T 0592/17 26-10-2021

Main request ("NEW 2.AUXILIARY REQUEST", filed during oral proceedings on 9 December 2016)

1. Added subject-matter - Claim 1

1.1 The appellant argued that the subject-matter of claim 1 of the main request extended beyond the content of the application as filed. In particular, it submitted that the feature "the pigment content of coating composition A consists 90 to 100 wt.% of at least one 100 to 1000 nm thick aluminum flake pigment and 0 to 10 wt.% of at least one further pigment" in claim 1 of the main request was not based on the application as filed.

1.2 The respondent submitted that the pigment content of coating composition A was clearly based on the passages on page 9, lines 5-9 and page 7, lines 9-10 of the application as filed.

1.3 Claim 1 of the main request (II, supra) mentions that "the pigment content of coating composition A consists 90 to 100 wt.% of at least one 100 to 1000 nm thick aluminum flake pigment and 0 to 10 wt.% of at least one further pigment" (emphasis added).

The passage on page 9, lines 5-9 of the application as filed states that "the pigment content of coating composition A consists exclusively of the at leat one aluminum flake pigment" and "it may also comprise about 0 to 10 wt.% of at least one further pigment which is selected in such a way that NIR-opaque coating layer A' exhibits low NIR absorption".

The passage on page 7, lines 9-10 of the application as filed refers to aluminum flake pigments comprising "one or more 100 to 1000 nm thick aluminum flake pigments".

The features relating to the pigment content in the coating composition A of claim 1 of the main request are each disclosed in the above passages.

However, from the wording of claim 1 of the main request, the skilled person would understand that the further pigment in said claim is not a 100 to 1000 nm thick aluminum flake pigment. Consequently, the skilled person would not exclude, as one further pigment, an aluminum flake pigment having a different thickness (i.e a thickness of below 100 or 1000 nm).

Contrary thereto, the passage on page 9, lines 5-9 clearly and unambiguously discloses that the further pigment cannot be an aluminum flake pigment.

Thus, the term "further pigment" in claim 1 of the main request does not refer to the same pigment as disclosed in the passage on page 9, line 5-8 of the application as filed.

1.4 The respondent submitted that the passage on page 9, lines 5-9 of the application as filed did not exclude that the further pigment could be an aluminum flake pigment. The only requirement of this passage, referring to "one aluminum flake pigment", was that the further pigment was different from the "one aluminum flake pigment". If the aluminum flake pigment had a certain property, the further pigment had only to be different from the specific aluminum flake pigment and, thus, could be an aluminum flake pigment having a different property. The application as filed did not exclude that the further pigment was an aluminum flake pigment.

The board does not agree. First, as submitted by the appellant, the passage on page 9, lines 5-9 of the application as filed refers to "at least one aluminum flake pigment" (emphasis added by the board), meaning that any aluminum flake pigment is encompassed by the term "at least one aluminum flake pigment" and that the amount of 90 to 100 % of pigment of coating composition A derived from the above passage encompasses the amount of any aluminum flake pigment.

Second the board acknowledges that the application as filed does not expressis verbis exclude that the further pigment is an aluminum flake pigment. However, the board did not find, and the respondent did not indicate any passage in the application which directly and unambiguously discloses that the further pigment can be an aluminum flake pigment. In the absence of such a disclosure, the respondent's argument must fail.

1.5 Therefore the board concludes that claim 1 of the main request introduces subject-matter beyond the content of the application as filed, contrary to Article 123(2) EPC.

2. For this reason, the main request is not allowable.

3. A015 and A016 were submitted by the appellant in support of its arguments on added subject-matter. A015 and A016 are letters of the respondent filed during examination proceedings leading to the present patent and indicate how the respondent interpreted the term "further pigment". The respondent requested that the documents not be admitted into the proceedings. Since the board accepted the appellant's point of view without taking documents A015 and A016 into account, there was no need for the board to address the admittance of these documents. Document A014 which had been filed by the appellant in support of an objection of lack of clarity in relation to the main request had not had to be addressed either.

Auxiliary request 1 - claims filed on 26 August 2021

4. The claims of auxiliary request 1 are identical to the claims of "New auxiliary request 3" submitted with the reply to the grounds of appeal.

5. Added subject-matter

Claim 1 of auxiliary request 1 comprises the feature "the pigment content of coating composition A consists 90 to 100 wt.% of at least one 100 to 1000 nm thick aluminum flake pigment and 0 to 10 wt.% of at least one further pigment", i.e. the feature of claim 1 of the main request which was found to add subject-matter contrary to Article 123(2) EPC (point 1, supra). Thus the same reasons as those given for claim 1 of the main request apply mutatis mutandis to claim 1 of auxiliary request 1.

