T 2508/18 10-10-2019

Main request

1. Clarity

1.1 The claimed invention relates to a removable double-sided adhesive anchor, in the form of a circular disc, for temporarily securing an object to a support. A first and a second adhesives are present on the two sides of the disk. The idea is to interpose the disk between the surface of a support and the object which needs to be anchored. The anchor can be used, for example, for securing a plate to a table, so that an infant is prevented from throwing or knocking over the plate.

1.2 Claim 1 requires that the first and the second adhesives have an adhesive tack in the range of from 300 to 500 Newtons per m**(2) and that in use the adhesives enable the anchor to be stuck to a support surface, and an object to be stuck to the anchor, so that:

- an infant cannot remove the anchor from the support surface and the object from the anchor, and

- an adult is required to remove the anchor from the support surface and the object from the anchor, and

- the support surface and the object are not normally damaged when the anchor and the object are removed from the support surface.

1.3 As far as the first feature is concerned, requiring that the first and the second adhesives have an adhesive tack in the range of from 300 to 500 Newtons per m**(2), neither the claims nor the description specify how this parameter has to be determined. The testing method and the conditions for testing are not indicated. As set out in numerous decisions of the boards of appeal of the EPO (see the Case Law of the Boards of Appeal, 9th edition, II.A.3.5 and decision T 908/04), the indication of the methodology used for determining a parameter only becomes superfluous if it can be shown that the skilled person would promptly recognise which method and conditions to employ, because, for instance, this methodology was the methodology commonly used in the technical field, or because all the methodologies known in said field would yield the same result, within the appropriate limit of measurement accuracy. This was not shown in the present case.

1.4 In the statement setting out the grounds of appeal, when addressing the objection raised in the appealed decision, that the application failed to specify the testing method, the appellant argued that "a skilled person would not require a definition of adhesive tack and/or knowledge of the method to measure the range of adhesive tack". In its reply to the communication issued by the board in preparation for the oral proceedings, which addressed again this issue, the appellant simply stated that the term Newtons per m**(2) was clear. Quoting D5, it also submitted that this parameter had "the same understanding in the adhesive industry as miles per hours in the motor industry". The issue concerning the failure to indicate the method for measuring adhesive tack was, however, not addressed. In this situation the board can only conclude, that the aforementioned range is unclearly defined.

1.5 Even assuming in the appellant's favour, that the aforementioned parameter could be unambiguously determined, the scope of claim 1 would be unclear.

1.6 Claim 1 is characterised by further functionally defined features. Firstly, claim 1 requires that the adhesives on the two sides of the anchor enable the anchor to be stuck to a surface and to an object, so that the anchor can be removed by an adult, but not by an infant. It is not disputed that the idea underlying the invention, which is reflected in this feature, is immediately clear and that, as stated by the appellant, "any parent anywhere in the world would clearly understand this". However, this does not mean that the feature is clear, in the sense that it clearly defines the scope of claim 1.

1.7 The force of an adult is typically higher than that of an infant. However, these forces can vary considerably depending, for example, on age, gender, physical state of the individual considered. No evidence is available, showing that a commonly recognised standard exists, defining the force which can be exercised by an adult or by an infant. Consequently, no standardised method can be put in place, for determining whether an anchor satisfies the aforementioned functional requirement. Accordingly, this functional feature is unclear.

1.8 A further functional feature characterising claim 1 requires that the adhesives enable the anchor to be detached without damaging the object and the support surface to which it is attached. According to the appellant "any person anywhere in the world would understand this requirement". The board concedes that the idea underlying this second functional requirement is also easily understood. However, once again, there is no evidence that standardised criteria exist for assessing whether this requirement is fulfilled. It is noted that neither the type of damage, nor the criteria for determining said damage are mentioned in claim 1. Furthermore, the outcome of any test would depend not only on the adhesive, but also on the nature of the surface to which the anchor is attached: whether it is a sturdy surface made of smoothed wood, metal, synthetic material, or light table cloth. Beside that, a surface which is resistent to scratch or abrasion can be sensitive to chemical damage, or vice versa. The second functional feature is thus also unclear.

1.9 For these reasons, claim 1 does not clearly define the subject-matter for which protection is sought and contravenes the requirements of Article 84 EPC.

Auxiliary requests 1 to 4

2. Admission

2.1 Auxiliary request 1 was filed with the appellant's letter in reply to the board's communication in preparation for the oral proceedings. Claim 1 corresponds essentially to a combination of claims 1 and 2 of the application as filed. It differs from claim 1 of the main request, in particular, in that the references to an adhesive tack of 300-500 Newtons per m**(2) were deleted from points (vii) and (viii) of claim 1.

2.2 This amendment addresses the objections raised against the main request which are discussed above in points 1.3 to 1.4. It does, however, clearly not overcome those raised in points 1.5 to 1.8. Thus, auxiliary request 1 is not admitted into the appeal proceedings (Article 13(1) RPBA).

2.3 Auxiliary requests 2, 3 and 4 were also filed with the letter addressing the board's communication in preparation for the oral proceedings. Claim 1 of each of these requests differs from claim 1 of auxiliary request 1 at least in that the two functional features mentioned above in points 1.5 to 1.8 were deleted.

2.4 The deletion of features from a claim is only permissible if there is a clear and unambiguous basis for a claim lacking these features in the application as originally filed (Article 123(2) EPC). Although the aforementioned functional features are considered unclear, they do limit the scope of the claims. According to the application as filed they also appear essential for characterising the invention. The question then arises, as to whether claims lacking these unclear but nevertheless limiting features have a proper basis in the application as filed.

2.5 The appellant has not indicated the basis for the amendments in the application as filed, as required by Rule 137(4) EPC, nor can the board see one.

2.6 Since the amendments raise new complex issues at a very late stage of the appeal proceedings, auxiliary requests 2 to 4 are not admitted into these proceedings too.