T 0159/19 08-02-2022
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SECURITY ARTICLES COMPRISING SECURITY FEATURES
Grounds for opposition - novelty
Grounds for opposition - patent as granted (no)
Novelty - auxiliary request 2 (no)
Novelty - auxiliary request 3 (yes)
Support by the description - auxiliary request 1 (no)
Sufficiency of disclosure - auxiliary request 3 (yes)
Inventive step - auxiliary request 3 (yes)
Late-filed objection - admitted (no)
I. The appeal of the opponent is against the decision of the opposition division rejecting its opposition against the European patent No. 2 555 924 B1.
II. Reference is made to the following documents, cited in the impugned decision:
D1: WO 2009/127622 A1
D7: DE 31 51 407 C1
D15: EP 2 322 355 A1.
III. The opposition was based on the grounds of opposition under Article 100(a) EPC (lack of novelty and inventive step) and 100(b) EPC (insufficient disclosure of the invention).
In the decision under appeal, the opposition division concluded that the patent provided all the necessary information for the skilled person to be able to carry out the inventions defined in claims 1 and 2 as granted. Moreover, the subject-matter of claims 1 to 15 as granted was new over documents D1, D7 and D15 and involved an inventive step in view of a combination of D7 with D1. The opposition was thus rejected and the patent maintained as granted.
IV. At the end of the oral proceedings before the board, which were held via videoconference, the appellant - opponent ("opponent") requested that the decision under appeal be set aside and that the patent be revoked in its entirety.
The respondent - patent proprietor ("proprietor") did not participate at the oral proceedings. In writing, it requested that the appeal be dismissed as its main request. As an auxiliary measure, the proprietor requested that the decision under appeal be set aside and the patent be maintained on the basis of one of Auxiliary Requests 1, 2 or 3, all filed with its reply to the appeal (letter dated 9 July 2019).
V. Claim 1 of the patent as granted is worded as follows:
A security article comprising a first layer of plastics material having therewithin a laser marking comprising internally laser-modified plastics material of which at least a portion has an optically variable appearance, wherein the optically variable portion of the laser marking has a reflective appearance, appearing bright at some viewing angles and relatively dark at others.
VI. Claim 1 of Auxiliary Request 1 has the same wording as claim 1 as granted with the addition that the portion of the internally laser-modified material has a foam-like structure.
VII. Claim 1 of Auxiliary Request 2 has the same wording as claim 1 as granted with the addition that the optically variable portion of the laser marking has a reflective and metallic appearance.
VIII. Claim 1 of Auxiliary Request 3 has the same wording as claim 1 as granted with the additional feature at the end:
and the laser marking further comprises at least one optically invariable region.
IX. In particular, the proprietor's Auxiliary Request 3 consists of the following patent documents:
- Description: Pages 2 and 3 of the patent specification and pages 4 to 9 according to the third auxiliary request filed with the letter dated 9 July 2019.
- Claims: No. 1 to 15 according to the third auxiliary request filed with the letter dated 9 July 2019.
- Drawings: Pages 14 to 17 of the patent specification.
X. The parties' arguments, as far as they are relevant for this decision, can be summarised as follows:
On novelty
According to the proprietor, the optically variable appearance of the claimed invention was an intrinsic property of the internally laser-modified plastics material and not caused by the laser marking in general. This was the result of the specific two-step irradiation process described in the patent. None of the prior art documents disclosed this feature.
According to the opponent, there was nothing in the claims that suggested that the optically variable appearance was an intrinsic property of the internally laser-modified material. On the contrary, reading the claim and the patent as a whole, it was to be understood that the optically variable appearance was obtained by the laser marking on the plastic layer. Moreover, the way the claimed article was produced was irrelevant, since the claim related to the security article as such. The prior art documents, thus, disclosed the claimed security article.
On sufficiency of disclosure
The opponent argued that the skilled person was not in a position to understand what was meant by "reflective" and "metallic" appearance. They would not be able, therefore, to obtain the claimed security articles. Moreover, the patent did not give sufficient information regarding the operational parameters of the laser during the irradiation process and so the skilled person could not manufacture the claimed articles without undue burden.
