T 0856/97 14-12-1998

1. The appeal is admissible.

2. Ground of opposition under Article 100(c) EPC

The Appellant submitted that there was no basis in the application as originally filed for cells having a size as specified in claim 1, except for the specific case where crystalline polypropylene was used, and, therefore, the subject-matter of claim 1 of the patent in suit extended beyond the content of the application as filed.

The parts of claim 1 which are relevant to the Appellant's above-mentioned submission may be put together as follows: "A magnetic card comprising a monoaxially or biaxially stretched polyester film comprising minute cells of a diameter of 1 to 300 µm". The Board observes that page 7, second paragraph of the description of the application as originally filed mentions "Therefore, it is preferable to employ a method disclosed by the present inventors in Japanese Patent Application No. 313896/1986 as a method of easily obtaining the polyester film containing minute cells used in the present invention". Thus, it is not essential to employ this method and the originally filed claim 1 is not limited to any specific method.

The description of the application as originally filed further mentions (see page 7, last paragraph to page 8, first paragraph) that "the sheet is monoaxially or biaxially stretched...thereby obtaining a polyester film containing numerous minute closed cells...". In addition to this, the description of the application as originally filed (see page 10, line 20 to page 11, line 2) and the published European Patent No. 0 306 960 (see page 4, lines 22 to 26) clearly specify that a polyester film having "minute cells of a diameter of 1. to 300 µm, preferably 5 to 100 µm, is obtained" (emphasis added by the Board; the words "is obtained" are missing from the description of the application as originally filed but this error has been corrected in an obvious manner in the published European Patent).

It follows that the wording "A magnetic card comprising a monoaxially or biaxially stretched polyester film comprising minute cells of a diameter of 1 to 300 µm" in claim 1 of the patent in suit is exactly and explicitly supported by the description of the application as originally filed. Documents D17 to D21 which are cited by the Appellant in the grounds of appeal (see section 8) do not subtract from the disclosure in the original application.

Thus the ground of opposition under Article 100(c) EPC does not prejudice the maintenance of the patent.

3. Novelty

3.1. Novelty with regard to prior art according to Article 54(3) EPC

Document D1 belongs to the state of the art according to Article 54(3) EPC for all the contracting states designated in the patent in suit. D1 discloses a polyester film as used in the magnetic card according to claim 1 of the patent in suit.

The Board agrees with the Respondent and the Opposition Division that this document does not explicitly or implicitly teach a skilled person to make magnetic cards with the polyester film it discloses. More generally, nowhere in the description of D1 is there disclosed that magnetic material is or could be deposited as a layer on the polyester film for producing items able to store information in magnetic form, let alone the thickness of such a magnetic layer.

Referring to the prior art illustrated by various documents (D2, D3, D10 to D12, D14 to D16) the Appellant alleged that the magnetic cards which are disclosed in D1 have a magnetic layer which is conventional and a skilled person would expect the thickness of such a conventional layer to lie within the range 1 to 10 µm specified in claim 1. For the following reasons, the Board cannot share the Appellant's views:

- as indicated above, D1 does not implicitly or explicitly mention the use of the polyester film claimed in this document for producing magnetic cards or any other magnetic items,

- since D1 represents prior art according to Article 54(3) EPC it may only be taken into consideration for assessing novelty. In certain situations, handbooks, encyclopaedias or dictionaries may be used as an aid to the correct interpretation of terms of the art used in a document belonging to the prior art according to Article 54(3) EPC, see for example unpublished decision T 233/90, first paragraph of section 3.3, and unpublished decision T 288/90, see sections 4.3. to 4.5, where it has been admitted that novelty could be examined on the basis of a first document in the light of the teaching of a second document fairly representative of the general technical knowledge and regarded as an aid for the correct interpretation of any particular term mentioned in the first document. However, in the present case, there is nothing in D1 which demands interpretation or clarification relating to the thickness of a magnetic layer. In any case, the combined disclosures of documents D2, D3, D10 to D12 or D14 to D16 do not demonstrate that it was unquestionably acknowledged general technical knowledge that the thickness of the magnetic layer of a magnetic card must lie within the range 1 to 10. µm. This point is taken up again in the section below relating to inventive step (see in particular section 4.5).

It is concluded that the subject-matter of claim 1 is novel over D1.

3.2. Novelty with regard to prior art according to Article 54(2) EPC

The Appellant also contests novelty on the basis of D4, D6 or D7.

- Although D4 refers to the use of micro-voided polyester films as a material for manufacturing magnetic cards, it discloses neither an opacifyng power of 0.2 or more nor a magnetic layer thickness of 1 to 10 µm. Without using hindsight, it cannot be assumed that the disclosure of a magnetic layer automatically implies a layer within the limits specified in claim 1.

