EP 3 337 675 B1 relates to a security element, a method for producing the same and a data carrier equipped with the security element.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board decided maintenance according to AR1 and remitted to the OD for the adaptation of the description.
The board held that the subject-matter of claims 1, 4, 7, 10, and 12 as granted were presenting the required IS, but that claim 14 as granted lacked N over D1.
It is by applying G 1/24 that the board came to the conclusion that claim 14 as granted lacked N.
At stake are the features
- [14.3.2]= the second relief structure (11a) is furnished with a coloured thin-film element “spatially aligned along the relief structure”,
- [14.4]=wherein the security element is obtainable by the method according to any of claims 1 to 13.
The OD’s decision
Although the patent does not define the exact meaning of the terms “spatially aligned along the relief structure”, Figures 4, 5, 6, 12 to 15, 18 to 22, 28, 29, 30, 34 to 37, and 43 to 46, clearly and independently of the respective embodiment show what is meant by these terms, namely that the layer follows the entire profile of the structure without interruption. In particular, all flanks of the structures are covered, which is not the case in Figure 3b of publication D1.
For example, according to Figure 4, the embossed lacquer 11 printed with the washable ink 13 is provided over its entire surface with a multilayer thin-film element 14 with a colour-shifting effect. Such a thin-film element 14 has a semi-transparent absorber layer 15 (e.g., Cr), a dielectric spacer layer 16 (e.g., SiO2), and a reflective layer 17 (e.g., Al) and can be produced by vapor deposition.
The proprietor was of the opinion that feature 14.3.2 requires that the second relief structure be fully covered with a coloured thin-film element aligned spatially along the relief structure. In support of this interpretation, it referred to
– the description and Figures 3, 4, 5, 11, 12, 13, 17, 18, 19, 32, 33, 34, 42, 43, and 44 of the patent, which are to be taken into account according to decision G 1/24,
– the term “spatially” in feature 14.3.2, and
– feature 14.4, which contains a reference back to the method claims.
The proprietor considered that claim 14 of the granted patent is a dependent claim within the meaning of R 43(4), since it contains all the features of the preceding method claims.
The proprietor further argued that in the patent, the term “full surface” has a different meaning from that in D1 and refers to the entire security element, including the entire surface of the second relief structure.
The opponent’s point of view
The subject matter of granted claim 14 lacks N over D1=EP 2 686 172 B1. Features 14.3.2 and 14.4 do not contain any mandatory structural features that are not disclosed in Figure 3b of publication D1.
The opponent considered that feature 14.3.2 should be understood to mean that the thin-film element is aligned in such a way that, where it is applied to the relief structure, it is inclined in accordance with the inclination of the underlying structure.
For the opponent, the “spatial orientation” of the thin-film element is consistent with the technical understanding of the term “spatially” in feature 14.3.2.
The board’s decision
Taking into account the description and the figures leads to the following conclusion:
The description does not provide a definition of the expression “spatially aligned along the relief structure.” Figures 3, 4, 5, 11, 12, 13, 17, 18, 19, 32, 33, 34, 42, 43, and 44 of the patent are schematic representations of embodiments.
The figures also do not provide a definition of the terms mentioned. Even if one were to take the view that in all these figures the second relief structure is shown as being completely provided with a thin-film element spatially aligned along the relief structure, the skilled person would not read this feature into independent claim 14 as a necessary feature.
The term “spatial” in feature 14.3.2 refers to the orientation of the coloured thin-film element and not to the size of an area over which the thin-film element extends.
Claim 14 as granted relates to a security element. However, this security element does not “contain” a method according to any of claims 1 to 13. Rather, according to feature 14.4, the security element can be obtained by the method according to any of claims 1 to 13.
Claim 14 is a product-by-process claim, hence Feature 14.4 therefore only distinguishes the claimed subject matter from document D1 if it follows from this that the claimed security element has different properties from the security elements disclosed in document D1.
It was also disputed between the parties how the skilled person would have understood the term “full surface”.
Neither the claims nor the patent as a whole contain a definition of the terms “full surface” and “full surface application.”
The interpretation of the term “full surface” is consistent with the use of the same term in paragraphs [0116] and [0117] of D1.
For the board, the proprietor’s interpretation of the term “full surface” is not supported by the claims or the patent as a whole. Both the patent and D1 use the term in connection with a relief structure of a security element. The skilled person therefore understands this term consistently in the same way in the patent and in D1.
It can be inferred from D1 that, for the application of a layer over the entire surface, it is irrelevant whether or not the flanks running vertically between the facets are coated. This also applies to the patent.
The description and figures of the patent do not disclose a single embodiment with vertical flanks. Nor does the patent indicate that the term “full-surface” application is to be understood differently than explained above if vertical flanks are present.
Comments
The present case shows that G 1/24 does not only apply to the patent as such, but can also be used when interpreting prior art. If the interpretation of features in the prior art and in the patent coincide, then the features are identical.
It is also to be noted that, the features “full surface” “full surface application”, and “spatially aligned along the relief structure” have no definition in the description of the patent, and the schematic nature of the drawings does not allow the skilled person to see any distinction between the prior art and the claim.
G 1/24, might thus not only bring first instance divisions to “consult” the description, but also applicants to take care and properly define claimed features in the description.
However, when looking at other decisions applying G 1/24, any inconsistency between claims and description is not allowable and the claim has to be amended accordingly.
The proprietor’s argumentation that claim 14 defining a security element obtainable by a method according to preceding claims is a dependent claim is rather odd, to say the least.
A dependent is a claim of same category which includes all the characteristics of another claim. Since there was a change of category from claims 1-13 to claim 14, the latter cannot be a dependent claim. For the surplus, see Guidelines F-IV, 3.4.
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