According to the proprietor, the opponent's objections related rather to lack of clarity, which was not a ground for opposition. The terms "reflective" and "metallic" [appearance] had established meanings in the field. Furthermore, the patent provided sufficient information to the skilled person, who was in a position to manufacture the claimed security article, using also common general knowledge.
The parties' arguments are dealt with in detail in the reasons for the decision.
1. The duly summoned patent proprietor (respondent) did not attend the oral proceedings, as it had announced in its letter dated 3 December 2021.
According to Article 15(3) of the Rules of Procedure of the Boards of Appeal (RPBA 2020), the board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of a party duly summoned who may then be treated as relaying only on its written case.
The board is satisfied that the proprietor presented in writing (see letters dated 9 July 2019 and 3 December 2021) relevant arguments for all the issues discussed in this decision. It was thus possible to continue the oral proceedings and arrive at a decision in the absence of the respondent, pursuant to Rule 115(2) EPC.
2. The invention
The invention relates to security articles such as security documents (identification cards, driving licences, credit cards, currency) or other security elements such as patches and threads which may be applied to such documents or other objects.
Conventionally, such security articles comprise security features such as laser inscriptions, which are used as means to authenticate the document/object they are applied on. Such inscriptions can be reproduced by e.g. photocopying, compromising their function as security features.
The patent proposes a security article comprising a plastics layer with a laser marking on it which has, at least partially, an optically variable appearance, such as a reflective appearance appearing bright at some viewing angles and relatively dark at others (see e.g. claim 1). This effect is more difficult to reproduce by the known copying methods.
The optically variable appearance is achieved with a two-pass laser irradiation process. One of the irradiation passes is done with low laser power level (irradiation intensity) with the laser beam moving at low speed, while the other is carried out with relatively high power level and the beam moving at a relatively high speed (see paragraphs [0001] to [0006] of the patent).
3. Patent as granted (proprietor's main request)
Novelty
3.1 It is uncontested that document D15 is comprised in the state of the art according to Article 54(3) EPC, and that it discloses a security article (substrate) comprising a first layer of plastics material having a laser marking (see paragraph [0023] and Figure 1). This laser marking has at least a portion with internally laser-modified plastics material (see column 3, lines 2 to 5: "Due to a high energy of a laser beam, at the intersection of the laser beam and the laser-engravable substrate, the substrate is decomposed and its volume increases, which results in creation of local raisings").
The laser marking has an optically variable portion with a reflective appearance, appearing bright at some viewing angles and relatively dark at others (see paragraphs [0029] to [0033] and Figures 2 to 6).
3.2 The main point of dispute was the interpretation of the following expression in claim 1 (emphasis added):
"...a laser marking comprising internally laser-modified plastics material of which at least a portion has an optically variable appearance...".
More particularly, the parties did not agree as to what the term "of which" referred to, namely the laser marking or the internally laser-modified plastics material.
In other words, it was not clear whether the optically variable appearance was a property of the laser marking in general or of the plastics material.
It was uncontested that D15 disclosed a laser marking with a portion having an optically variable appearance, and that it did not disclose that the optically variable appearance was an inherent property of the internally laser-modified plastics material. Hence, the question of whether claim 1 was new over D15 depends on the interpretation of the disputed feature.
3.3 Claim 1, as part of the granted patent, is not open to an objection under Article 84 EPC, since lack of clarity is not a ground for opposition. An interpretation of the claimed subject-matter is, however, necessary in order to assess its patentability and in particular whether it is novel over the disclosure of D15.
3.4 According to the proprietor, the optically variable appearance was an inherent property of the internally laser-modified plastics material. The optically variable appearance was the result of the specific way the plastics material was irradiated with the laser (see e.g. paragraphs [0006], [0007], [0039] and [0040] of the patent). This was what a skilled person reading the patent as a whole would have understood.
Regarding the wording of claim 1, it was clear that the term "of which" referred to the internally laser-modified plastics material. This was the grammatically correct interpretation, since the plastics material was the noun (substantive) immediately preceding the term "of which".
