The patent relates to a decorative element and a security document comprising a decorative amendment
Brief outline of the case
The patent was maintained according to AR4 and the opponent appealed.
The board confirmed the allowability of the claims of AR4 which became the MR in appeal.
The board did however find an inconsistency between claims 1 and 6 and the description as maintained.
AR1 in appeal overcame the inconsistency between the description and the claims.
The patent was maintained according to AR1.
The case is interesting as it deals with the problem of support of the claims by the description under Art 84, support.
In respect of the MR
The description was not sufficiently adapted to the claims of the main request as amended from the granted claims.
Among other things, paragraph [0040], lines 46, 49, 54, 55, 56 and 57, paragraph [0055], sentence 1, lines 27 and 31 and paragraph [0089], line 48 refer to embodiments in which the first colour is generated in scattered light.
This alternative of the independent claims as granted is no longer covered by claims 1 and 6 of the MR. There was an inconsistency between the claims and the description. This objection was also sufficiently substantiated in the statement of grounds of appeal.
In respect of AR 1
AR 1 filed during the OP before the board was late filed. The objection under Art 84 in relation to the lack of adaptation of the description had already been raised in the statement of grounds of appeal.
AR 1 should not be admitted to the proceedings under Art 13(2) RPBA. The situation was similar to that in decision T 995/18.
The proprietor’s point of view
In respect of the MR
The opponent’s comments on the objection under Arti 84 in the statement of grounds of appeal were limited to general statements. No specific passages of the description were given in the statement of grounds of appeal which could substantiate this objection. This objection should therefore not be admitted into the appeal proceedings due to a lack of substantiation.
It is also unfounded. The description explicitly refers to the claims. The passages of the description quoted by the appellant could not be interpreted in such a way that the scope of protection was different. The passages were therefore not likely to cause inconsistencies.
In respect of AR 1
The filing of AR 1 was admissible under Art 13(2) RPBA. The opponent’s comments on Art 84 in the statement of grounds of appeal had been very general and had not made it possible for the proprietor to reply at an earlier stage.
The proprietor must therefore be given the opportunity to react. In appeal proceedings, it was not necessary to submit an adapted description before a decision on the claims was taken.
The board’s decision
The description as maintained
Paragraph [0040] of the description according to the MR discloses that the scattered light generated by the microstructure shows a colour that is complementary to the colour generated in the zeroth diffraction order.
The skilled person further understands paragraph [0055] to mean that, according to a preferred embodiment example, the colour effect according to the invention is achieved in the first area by scattering on asymmetrical base elements.
From paragraph [0089], the skilled person understands that an advantageous embodiment of the invention can be achieved by extending the scattering angle range. The description thus gives the impression that embodiments in which the first colour is generated in the scattered light are in accordance with the invention.
The person skilled in the art understands paragraphs [0009] and [0010] of the description according to the MR to mean that the problem mentioned in paragraph [0008] is solved by the objects of claims 1 and 6.
However, it is not clear from this that embodiments in which the first colour is generated in scattered light are not in accordance with the invention.
This causes an inconsistency with the invention defined in claims 1 and 6 of the main request and therefore contravenes Art 84, support.
The description according to AR 1
AR 1 differs from the MR only by the deletion of paragraphs [0040], [0055] and [0089] of the description and the introduction of paragraph [0010a].
Paragraph [0010a] states: “The generation of the first colour in scattered light is a solution not in accordance with the invention”.
The Board agrees with the opponent that the objection under Art 84 was raised in the statement of grounds of appeal. However, the main arguments and a clarification of the objection were not raised by the opponent until the OP before the board, so that the filing of the adapted description with AR 1 is to be regarded as an appropriate response.
Moreover, in appeal proceedings, an adapted description is usually only filed after the board has come to the conclusion that a allowable version of the claims exists. The board referred for example to T 1968/18, Reasons 7.
Finally, using the criteria under Art 13(1) RPBA, the board also took into account that the amendment according to AR 1 is prima facie allowable and does not give rise to any new objections.
The decision T 995/18 cited by the opponent is not relevant, as it does not deal with the admission into the proceedings of a description adapted to allowable claims.
The board therefore exercised its discretion under Art 13(2) RPBA and admitted AR 1 into the proceedings.
Comments
In T 2818/19, Reasons 7, it was held that amendments to the description carried out by the proprietor during OP before a board cannot be considered as an amendment of the appeal. The board thus held that in such a circumstance Art 13(2) RPBA does not ap/ply to the amended description.
The conclusion is the same in the present decision and in T 1968/19. In those two decisions, the respective boards held that the amended description submitted during the OP represented an amendment to the proprietor’s appeal case under Art 13(2) RPBA. The boards used their discretion to admit the amended description.
However in T 2818/19, the board held that Art 13(2) was not applicable when the proprietor filed an adapted description, and therefore did not use the discretion afforded by Art 13(2) RPBA.
It would be nice for parties to an appeal if the boards could agree on a common way to apply Art 13(2) RPBA, when, after deciding on an allowable set of claims, an amended description is submitted during OP.
For all the afficionados of the non-adaptation of the description, I would like to refer to a some other decisions holding that the description ought to be adapted to the amended claims in opposition.
In T 672/22, commented in this blog, the board remitted to the OD for the adaptation of the description.
In T 1997/22, commented on this blog, the situation was similar to the present one. The MR was not allowable for lack of support, but the AR was in order.
T 2391/21, commented on this blog, is comparable to T 447/22, also commented in this blog. In both decisions, the board limited the adaptation in view of G 3/14.
https://www.epo.org/de/boards-of-appeal/decisions/t211695du1
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