T 2111/13 22-07-2014

1. The application under consideration was filed on 31 May 2007; therefore, according to Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 4 OJ EPO, 217) and the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 4 OJ EPO, 219), Articles 54 (1),(2), 84 and 113 EPC 1973 apply in the present case.

2. Alleged violations of the right to be heard, Article 113 EPC 1973

The appellant argues that its right to be heard has been violated in several respects.

2.1 First, the appellant points out that "[s]ince [it] did not participate to the Oral Proceedings, the examining division refused the application based on an argument and an evidence on which [it] did not have opportunity to comment, in clear violation of Art. 113 EPC" (Statement of grounds of appeal, p. 4, second paragraph).

As already mentioned above (point V. of the Summary of Facts and Submissions), six days before the oral proceedings, the examining division sent a fax to the applicant, drawing its attention to certain passages of document D3 disclosing the use of inks containing metal nanoparticles for ink-jet printers. No objection based on these passages was expressed. In its decision refusing the application, the examining division then stated that claim 1 of the main request was not novel over document D3 (Reasons for the decision No. 12.3).

Although the examiner had not raised an explicit novelty objection based on these passages of document D3, such an objection should not have been a surprise to the applicant, because document D3 and in particular passages were cited as a novelty destroying disclosure. The examining division could have provided a more explicit objection but this shortcoming does not constitute a procedural violation.

2.2 The appellant also argued that its right to be heard had been violated because the examining division did not take into account its arguments and explain why they were not considered convincing (Statement of grounds of appeal, page 4, fourth paragraph).

The alleged vagueness of the argument concerning lack of novelty is related to the broad interpretation of claim 1 by the examining division. However, the appellant is correct in pointing out that

its argument that D1 only contained a generic disclosure but not a specific disclosure of, say, inkjet printing had been ignored. The examining division ought to have addressed that point when maintaining its objection raised in the summons to oral proceedings at point 3 (Reasons for the impugned decision No. 12.4). The absence of any discussion of this argument constitutes a procedural violation.

2.3 The appellant also cited decision T 951/92 (loc. cit.) and argued that it had not been informed of the essential legal and factual reasons on which the finding of non-compliance was based (Statement of grounds of appeal, page 5, paragraph 2 et seq.).

As has already been stated, claim 1 of both requests before the examining division were found not to comply with Article 84 EPC 1973 and to lack novelty over any disclosure of inkjet printing and hence over documents D3 and D1.

The examining division had already stated that claim 1 did not meet the requirements of Article 84 EPC 1973 in its Communication pursuant to Article 94(3) EPC dated 9 January 2012. Lack of novelty over document D1 was asserted in the Annex to the summons to oral proceedings dated 13 February 2013. Thus the applicant was informed of each requirement of the EPC which was considered as not being met. Apart from the objection of lack of novelty over document D3, which has already been discussed under point 2.1 above, the applicant knew the legal and factual reasons that led the examining division to refuse the application, and it had the opportunity to comment on them. The fact that the examining division referred to certain documents cited in parallel cases without actually using them to the detriment of the applicant cannot possibly qualify as a violation of the applicant's right to be heard. The board, therefore, judges that the appellant's assertion of an additional violation of its right to be heard is unfounded.

3. Claim interpretation

3.1 The correct interpretation of claim 1 is of crucial importance for this case.

3.2 According to the examining division (page 4 of the decision under consideration), "[a]s given in the Guidelines F-IV 4.13 final paragraph, the process of claim 1 on file is merely a process suitable for forming a reflective feature." (emphasis of the examining division)

3.3 The preceding paragraph of the Guidelines refers to decision T 848/93 where it is said that in a process claim the use feature is to be understood as a functional process feature comparable in category with the other (steps of) the process (Reasons No. 3.2; see also T 1384/08, Reasons No. 5.1.3 et seq.)

3.4 The passage of the Guidelines to which the examining division has referred in the impugned decision is based on decision T 304/08 of 26 August 2009. The deciding board found that the purpose of the method under consideration ("for reducing malodor associated with a disposable absorbent product intended for the absorption of body fluids") could not be regarded as a functional technical feature. The present board agrees that this intended purpose cannot be said to define features of implicit process steps. In the present case, however, the intended purpose of the method ("forming a reflective feature") is of a different nature and does indeed define a process step consisting in forming a reflective feature on the substrate surface. Therefore, the reasoning of decision T 304/08 (and the passage of the Guidelines based on it) is not applicable.