3.5 The board is not convinced that the proprietor's interpretation is the only possible one. There are several passages in the patent, where the optically variable appearance of the laser marking (or a portion of it) is described/mentioned without any mention of or reference to the plastics material, see for example paragraphs [0006], [0014], [0022] to [0024], [0037].
In different passages of the patent it is described that the optically variable appearance is a result of the laser irradiation of the plastics material, as the proprietor also pointed out, i.e. a property of the internally laser-modified plastics material itself, see for example paragraphs [0009], [0010], [0040], [0046].
In the board's view, the skilled person would not arrive at a definite conclusion regarding the optically variable appearance from reading the patent.
3.5.1 Regarding the grammatical interpretation of the claim, the proprietor argued that a phrase such as "of which" generally refers to the immediately preceding noun. The board refers to the first sentence of paragraph [0022], which reads as follows (emphasis added by the board):
"The present invention provides a security article comprising a first layer of plastics material exhibiting a laser marking of which at least a portion has an optically variable appearance as defined in claim 1."
According to the grammatical rule put forward by the proprietor, the term "of which" here refers to the "laser marking", which is the immediately preceding noun, and not to the plastics material. This clearly differs from the proprietor's interpretation of the claim.
Hence, in the board's view the skilled reader of the quoted sentence from claim 1 would not necessarily conclude that the optically variable appearance is an intrinsic property of the internally laser-modified plastics material.
3.5.2 The board notes also that claim 1, continuing from the passage quoted in point 3.2 above, further defines that: "wherein the optically variable portion of the laser marking has a reflective appearance, appearing bright at some viewing angles and relatively dark at others".
Here the claim refers to the portion of the laser marking which has a reflective appearance, without any reference to the internally laser-modified plastics material. In the board's view, this does not support the proprietor's argument that the interpretation according to which the optically variable appearance is an inherent property of the material is the only possible one.
On the contrary, the board considers that from the text of claim 1 alone, the skilled person would rather understand that the optically variable appearance is a property of the laser marking in general (or at least a portion of it), leaving it open whether it is caused by the internal modification of the material or by the engraved pattern of the marking.
3.6 The board's conclusion is that claim 1 defines the optically variable appearance to be a property of the laser marking in general, and is not restricted only to embodiments in which the optically variable appearance is due to an inherent property of the internally laser-modified plastics material. Both possible interpretations have thus to be taken into account when comparing the claimed subject-matter to D15.
3.7 As it remained uncontested that D15 discloses a laser marking a portion of which has a reflective appearance, appearing bright at some viewing angles and relatively dark at other, the conclusion is that D15 discloses all the features of claim 1.
Claim 1 is, therefore, not new over D15 (Articles 100(a), 54(1) and (3) EPC).
4. Auxiliary request 1 - support by the description
4.1 Claim 1 of auxiliary request 1 defines that at least a portion of the internally laser-modified plastics material has a foam-like structure. This feature did not appear in any of the claims of the granted patent.
4.2 The board shares the opponent's objections (see letter dated 19 November 2019, page 4, fourth paragraph) that claim 1 of auxiliary request 1 is not supported by the description, and is in fact in contradiction to it.
It is noted that the proprietor did not reply to this objection of the opponent.
4.3 The patent mentions the foam-like structure of the internally laser-modified material in four instances, in paragraphs [0009], [0010], [0040] and [0046]. In all instances, however, it is presented rather as a speculation or a hypothesis than as a step or a product of the irradiation process.
Paragraph [0009], for example, states that [w]ithout being bound to theory, it is believed that the optically variable nature of the marking is brought about by the two laser irradiation steps combining to result in a foam-like structure within the plastics material.
4.4 The board notes that in each of the above-cited paragraphs which refer to the foam-like structure, the same expression is used, i.e. "it is believed that...".
To the skilled reader these passages do not make clear whether the foam-like structure is actually present in the internally laser-modified plastics material, whether the foam-like structure is the result of the laser irradiation process or even whether this foam-like structure is indeed the cause of the optically variable appearance. In the board's view, these passages lead rather to the conclusion that the presence of the foam-like structure in the internally laser-modified material is only an assumption.
