T 0687/14 21-12-2017

Reasons for the Decision

1. Understanding the claimed subject-matter

1.1 "appearing as a three dimensional mark"

1.1.1 This expression occurs amongst others in claim 1 ac­cor­ding to all requests in the feature "at least one digi­tised mark made of at least one set of dots appea­ring as a three dimen­sio­nal mark when viewed in transmitted light".

1.1.2 Essentially the same wording occurs in paragraphs [0001] and [0008] of the patent in suit. Such marks are to be distinguished from marks which "appear flat and two dimensional because of simple design" (paragraph [0002]).

1.1.3 According to paragraph [0008], "the dots are arranged in such a way that the mark looks like a multi-tone mark". The patent is silent on what exactly is meant by the mark "looks like" a multi-tone mark.

However, the board considers that the skilled person knows that when, for example, the "mark can be made of a set of dots of various shapes and/or various sizes, with eventually a specific frequency modu­la­tion" (paragraph [0009]), a multi-tone image can be approxi­mated by dithering techniques.

1.1.4 Paragraph [0020] explains in parenthesis that the digitised marks are a "three dimensional appearing design".

1.1.5 Paragraph [0025] discloses that "different layers with different optical densities are produced, making the final image, symbols, letters, lines looking as three dimensional when observed in transmitted light".

1.1.6 According to the embodiment of figure 1, the digitised image of the lady was printed. The mark being "charac­te­ri­sed by a succession of dots of different colours arranged in such a way that the mark appears as a three dimensional image". "The dots are not visible but the image of the lady is visible as shadow image when the paper is observed in transmitted light and held at about 20 cm from eyes. When the paper is observed in close view of a few centimetres these dots are visible by naked eye. When the image is observed with a magnifying glass for instance, these dots are visible and appear as in Figure 2:"

FORMULA/TABLE/GRAPHIC

This description is that of a conventional, rastered, half-tone image.

1.1.7 As was also argued on behalf of appellant IV, the in­vention does not provide a real three dimensional ef­fect in which each eye of the observer receives a se­pa­rate image which the observer's brain then re-com­bines to obtain a truly three dimensional impres­sion.

Instead, the three dimensional appearance according to the invention relies on the observer recognising that a three dimensional object - such a human face, e.g. a portrait of a lady (figure 2 of the patent in suit) - is being represented. Since no actual struc­tural varia­tion in three dimen­sions is requi­red, the conventional artist's techniques of per­spec­tive and/or shadows and/or lighting for rendering an actual human face as part of a portrait already produce the effect of "appearing as a three dimensional mark" of claim 1.

1.1.8 The board concludes that, according to the des­cription of the patent in suit, the "three dimensional" appea­rance is due to two things:

(a) different optical densities providing a multi-tone "look" (which is understood to mean an, at least approximate, multi-tone rendering) and

(b) that the design must be such that an observer can recognise that something three dimensional is being represented, i.e. as a "three dimen­sio­nal appearing design", such as the half-tone portrait of a lady (patent in suit, figure 2).

The board thus agrees with appellant I that the mere provision of a multi-tone "look", although necessary according to the description of the patent in suit, is not on its own suf­fi­cient to achieve the "three di­men­sional" appearance required in claim 1 (all re­quests).

Auxiliary request 1

2. Novelty

2.1 Document D3 concerns security films for embedding in, or applying on, papers of value consisting of a trans­lucent carrier film and a metal cover layer applied thereto, having coating-free areas, which are clearly visible in particular in transmitted light (paragraph [0001], preamble of claims 1 and 16). The Process disclosed in document D3 aims to generate negative images in metal-coated foils which are characterized by a high contour sharpness (paragraph [0006]). This sharpness of the contours makes it possible to produce rastered half-tone images. Thus, half-tone images, such as portraits in the cover layer, can be formed on coated security films. Embedding these foils between two layers of a security paper creates a watermark-like effect, since the portraits are not or only slightly visible in incident light, but highly recognisable and rich in contrast in transmitted light (paragraph [0009]).