6. Therefore, auxiliary request 1 is not allowable.

Auxiliary requests 2, 3 and 4 - claims filed on 26 August 2021

7. The claims of auxiliary requests 2, 3 and 4 are identical to the claims of "New auxiliary request 4", "New auxiliary request 5" and "New auxiliary request 6" submitted with the reply to appeal.

8. Added subject-matter

Claim 1 of each of auxiliary request 2, 3 and 4 comprises the feature "the pigment content of coating composition A consists exclusively [deleted: of 90 to 100 wt.%] of at least one 100 to 1000 nm thick aluminum flake pigment and 0 to 10 wt.% of at least one further pigment" (emphasis added by the board; strike through and bold text representing deletion and addition respectively compared to the corresponding feature of claim 1 of the main request).

The respondent argued that the insertion of the term "exclusively" in the respective claim 1 of each request made it clear that the 100 to 1000 nm thick aluminum flake pigment was the only pigment present in coating composition A, i.e. that coating composition A no longer included "0 to 10 wt % of at least one further pigment".

The board does not agree. As submitted by the appellant, the insertion of the term "exclusively" in the claim does not add anything that was already expressed by the term "consist of". Since claim 1 of each of auxiliary request 2, 3 and 4 still comprises the feature "0 to 10 wt.% of at least one further pigment", the skilled person, when reading the claim, understands that coating composition A may comprise 0 to 10 wt.% of at least one further pigment, even if the term "exclusively" is present in the claim. In particular, the term "exclusively" would not be understood to indicate that the at least one further pigment may no longer be present, since it refers to both the aluminium pigment and the further pigment. Thus, contrary to the respondent's argument, the presence of the term "consists exclusively of" does not change the pigment content of coating composition A with respect to the term "consist of" found in claim 1 of the main request and auxiliary request 1.

Consequently, claim 1 of each of auxiliary requests 2, 3 and 4 does not comply with Article 123(2) EPC for the same reasons given above for claim 1 of the main request (points 1.3-1.4).

9. For this reason, auxiliary requests 2, 3 and 4 are not allowable.

Auxiliary request 2', 3' and 4' - claims filed on 26 August 2021

10. Admittance of auxiliary requests 2', 3' and 4'

10.1 Claim 1 of each of auxiliary requests 2', 3' and 4' differs from claim 1 of each of auxiliary requests 2, 3 and 4, respectively in that the feature "and 0 to 10 wt.% of at least one further pigment" was deleted.

10.2 The appellant requested that auxiliary requests 2', 3' and 4' not be admitted into the appeal proceedings.

Auxiliary requests 2', 3' and 4'were filed on 26 August 2021, i.e. after issuance of the summons to oral proceedings and the board's communication pursuant to Article 15(1) RPBA 2020 dated 26 February 2021. In accordance with Article 13(2) RPBA 2020, which applies to the case at hand in accordance with the transitional provisions set out in Article 25(1) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

In exercising its discretion, the board considers, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were admissibly raised by another party in the appeal proceedings, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings and does not give rise to new objections (Article 13(1) RPBA 2020).

10.3 In view of the following considerations, the board decided not to admit auxiliary requests 2', 3' and 4' into the proceedings

The objection under Article 123(2) EPC against the feature "at least one 100 to 1000 nm thick aluminum flake pigment and 0 to 10 wt.% of at least one further pigment", present in claim 1 of each of the main request and auxiliary requests 1 to 4, was raised by the appellant for the first time in the letter of 2 June 2014 (second full paragraph on page 2), discussed during the oral proceedings before the opposition division, considered in the impugned decision (point 5.1) and re-presented in the statement of grounds of appeal (point 4). The objection raised by the appellant was thus not associated with any new aspect on appeal. Moreover, the appellant, in its letter dated 5 April 2018, further addressed the issue of added subject-matter in relation to claim 1 of auxiliary requests 2, 3 and 4 (then auxiliary requests 4, 5 and 6, see points 3.2, 3.3 and 3.4 of said letter). The board therefore does not agree with the respondent that the issue was raised by the board for the first time in its communication dated 26 February 2021. The respondent further argued that the submission of claim requests about two months in advance of oral proceedings was generally considered as sufficiently timely in opposition proceedings. The board considers this argument irrelevant in the proceedings before it, since appeal proceedings are governed by a different legal framework. Hence, no convincing justification for the submission of these claim requests at this late stage of the proceedings was provided by the respondent.