4.5 In contrast to that, claim 1 defines that the internally laser-modified plastics material has a foam-like structure. The foam-like structure is, hence, defined as a structural feature of the claimed security article.
However, this is not disclosed in the description of the patent, which only provides assumptions/speculations as to the whether the internally laser-modified plastics material has a foam-like structure. Hence, the board considers that the security article defined in claim 1 of auxiliary request 1 is not supported by the description within the meaning of Article 84 EPC.
5. Auxiliary request 2 - Novelty
5.1 Compared to claim 1 as granted, claim 1 of auxiliary request 2 defines additionally that the optically variable portion of the laser marking has a metallic appearance.
5.2 According to the patent, a laser marking with metallic appearance appears silver, its appearance changing from bright silver to dark grey as the article is tilted. Other metallic colours, such as bronze or gold, are also possible if the plastics material is tinted accordingly (see paragraph [0036]).
5.3 According to e.g. paragraph [0032] of D15, the laser marking's appearance (see Figure 5) changes colours (dependent on the angle of view) between e.g. light-gray and dark-gray.
The board shares therefore the opponent's view that these colours correspond to a metallic appearance as defined in claim 1 of auxiliary request 2. Many metals have a (dark or light) grey appearance, and in this context it is considered that silver and gray essentially refer to the same colour.
5.4 Claim 1 of auxiliary request 2 is therefore not new (Article 54(1) and (3) EPC).
6. Auxiliary request 3
6.1 Sufficiency of disclosure
6.1.1 The opponent argued that the claimed invention was insufficiently disclosed in two aspects (see points 4.1.1 and 4.1.2 of the statement of the grounds of appeal):
- the terms "reflective" and "metallic appearance" were not explained in the patent so that the skilled person did not know how to obtain a security article having these properties or did not know whether they had succeeded in obtaining one;
- the patent did not provide details on how the claimed article was to be obtained, in particular several parameters regarding the laser irradiation process were missing, so that the skilled person could not obtain the claimed article without undue burden.
It is noted that these objections were raised formally against the main request (patent as granted), but as the opponent also noted, they applied also against auxiliary request 3 (see opponent's letter of 19 November 2019, point 4).
6.1.2 Regarding the first point, the board is of the opinion that any ambiguities that may exist in the interpretation of claim terms relate to the clarity requirement of the claims (Article 84 EPC) and not to the (in)sufficiency of the disclosure. The same applies to the question whether the skilled person can tell if they are working within the claimed scope or not as this relates to the definition of the scope of the claims. As the objections relate to features included in the granted claims (see claims 1 and 2 as granted) and since lack of clarity is not a ground for opposition, these objections of the opponent do not constitute a valid attack on claim 1 of auxiliary request 3.
In any case, the board agrees with the proprietor that the term "reflective appearance", besides having an established meaning in the art, is also explained in claim 1: appearing bright at some viewing angles and relatively dark at others. Similar considerations apply to the term "metallic appearance", which also has an established meaning in the specific technical field and the claim provides a specific preferred example ("silver"), which removes any ambiguities. The patent also provides more details as to what is meant by "metallic appearance", see paragraph [0036].
6.1.3 Regarding the second point and the question whether the skilled person would be able to obtain without undue burden the claimed security article on the basis of the disclosure of the patent (and their common general knowledge), the board notes at first that the main characteristic of the manufacturing process is the use of a two-step laser irradiation process in which the power and the speed of the laser are different (see paragraphs [0039] to [0041]). The patent provides the necessary information on the relative similarities and differences in the laser powers and speeds between these two steps of the irradiation process (paragraphs [0011] and [0012] or [0042] and [0043]).
6.1.4 The opponent objected that the patent did not provide any information about the actual values of several operation parameters of the laser, like its power, energy density or speed. The skilled person was thus not able to determine the necessary values for these parameters so that they could operate a laser according to the described irradiation process and produce the claimed security article without undue burden.