3.5 The feature "... comprising metallic nanoparticles" is not part of the intended purpose ("for forming a reflective feature") but part of the claimed process as such ("... comprising direct write printing an ink comprising metallic nanoparticles") and further defines the ink to be used in the printing step.

3.6 Therefore, the board judges that the examining division was wrong in ignoring the purpose of the process claim as well as the particular nature of the ink when assessing the novelty of the process claim.

4. Clarity (Article 84 EPC 1973)

4.1 Main request

Claim 1 defines a direct printing process for forming a reflective feature by using ink containing metal nanoparticles. The board is unable to endorse the examining division's objection according to which claim 1 did "not clearly define all the essential steps of a process for forming a reflective feature" (Point 1.1 of the communication pursuant to Article 94(3) EPC dated 9 January 2012; Reasons No. 11.1 of the impugned decision). The examining division did not explain which essential steps were missing, nor does the board see any.

It should also be noted that it is not because a claim is broad that it necessarily lacks clarity.

The examining division also stated that the attempt to define the invention by physical features of an ink and of the resulting product was not a clear definition and failed to comply with the requirements of Article 84 EPC 1973.

The main purpose of Article 84 EPC 1973 is to ensure that the subject-matter for which protection is sought is clearly defined, so that the skilled person reading the claim knows what exactly is covered by the claim. The examining division has not explained why the limitation of a printing method by physical features of the ink used and the design printed would create uncertainty in the mind of the skilled person as to the scope of protection of the claim, nor does the board see any good reason. The skilled person would understand that only direct printing methods using certain inks and resulting in certain designs are encompassed in the scope of protection.

Therefore, the board judges that the clarity objections raised by the examining division are unfounded.

This notwithstanding, the board of appeal finds the feature "... in a design ..." of claim 1 to lack clarity. It is not clear from the wording of the claim as such whether the design is the result of the direct write printing (i.e. whether "in" is to be understood as "such as to form") or whether the design is pre-existent to the printing and the printing is performed on a surface that is found within a design (i.e.

"into" the design). However, a claim has to be clear in itself. Therefore, claim 1 of the main request does not comply with the requirements of Article 84 EPC 1973.

4.2 Auxiliary request

In claim 1 of the auxiliary request the expression "in a design", which the board had found to be ambiguous, has been replaced by the expression "to form a design". It is, therefore, clear that the design is the result of the direct write printing. As a consequence, the board has no clarity objections regarding claim 1 of the auxiliary request.

5. Article 123(2) EPC

In view of the disclosure on page 3, lines 1-2, page 22, lines 19-22 and page 21, lines 16-19 of the application as filed, the board is satisfied that the amendment meets the requirements of Article 123(2) EPC.

6. Novelty (Article 54 EPC 1973)

6.1 Based on its different interpretation of claim 1, the examining division reached the conclusion that claim 1 of the main request lacked novelty.

6.2 Document D1 discloses a process for forming a reflective feature, the process comprising printing an ink comprising metallic particles ("metal powder pigment", see e.g. claim 8) onto a substrate surface in/to form a design, the design comprising a first element at least partially coplanar with a second element. This has not been contested by the appellant.

Claim 1 differs from the process disclosed in document D1 in that the process comprises direct write printing of ink and in that the metallic particles are nanoparticles. Document D1 discloses the use of various printing methods such as offset, intaglio or screen printing (see e.g. paragraph [0150]) but does not disclose the use of direct write printing. As already mentioned, document D1 discloses the use of "metal powder pigment", but there appears to be no disclosure that the pigments comprise nanoparticles, i.e. particles of a size below one micrometer. The examining division has not established that metal powder pigments necessarily contain metallic nanoparticles. As a consequence, the subject-matter of claim 1 is novel over document D1.