FORMULA/TABLE/GRAPHIC

2.2 Thus document D3 discloses a security support (such as a "security paper") comprising a security element comprising a carrier substrate 10 comprising a transparent or translucent area carrying at least one digitised mark made of at least one set of dots appearing as a three dimensional mark when viewed in transmitted light, wherein the digitised mark is made of deposits and/or voids 50 of metal 20 applied onto the carrier substrate 10 by metallisation techniques and/or partial demetallisation techniques, wherein the security element is in an elongated form, being a thread, and is at least partially embedded in the said support, or wherein the security element is a stripe or a patch applied to the said support.

2.3 Appellant I (patent proprietors) argued that document D3 does not unambiguously necessarily disclose that the mark appears "as a three dimensional mark when viewed in transmitted light". Thus, as argued on behalf of appellant I, the expres­sion "rastered half-tone ima­ges, such as portraits" of document D3 may encompass portraits such as silhouettes or abstract facial representations (e.g. a "smiley") which are flat.

However, the expres­sion "rastered half-tone images, such as portraits" is not inherently limited to flat represen­ta­tions. The expres­sion "portraits" encom­pas­ses portraits such as the ones illustrated in fi­gures 1 and 2 of document D7 or figure 12 of document E14.

FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC

These portraits are a representation of a human face and thus satisfy the requirement of "appearing as a three dimensional mark" in the sense of the patent in suit, because they are an attempt at a three dimensio­nal ap­pea­ring representation of a (necessarily three dimen­sio­nal) human face. However, figure 2 of document D7 and the actual por­trait 3 of figure 12 of document E14 only use areas of black ink on a uniform back­ground and are therefore only binary representations in the sense that they do not involve any attempt to simulate interme­diate levels of grey, i.e. they do not make use of half-toning.

FORMULA/TABLE/GRAPHIC

On the other hand, as acknowledged by appellant I, fi­gure 1 of document D7 uses half-toning to represent a human bust: the line thickness of the black lines for­ming the portrait is varied such that, when viewed from a sufficient dis­tance, the varying line thickness will be perceived as different levels of grey in an appro­xi­ma­tion of the con­tinuous tone of a corresponding black and white photo­graph. Thus, figure 1 of document D7 makes use of half-toning and, in consequence, is a type of por­trait which is necessarily included in the ex­pres­sion "rastered half-tone images, such as por­traits" of document D3.

The embodiment of figure 2 of the patent in suit is similarly a rastered half-tone portrait of a lady, in which "a succession of dots of different colours [is] arranged in such a way that the mark appears as a three dimensional image" (patent in suit, column 12, lines 6 to 8).

The disclosure "rastered half-tone images, such as portraits" of document D3 thus necessarily includes portraits which fall under the understanding of the feature "at least one digitised mark made of at least one set of dots appearing as a three dimen­sio­nal mark when viewed in transmitted light" (see above point 1.1.8) as defined in the patent in suit. The fact that, in addition, there may be portraits which fall under the disclosure of document D3 but which do not cor­res­pond to the claimed feature does not invalidate the existence of those that do: the wording of the claimed feature is even more generic than the disclosure in document D3 and is thus anticipated by it.

2.4 The subject-matter of claim 1 according to auxiliary request 1 is not new with respect to document D3 (Article 54(2) EPC 1973).

Main request

3. Novelty

The lack of novelty with respect to document D3 carries over to claim 1 of the main request in which the last feature of claim 1 according to auxiliary request 1 was deleted.

In consequence, the subject-matter of claim 1 according to the main request is not new with respect to document D3 (Article 54(2) EPC 1973).

Auxiliary request 2

4. Admissibility

4.1 According to Article 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA, Supplementary publication 1 - OJ EPO 1/2017, 41-51), any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discre­tion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

4.2 Claim 1 according to auxiliary request 2 essentially corresponds to claim 1 according to auxiliary request 5 filed with the grounds of appeal, wherein the explicit mentioned alternatives concerning lacquer, varnish, ink and printing have been deleted, thereby limiting the scope to a digitised mark made of deposits and/or voids of material selected among metal, metal compound, al­loy, applied onto the carrier substrate by metalli­sa­tion and/or partial demetallisation techniques.