In the board's view, however, the skilled person would be able to determine those parameters using common general knowledge. The claimed security article is destined for use in a specific technical context (on/within security documents such as identity cards, passports, currency etc.; see paragraph [0001]). This application domain already implies some limitations on the types of lasers to be used for the irradiation process. The patent provides examples of laser types with corresponding wavelengths (paragraph [0013]). It also provides a more specific example of a laser type, an infrared Nd:YAG laser, with a specific wavelength, 1064 nm, and even a specific laser model, Trumpf VMC3 Nd:YAG laser (see first lines of paragraph [0043]). The patent also indicates several possible materials to be used for the security article (see paragraph [0025]), as well as a specific example of a material (PET) and related thickness (50 mym) (see paragraph [0043]).
The board concludes, therefore, that the skilled person would be able to select the appropriate combination of operation parameters for the laser irradiation process without undue burden, on the basis of the provided information about the possible materials, dimensions and laser(s) in combination with common general knowledge.
6.1.5 The board's conclusion is thus that the patent according to auxiliary request 3 meets the requirements of sufficiency of disclosure (Article 83 EPC).
6.2 Novelty in view of D7
6.2.1 The opponent's argument was based on the conclusion that the optically variable appearance according to claim 1 of the patent was caused by the foaming of the plastic material due to the laser irradiation. In other words, any plastics material that has been foamed by laser irradiation would present the same optically variable appearance. On the basis of this conclusion, the opponent argued that the plastic material in D7, which was foamed by laser irradiation (see column 6, lines 23 to 41) would have had the same optically variable appearance as the plastic material of claim 1.
Alternatively, the opponent pointed out that the channels in the plastics material of the substrate were blackened as a result of the irradiation process (see column 6, lines 35 to 41). This also implied an optically variable appearance, depending on the angle of view.
Regarding the additional feature of claim 1 of auxiliary request 3, the opponent pointed to Figure 4 of D7 which showed that, in addition to the laser engraved marking which had an optically variable appearance (Information 37), additional information was laser engraved on the substrate, which was not optically variable (36 in Figure 4; see also column 7, lines 13 ed. seq.). The laser marking of the article in D7 comprised thus, besides a portion with optically variable appearance, a further optically invariable region. Claim of auxiliary request 3 was thus not new.
6.2.2 Regarding the question of whether the optically variable appearance is an intrinsic property of the internally laser-modified material, the board refers to the discussion relating to the main request (points 3.2 to 3.6 above). Even if it were accepted that the optically variable appearance is an intrinsic property of the internally modified material, the board notes that this optically variable appearance is not obtained merely by foaming internally the material by laser irradiation. According to the patent, this is achieved by a specific two-step irradiation process, in which the laser powers and speeds are substantively different (see for example paragraphs [0009] to [0012]). Since D7 does not contain any indication of such a two-step laser irradiation process, the board cannot accept that the foamed plastic material according to D7 would necessarily have the same optically variable appearance as the material in claim 1 of the patent.
Similarly, the board cannot accept that a mere indication that the channels in the plastic material are blackened by the laser irradiation, would necessarily imply that the article has an optically variable appearance. On the contrary, D7 explains that by blackening the channels, the engraved information becomes easier to read (see column 6, lines 30 to 49). This seems to teach away from an optically variable appearance.
As claim 1 differs from D7 at least by this feature, it not necessary to address the question of whether D7 discloses that the laser marking comprises an optically invariable region. The board's conclusion is that claim 1 of auxiliary request 3 is new over D7.
6.3 Novelty in view of D15
6.3.1 The opponent raised an objection of lack of novelty of claim 1 of auxiliary request 3 based on D15 for the first time during the oral proceedings before the board.
This new line of attack constitutes an amendment to the opponent's case which was submitted after the board had issued the summons to oral proceedings. According to Article 13(2) RPBA 2020 (which applies according to Article 25(3) RPBA 2020), any such amendment to a party's case is not to be taken into account unless the party justifies the existence of exceptional circumstances with cogent reasons.
6.3.2 The opponent argued that the RPBA 2020 violated its right to be heard by preventing the opponent from presenting its case as it wished. Referring to its letter of 7 January 2022 (pages 6 and 7), the opponent argued that the board had the right to put forward any objections at any point in the procedure and that this should also apply to the parties. This limitation by the RPBA 2020 was beyond what was set down in the EPC and the Implementing Regulations and it was a violation of the right to be heard.