6.3 Document D3 discloses ink-jet inks containing metallic nanoparticles for use in ink jet printing onto a substrate (see, for instance, claim 1), which can be paper (see claim 18). It is said in document D3 (inter alia at the end of the first paragraph) that "[u]sing the present invention, decorative and conductive patterns can be obtained" (emphasis added). When examining the novelty of the subject-matter of claim 1 over document D3, based on a correct interpretation of the claim, it will have to be discussed whether it is possible to imagine such decorative patterns not always having reflective effects to some extent.

7. Remittal to the first instance (Article 111(1) EPC 1973)

The appellant has requested the board to remit the case to the examining division, and the board indeed considers this to be the most appropriate course of action, in order for the examining division to be able to consider the outstanding issues of novelty and, as the case may be, inventive step based on the correct interpretation of claim 1.

8. Composition of the examining division

The appellant has requested the board to order that a new examining division be set, "in view of the hostile attitude of the present examining division". As a matter of fact, nothing in the procedure allows the board to detect such a hostile attitude.

Be that as it may, the board cannot allow this request, as the boards of appeal do not have any power regarding the designation of the division responsible for the further prosecution of the case in case of a remittal. The allocation of duties within the departments of first instance is an administrative function within the competence of the responsible director (see, for instance, decisions T 1221/97 of 13 October 1998 and T 838/02 of 29 January 2003).

9. Oral proceedings (Article 116 EPC 1973)

The appellant has only requested oral proceedings in case the board would neither grant a patent on the basis of the main or auxiliary request, nor set aside the decision and remit the case to the examining division. As the board has decided to set aside the decision and remit the case, there is no need to hold oral proceedings, all the more as the appellant has confirmed, upon enquiry by the board, that the request for oral proceedings was withdrawn if the only question to be discussed was the reimbursement of the appeal fee.

10. Reimbursement of the appeal fee (Rule 67 EPC 1973)

Only Rule 67 EPC 1973 is the legal basis for the reimbursement of the appeal fee. Although the content of the relevant legal basis under the Implementing Regulations to EPC 1973, Rule 67, was incorporated in identical form into Rule 103(1)(a) EPC 2000, Rule 67 EPC 1973 is applicable here. Amended Rules are applicable to pending cases if they are linked to an amended article contained in the list of amended articles to be applied to pending cases; see Article 2, first sentence, of the decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations of the EPC 2000, Special edition No. 1 of OJ EPO 2007, 89; decision of the Administrative Council of 28 June 2001, loc. cit. and J 10/07, OJ EPO 2008, 567, Reasons No. 7. Rule 103(1)a) EPC is linked to Articles 109 and 111 EPC which have remained unchanged as to the substance, with only minor editorial amendments. Both Articles are not mentioned in the decision of the Administrative Council. Consequently, Rule 67 EPC 1973 is applicable in the present case.

This rule provides that the reimbursement of appeal fees shall be ordered ... where the board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

As mentioned above (points 3.1 and 3.2), the board has judged that the examining division has violated the appellant's right to be heard by ignoring an argument of the appellant regarding the novelty objection based on document D1.

However, the novelty objection based on D1 was not the only novelty objection and it is clear from the decision (and from the annex to the summons to oral proceedings) that the examining division had come to the conclusion that any inkjet printing process destroyed the novelty of claim 1.

Therefore, the appellant would have had to appeal, regardless of said violations of its right to be heard.

The boards of appeal have dealt with such situations in different ways.

According to the established case law of the boards of appeal, as summarised in Case Law of the Boards of Appeal, 7th edition, September 2013, section IV-E-8.5.1, for the reimbursement of the appeal fee to be equitable the boards require a causal link between the substantial procedural violation and the filing of the appeal. When there is no such causal link, as in the present case, the reimbursement of the appeal fee is not equitable.

An alternative approach is to consider that a procedural violation is not to be deemed substantial if the outcome of the proceedings would not have been different had the violation not occurred (see, for instance, decision T 4/00 of 17 January 2003, Reasons No. 2.6).

The present board sees no need to choose between these approaches. It comes to the conclusion that under the circumstances of the present case there is no justification for the reimbursement of the appeal fee.

Therefore, the appellant's request for reimbursement of the appeal fee is dismissed.