- D6 discloses a process for the production of a polyester film comprising globules having a diameter of 5 to 10 µm and voids having three or four times the diameter of the globules. D6 makes no reference to magnetic cards or magnetic layers. Without using hindsight, it cannot be assumed that magnetic cards are inherently disclosed in D6 or that the disclosure of magnetic cards inherently discloses magnetic layers of the thickness specified in claim 1.

- D7 deals with the preparation of voided opaque films made from a mixture of polyesters and polyolefins and discloses the use of such films e.g. in magnetic recording tapes and in identity cards. This document does not indicate or suggest the use for magnetic cards, nor the size of the cells. There is no disclosure of a magnetic card having a magnetic layer of thickness 1 to 10 µm.

3.3. The Board concludes that the subject-matter of claim 1 is novel over the disclosure of D4, D6 or D7.

4. Inventive step with regard to D4 and D6

4.1. The remaining issue to be considered is the Appellant's contention that the subject-matter of claim 1 does not involve an inventive step within the meaning of Article 56 EPC with regard to a combination of D4 and D6.

4.2. The technical problem underlying the present invention is to provide a magnetic card comprising a polyester film and having improved flexibility, flatness and punching properties while maintaining various excellent characteristics of the polyester film and having the necessary magnetic properties.

4.3. If one refers to claim 1 of the patent in suit, the problem addressed in the patent in suit is solved by combining particular values of physical parameters of the polyester film and of the magnetic layer constituting the magnetic card.

4.4. D4 discloses an opaque micro-voided polyester film having a density value of 1.0 or 0.8 g/cm3 or less (page 1, left-hand column, lines 17 to 21). D4 discloses neither an opacifying power of 0.2 or more, nor the diameter of the cells, nor a magnetic layer thickness of 1 to 10 µm. D6 discloses polyester films whose values of density, opacifying power and cell diameter are within the ranges specified in claim 1 but not indicated as being suitable for magnetic cards. D6 mentions the use of this film for replacing photographic paper or for producing magnetic recording tapes or identity documents (page 4, lines 21 and 22). The Appellant argued that identity documents include cards with a magnetic stripe but did not submit convincing arguments as to why identity documents should be necessarily provided with magnetic stripes or a magnetic layer.

4.5. In the notice setting out the statement of grounds of appeal, the Appellant admits that the thickness of the magnetic layer is not specifically disclosed in D4 or in D6, but submits that this feature is implicitly disclosed, as previously argued in the discussion concerning novelty. For the following reasons, these submissions are not convincing:

D2, D3 and D10 essentially concern magnetic tapes. D2 indicates (page 229) typical values 10 µm for reel-to-reel and 5 µm for compact cassette tape and D3 mentions (see Figure 1) a 5.1 to 15.2 µm thick magnetic coating. However, for a magnetic rigid disc, which is more comparable to a magnetic card than a magnetic tape is, D2 indicates a typical magnetic layer thickness of 0.7. µm (see section 3.4.1.4).

The Appellant contended (point 13 of the statement of grounds of appeal) that D2 and D3, in particular, were relevant since "there is no reason to suppose that a different magnetic layer thickness is appropriate for tapes and cards". However, the Board observes that magnetic tapes experience quite different operation conditions than those imposed on magnetic cards, so that it cannot be inferred that a magnetic layer thickness appropriate for a magnetic tape would be practicable for a magnetic card. If he was seeking a solution to the problem addressed in the patent in suit, the skilled person would not try to combine D4 and D6 because D6 does not suggest that there would be a promising field in using the polyester films disclosed in this document for magnetic cards. There is no reason to suppose that the choice of a 5 to 10 µm cell diameter indicated in D6 would be suitable for a magnetic card when combined with an apparent density of 0.8. to 1.4 (as indicated in D4) or 0.7 to 1.2 (as indicated in D6). In addition to choosing appropriate cell diameter and density values, the skilled person would have to choose values of opacifying power and magnetic layer thickness as specified in claim 1. The prior art gives no guidance which could make it obvious to the skilled person to make all these choices, in combination.

Therefore, the subject-matter of claim 1 involves an inventive step over the combined teachings of D4 and D6. The Board notes in passing that a combination of the apparent density 0.8 to 1.4 disclosed in D4 with the values ranging from 1 to 20 µm of the magnetic layer thicknesses disclosed in documents D11 to D16 would result in a magnetic card still lacking the opacifying power and cell diameter values specified in claim 1. The Board also notes that D5 does not mention that the commercially available polyester films are suitable for use in magnetic cards.

4.5. Summarising, there is no suggestion in the prior art that the problem addressed in the patent in suit would be solved by the claimed combination of values of apparent density, opacifying power, cell diameter and magnetic layer thickness. The subject-matter of claim 1 involves an inventive step with regard to the prior cited by the Appellant. Consequently, the grounds for opposition do not prejudice the maintenance of the European patent as granted and the appeal has to be dismissed.