6.3.3 In raising this new objection the opponent is asserting a new (alleged) fact, namely that D15 discloses all features of claim 1 of auxiliary request 3. Contrary to the opponent's contention, it is clear from Article 114(2) EPC that the opponent does not have an unlimited right under the EPC to raise new objections at any point in the proceedings. The board is therefore not persuaded by the opponent's argument that the RPBA 2020 are somehow in conflict with the EPC or the opponent's right to be heard in this regard.
The opponent set out its objections to auxiliary request 3 on page 5 of the letter dated 11 November 2019, and had the opportunity to raise a novelty objection based on D15, but chose not to do so. Similarly, in the letter dated 7 January 2022 this objection could have been raised, but was not.
The board notes that the opponent did not provide any reasons that could justify exceptional circumstances and lead the board to take this objection into consideration.
The board therefore decides not to take the objection concerning lack of novelty based on D15 against auxiliary request 3 into consideration pursuant to Article 13(2) RPBA 2020.
6.4 Inventive step - starting from D11
6.4.1 According to the opponent, D11 disclosed all the features of claim 1 of auxiliary request 3, with the exception of the last one, i.e. that the laser marking comprised an optically invariable region (see "Sicherheitselement 12" in Figure 1, and paragraphs [0004], [0013], [0024] and [0048]). However, Figure 1 of D11 showed also that the substrate can comprise additional features/information, such as a picture.
6.4.2 The opponent pointed to paragraph [0024] of the patent, which stated that the laser marking, both on its optically variable and optically invariable portions (regions), was configured to define indicia such as alphanumeric text, symbols or graphics.
The skilled person starting from D11 would thus be faced with the technical problem of how to provide the additional information on the security document (identity card) of Figure 1.
6.4.3 In D7 there was the "information 37" which was provided with laser-engraving on the security document and there was also additional information ("weitere Informationen 36") which was engraved also by laser through a transparent window 35 (see Figure 4 and column 7, lines 13 to 19). This additional information was comprised in a laser marking without optically variable appearance.
The skilled person would have thus provided the security document of D11 with additional information included in a laser marking, without optically variable appearance, since the original laser marking (12 in Figure 1) provided already the desired security features (the optically variable appearance).
The skilled person would thus have arrived at the claimed subject-matter in an obvious manner.
6.4.4 The board is not convinced by this argument. As explained previously, the board considers that D7 does not disclose a laser marking with optically variable appearance in the sense of the claims. D7 describes how information can be laser-engraved on a plastic substrate through a covering layer ("Deckfolie"). D7 does not appear, therefore, to be relevant at all for the skilled person starting from D11 seeking to solve the formulated technical problem.
Moreover, even if the reasoning of the appellant were followed, the skilled person would end with an article comprising a laser marking with optically variable appearance and another laser marking which is optically invariable. In the board's view this is not the same as what is defined in claim 1, namely a laser marking with a portion which has an optically variable appearance and another portion (region) which is optically invariable.
6.4.5 The board concludes, therefore, that the subject-matter of claim 1 of auxiliary request 3 involves an inventive step within the meaning of Article 56 EPC.
7. The proprietor had submitted an amended description adapted to the claims of auxiliary request 3 with its letter dated 9 November 2019.
The opponent had no comments or objections to it. Neither has the board.
8. The board arrives, therefore, at the conclusion that the maintenance of the patent as granted is prejudiced by the grounds for opposition under Article 100(a) EPC (lack of novelty). Auxiliary requests 1 and 2 are not allowable. Auxiliary request 3 fulfils the requirements of the EPC and the patent is to be maintained on this basis (Articles 111(1) and 101(3)(a) EPC).
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division with the order to maintain the patent as amended in the following version:
- Description:
Pages 2 and 3 of the patent specification and pages 4 to 9 according to the third auxiliary request filed with the letter dated 9 July 2019.
- Claims:
No. 1 to 15 according to the third auxiliary request filed with the letter dated 9 July 2019.
- Drawings:
Pages 14 to 17 of the patent specification.