This particular amendment by excision of alter­na­tives does not raise issues which the board or the other parties cannot reasonably be expected to deal with (Article 13(3) RPBA) and can be seen as a response to the argu­ments of lack of novelty based on document E5 as advanced by the respondents. Although this amendment could have been filed with appellant I's response dated 8 December 2014, the board nevertheless decides to admit auxiliary request 2 into the procee­dings (Article 13(1) RPBA).

5. Novelty

Document D3 also discloses the additional features of claim 1 according to auxiliary request 2 as follows:

Document D3 discloses that the security element is a thread, which is at least partially embedded in the support, the support comprising the security thread being a banknote (in paragraph [0021] and claims 13 and 16). The same paragraph also discloses the embodiments of a transfer foil or patch ("Etikettenmaterial") which may be applied to a security document which thereby forms the support comprising the security element.

The further alternative of a stripe is disclosed in claim 3 of document D3 ("... endloses Bandes ...").

As already noted in the context of the higher ranking requests, the metallisation techniques and/or partial demetallisation techniques are disclosed in document D3 (e.g. in claim 1 and claim 16).

In consequence, the subject-matter of claim 1 according to auxiliary re­quest 2 lacks novelty with respect to document D3 (Article 54(2) EPC 1973).

Further auxiliary requests

6. Admissibility of auxiliary requests 3 to 6

The respective claim 1 of auxiliary requests 3 to 6 consists of yet other permutation of the set of fea­tures appearing throughout the 15 auxiliary requests which were filed with the grounds of appeal.

Contrary to appellant I's statement, the fact that the 15 auxiliary requests filed with the grounds of appeal do not converge was not introduced by the board in its annex to the summons to oral proceedings. Instead, appellant II (opponent 1) already objected that the 15 auxiliary requests filed by appellant I with the grounds of appeal do not converge (response of appel­lant II dated 28 Octo­ber 2014, section 2.1 and following). Thus, the reference to this objection by the board in their preliminary opinion does not cons­titute a legi­timate ground to file yet another set of requests thereafter. Instead appellant I (patent proprietors) already had the opportunity to discard any non-converging requests with their response dated 8 December 2014.

Appellant I's argument that these re­quests only concern new permutations of features which as such were already men­tioned in the first instance proceedings ignores that any such new permutation of features (which in themselves may already have been used in other com­binations in earlier requests) still needs to be ana­lysed anew by the parties and the board with respect to the requirements of the EPC such as inter alia with respect to novelty and inventive step. It is thus not reasonable for the other parties to be expec­ted to deal with such a further set of auxiliary re­quests whose feature combinations were never before pre­sented and which could easily have been filed already with the grounds of appeal. Appellant I filed new auxiliary requests 3 to 6, none of which corres­ponds to any of the 15 auxiliary requests which were filed with the grounds of appeal. The new subject-matter submitted constitutes new combinations of features. Unravelling the relation­ships of these new requests to previous requests and the prior art is complex and would require a substantial amount of time at this late stage of the appeal proceedings and is clearly contrary to the need for procedural economy.

For the above reasons the board decides not to admit auxiliary requests 3 to 6 (Article 13(1) RPBA).

7. Admissibility of auxiliary request 15 filed with the grounds of appeal

7.1 According to Article 13(3) RPBA, amendments to a party's case shall not be admitted after oral procee­dings have been arranged if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

7.2 Auxiliary request 15 (filed with the grounds of appeal) was replaced and thereby withdrawn to­ge­ther with auxiliary requests 2 to 14 (as filed with the grounds of appeal) when the letter of 20 November 2017 instead requested maintaining the patent in suit on the basis of new auxiliary requests 2 to 6 filed therewith.

The respondents thus no longer had any reason to prepare themselves for oral proceedings before the board with respect to auxiliary request 15 as filed with the grounds of appeal. Unexpectedly re-introducing this request during oral proceedings before the board would thus put the respondents at an unfair disad­vantage with which they cannot be expected to deal with anymore at such a late stage in the proceedings. Appellant I provided no justification for this late request.

In consequence, the board cannot re-admit auxi­liary request 15 filed with the grounds of appeal into the proceedings (Article 13(3) RPBA).