there were indeed three distinct heating means in the apparatus ("processor"), the infrared lamp, the roll supporting the multilayer plate (drum) and the developing roll bearing the absorbent material (hot roller - second heating means of the claim), the board's view is that the skilled person would still not arrive at the claimed apparatus.

2.3.7 In Example 7 of D2 the infrared lamp is characterised as "preheat lamp". The only indication about the temperature of this lamp is that it is set at 50% of its power, which, without any indication about the lamp's nominal power, does not provide any useful information.

The board agrees with the appellant that, in the context of D1, "preheating" the layer is to be understood as heating the layer to a temperature near but below its melting point (i.e. below the temperature T2 of claim 1; see also column 7, lines 30 to 37 of D1).

Since in Example 7 of D2 the apparatus of D1 is used, the "preheat infrared lamp" should be interpreted in the same context as in D1, i.e. that the lamp is used to preheat the composition layer at a temperature near but below its melting point (i.e. below T2).

2.3.8 In the board's view, therefore, there is nothing in D1 (or D2) that would motivate or suggest to the skilled person to adapt the infrared preheat lamp to heat the exterior surface layer to a temperature that is equal to or greater than its melting point, i.e. to a temperature at which at least a portion of the exterior layer would liquefy.

Hence, the board's conclusion is that even if the skilled person were to combine the disclosures of D2 and D1, he would not arrive at the claimed apparatus.

2.3.9 Since D3 does not disclose any apparatus comprising heating means corresponding to the first heating means of claim 1, a possible combination of D1 or D2 with D3 would not lead to the subject-matter of claim 1 of the Main Request, either.

2.3.10 The board's view is, therefore, that the subject-matter of claim 1 of the Main Request involves an inventive step within the meaning of Article 56 EPC 1973. The same applies for claims 2 to 6, which depend on claim 1, directly or indirectly.

2.4 Concluding, the board is satisfied that, taking into account the amendments made by the proprietor (appellant), the patent and the invention to which it relates meet the requirements of the EPC and EPC 1973 and the patent is to be maintained on the basis of the Main Request (Article 101(3)(a) EPC).