T 0007/80 (Copying process) 18-08-1981
I. The European patent application ** (Application No. 78100453.6), received on 20 July 1978 and published on 7 February 1979 and claiming priority of 25 July 1977 from a prior application in Switzerland, was refused by decision of the Examining Division of the European Patent Office dated 10 July 1980. The reason given for the refusal was that, in view of the state of the art disclosed in FR-A-1 475 816, FR-A-481 156 and in FR-A-2 026 473, the subject-matter of claim 1 as it stood at the time the application was refused did not involve an inventive step (Article 52(1) in conjunction with Article 56 EPC) and was therefore not allowable. Claim 2, being dependent on the failed claim 1 and containing no inventive step of its own, must likewise fail.
II. On 2 September 1980, the appellant lodged an appeal against the decision to refuse the application, at the same time paying the fee for appeal, and his written Statement of Grounds was received on 6 November 1980. In reply to a communication issued by the rapporteur pursuant to Article 110(2) EPC, the appellant filed the current version of the documents - received on 5 February 1981 - consisting of a description and a single claim reading as follows: Process for producing a photographic print for the purpose of preparing a flatbed printing form exhibiting true half-tones, in which a transparent layer is applied to a transparent base and the layer is copied on to light-sensitive material in order to produce a transparent copy of the layer, and in which the photographic image is produced, using the contact copying process, by means of the transparent copy interposed in the beam between a film positive or negative and a photographic imaging material,characterised in that an asphalt solution is applied to the light-sensitive base and allowed to dry so as to form a continuous layer. According to lines 19-24 on page 2 of the current description, the problem to be solved is seen to lie in designing a process in accordance with the first part of claim 1 by means of which flat-bed printing forms exhibiting true half-tones can be prepared simply and cheaply.
III. In the submission received on 5 February 1981, the appellant refers to the original documents, as evidence of disclosure of the process now claimed, according to which the fine-grained material to be used should preferably be asphalt, as already used in the known photochrome process. The submission goes on to say (top of page 3) that although the original description, taken quite literally, refers only to asphalt, it is clear to a person skilled in the art that asphalt is applied in dissolved form, because the photochrome process is not restricted to a particular type of asphalt." In the communication from the rapporteur of 17 February 1981, the appellant was notified that the characterising features of the current claim had not been disclosed in the original documents and that therefore Article 123(2) EPC had been infringed, which meant that the claim could not be allowed. In the telex dated 16 April 1981, which was followed within the time limit prescribed in Rule 36(5) of the Implementing Regulations by a document reproducing its contents, the appellant made no further reply to the objection that an inadmissible amendment had been made to the content of the application, but stated that no further amendment would be made to the "two" proposed claims before the Technical Board of Appeal.
IV. As the appellant did not comment within the time limit fixed in a communication from the rapporteur requesting clarification regarding the reference to "two" effective claims, the decision is based on the claim received on 5 February 1981, as notified to the appellant in the communication.
V. The appellant thus requests that the decision under appeal be set aside and that the patent be granted on the basis of the documents (description and one claim) received on 5 February 1981.
VI. In the submission received on 5 February 1981, the appellant altered the request made in the Statement of Grounds that a hearing be arranged "if deemed appropriate" and expressed a preference that the appeal be conducted in writing and a hearing held only if the Board of Appeal considered it "absolutely necessary". In the communication from the rapporteur of 17 February 1981, the appellant was notified, firstly, that his foregoing declaration was taken to mean that a request for oral proceedings within the meaning of Article 116(1) EPC was not being made, and, secondly, that, if the Board of Appeal were to endorse the comments in this communication, refusal of the appeal was to be expected in the written proceedings. On this point the appellant again made no comment. Since the Board of Appeal did not consider oral proceedings to be necessary, given the facts of the case, there was no reason to arrange for a hearing.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. It is first of all pointed out that the element consisting of the transparent layer on the transparent base has a screen function similar to the known grain screen. This element will therefore be referred to hereinafter as a "screen".
3. The first part of the claim contains on the one hand the generally known stages of the process followed when preparing photographic images for the production of flat-bed printing forms, namely preparing the photographic image by interposing an element with a screen effect between the film positive or negative (of the original) and the material used for the photographic image, and, on the other, means for making the screen such that a transparent layer is applied to a transparent base (e.g. glass plate) and this layer is copied on to the light-sensitive material, such copy representing the screen. These features are for the most part known from FR-A- 1 475 816.
4. The characterising portion of the claim contains a special provision for making the screen, namely that an asphalt solution is applied to the transparent base and allowed to dry so as to form a continuous layer.
5. It has to be examined whether the claim extends beyond the content of the application as filed (Article 123(2) EPC). The original claim 1 merely mentions that fine-grained material is applied to a transparent base. The expression "fine-grained material" is then repeated in the original claims 4 and 6. In the original claim 2, this "fine-grained material" is merely specified as asphalt, dispersion or dust powder. There is equally little support in the original description for an adequate disclosure of what is now claimed. Pertinent passages (page 2, lines 15-16 and lines 27-28: "grain of the fine-grained material"; page 2, line 24: "a fine-grained material such as asphalt, dispersion, dust powder"; page 3, lines 1-2: "grain of asphalt or of another appropriate fine-grained material") for the most part repeat the corresponding text of the claims. A person skilled in the art reading the original documents could therefore only conceive that fine-grained material - understood in technical jargon to mean a "dust" or "powder" (CF. the words "dust powder" in the original claim 2) - is to be applied to the transparent base and that this fine-grained material could be asphalt. Thus, even the appellant, at the bottom of page 14 of the Statement of Grounds, states that in the new process "powdered" material is applied to the base without losing its grainy structure. Even the term "dispersion" (page 2, line 24, and original claim 2) can contribute nothing to the disclosure, as by this is understood a suspension of particles but not a solution.
It is only in the light of the above conception forced on the person skilled in the art that the remaining pertinen passage in the text (page 2, lines 25-27) can be examined as to the content it discloses, according to which asphalt is used, as is already the case in the known photochrome process. In the photochrome process, which is based on the photosensitivity of asphalt, it is true that an asphalt solution is allowed to dry on a base so as to create a photosensitive layer, but not a grain screen. Asphalt in powder form is generally used in the preparation of this solution so as to reduce the time taken for the asphalt to dissolve. Viewed from the standpoint of the information disclosed in the original documents and detailed above, the text on page 2, lines 25-27, can be taken to mean only that asphalt in dust or powder form inter alia may be used as a fine-grained material to be applied to the base, but under no circumstances that the screen structure is to be seen as consisting of a continuous layer of asphalt resulting from the drying out of a solution.
There is therefore nothing in any of the original documents to indicate that the process now claimed can be considered to be adequately disclosed. The patent application has consequently been amended in such a way that it now contains subject-matter which extends beyond the content of the application as filed. This constitutes an infringement of Article 123(2) EPC. The present claim is therefore not allowable. As no patentable features are apparent in what is otherwise disclosed in the original documents, having regard to the state of the art obtaining in the proceedings, the Board felt unable to make recommendations to the appellant regarding the formulation of claims.
6. The Board considers the appeal not allowable for the foregoing reasons.
For these reasons, it is decided that:
The appeal is dismissed.