10.4 Furthermore, the amendments give rise to new objections, under Article 123(2) and Article 84 EPC. Claim 1 of each of auxiliary request 2', 3' and 4' comprised the following amendment:

"wherein the pigment content of coating composition A consists exclusively of at least one 100 to 1000 nm thick aluminum flake pigment [deleted: and 0 to 10 wt.% of at least one further pigment], which is selected in such a way that NIR-opaque coating layer A' exhibits low NIR absorption" (emphasis added by the board; strike through text representing deletion respectively compared to the similar feature of claim 1 of each of auxiliary requests 2, 3 and 4).

As set out above, the feature "0 to 10 wt.% of at least one further pigment" was deleted in claim 1 of each of auxiliary requests 2', 3' and 4'. This deletion overcame the objection raised under Article 123(2) EPC in relation to claim 1 of each of auxiliary requests 2, 3 and 4.

However claim 1 of each of auxiliary requests 2', 3' and 4' still comprised the feature "which is selected in such a way that NIR-opaque coating layer A' exhibits low NIR absorption". As set out above (point 1.2, supra), and as argued by the appellant, said feature is disclosed, in the application as filed, in combination with the "at least one further pigment" and not in combination with the "at least one 100 to 1000 nm thick aluminum flake pigment" as recited in claim 1 of each of auxiliary request 2', 3' and 4'. Consequently the subject-matter of claim 1 of each of auxiliary requests 2', 3' and 4' still extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.

Furthermore, claim 1 of each of said requests is not clear. More specifically, as submitted by the appellant, the feature "which is selected in such a way that NIR-opaque coating layer A' exhibits low NIR absorption" is not clear in claim 1 of each of auxiliary request 2', 3' and 4'. In fact, the pigment content of coating composition A consist only of 100 to 1000 nm thick aluminum flake pigment. There is thus nothing else to be selected. Therefore, the skilled person cannot determine the entity to which this feature refers and does not know what should be selected.

10.5 During oral proceedings, the respondent also requested a correction pursuant to Rule 139 EPC, arguing that the filing of the claims of auxiliary requests 2', 3' and 4' represented the filing of the corrected sets of claims. The sets of claims of auxiliary requests 2, 3 and 4, which had been filed with the reply to the appeal as auxiliary requests 4, 5, and 6, had erroneously contained the feature "and 0 to 10 wt.% of at least one further pigment". This feature had been deleted from each of claim 1 of the corresponding auxiliary requests 4, 5, and 6 in the proceedings before the opposition division, as could be seen from the claim requests containing hand-written amendments filed in reply to the opposition. By mistake, however, in the typed versions of these claims requests filed subsequently, the deletion was not implemented and this had remained unnoticed until the submission of the correct versions.

The appellant requested that the respondent's request for a correction under Rule 139 EPC not be admitted into the proceedings. The correction was requested late and the associated submissions only made at the oral proceedings before the board. Moreover, the requirements for a correction were not met since the requirements that it had to be clear what the error was and what the correction should be were not met.

Irrespective of the late stage at which correction was requested, the board could neither agree that an error was recognisable nor that the correction of the error would have been obvious in the sense that it would have been immediately evident that nothing else would have been intended than what was offered as the correction. While there was indeed an inconsistency concerning the presence or absence of the feature "and 0 to 10 wt.% of at least one further pigment" in claim 1 between the sets of claims of then auxiliary requests 4, 5 and 6 showing hand-written amendments filed in reply to the notice of opposition as compared to those filed as typed version with a subsequent letter during opposition proceedings, it is not apparent whether the typed version comprised an error, or alternatively, whether there was a subsequent amendment. The respondent's associated explanations relating to the amendments carried out covered both versions and a later change of mind on the part of the respondent cannot be excluded. In addition, claim sets of all auxiliary requests as upheld by the respondent in opposition proceedings were filed at the oral proceedings before the opposition division and attached to the minutes. In these versions the above-mentioned feature in claim 1 was present, and no correction had been requested. Furthermore, as also highlighted by the appellant, none of the sets of claims of the auxiliary requests filed with the reply to the appeal was identical to any of the sets filed during opposition because they contained additional amendments, more specifically the deletion of a claim. Hence, in the light of the upheld auxiliary requests and the additional amendments made on appeal, it can neither be established that there was any recognisable error at all, nor that the proposed correction would have obvious in the sense that it would have been immediately evident that nothing else would have been intended.

10.6 In view of the above, the board decided not to admit auxiliary requests 2', 3' and 4' into the appeal proceedings in accordance with Article 13(1) and (2) RPBA 2020.

Auxiliary request 5 - claims filed on 26 August 2021

11. The claims of auxiliary request 5 are identical to the claims of auxiliary request 7 filed on 10 October 2016.

Claim 1 of auxiliary request 5 differs from claim 1 of the main request in the pigment content of coating composition A and in the additional feature that "coating layer A' is cured prior to application of a further coating layer".

The pigment content of coating composition A in claim 1 of auxiliary request 5 reads as follows:

"wherein the pigment content of coating composition A consists 90 to 100 wt.% of at least one [deleted: 100 to 1000 nm thick] aluminum flake pigment and 0 to 10 wt.% of at least one further pigment, which is selected in such a way that NIR-opaque coating layer A' exhibits low NIR absorption,

wherein the pigment content of coating composition A comprises <90 wt.% of 10 to 80 nm thick aluminum flake pigment," (emphasis added by the board; strike through and bold text representing deletion and addition respectively compared to the similar feature of claim 1 of the main request).

11.1 The appellant requested that auxiliary request 5 not be admitted into the proceedings.

11.2 Under Article 12(4) RPBA 2007 (applicable to the present case pursuant to Article 25(2) RPBA 2020, the reply to appeal having been filed before 1 January 2020) the board, without prejudice to the power to hold inadmissible certain facts, evidence or requests, takes into account everything presented by the parties in the statement of grounds of appeal and the reply if and to the extent it relates to the case under appeal and meets the requirements under Article 12(2) RPBA 2007.

Article 12(2) RPBA 2007 stipulates inter alia that the statement of grounds of appeal and the reply shall contain a party's complete case and set out clearly and concisely why the decision under appeal be amended or upheld and should specify all the facts, arguments and evidence relied on.

As set out above, claim 1 of auxiliary request 5 refers to aluminum flake pigments defined with only one thickness of 10 to 80 nm. With the reply to the grounds of appeal, while identifying the amendments made in auxiliary requests 1 to 4 (point 2 of the reply), the respondent did not provide any substantive arguments concerning the subject-matter of the claims of auxiliary request 5, let alone regarding the relevance of the aluminum flake pigments defined with the thickness of 10 to 80 nm and the feature "coating layer A' is cured prior to application of a further coating layer" comprised in claim 1 of auxiliary request 5, the set of claims of which was first filed on 26 August 2021. More specifically, no arguments were submitted in the reply to the grounds of appeal as to why the subject-matter of auxiliary request 5 would overcome the objections of added subject-matter, novelty and inventive step raised by the appellant in the grounds of appeal, nor was any such argument self-evident. The respondent simply stated that it requested alternatively that the patent be maintained "based on Auxiliary Request 7 as filed during opposition proceedings".

11.3 During the oral proceedings, the respondent submitted that the claims of auxiliary request 5 were identical to the claims of auxiliary request 7 filed on 10 October 2016 before the opposition division and the amendments made in the latter request were substantiated during the proceedings before the opposition division which was sufficient. In relation to the substantiation, the respondent also referred to its submissions presented on appeal.

The board does not agree that a substantiation presented during proceedings before the opposition division is sufficient for the purposes of Article 12(2) RPBA 2007. It is established Case Law of the Boards of Appeal that a mere reference to a party's earlier submissions made during the proceedings before the opposition division is not sufficient as a submission in reply to a statement of grounds of appeal (see e.g. T 1311/11, reasons 19). In the present case, not even a reference to a substantiation made during the proceedings before the opposition division was provided in the reply to the appeal. Rather, the respondent's submission was limited merely to a statement that the auxiliary request was maintained.

11.4 Since the relevance of the amendment of claim 1 of auxiliary request 5 was not substantiated, the respondent failed to submit its complete case in accordance with Article 12(2) RPBA 2007 and, hence, the board did not need to take this request into account in the appeal proceedings under Article 12(4) RPBA 2007. Only in the letter dated 26 August 2021, i.e. two months prior to the oral proceedings, was the claim request addressed as to its merits, but confined to an explanation as to where basis in the application as filed could be found and to the statement that novelty and inventive step should be acknowledged for the same reasons as for the main request (see point 8 of said letter). These submissions were presented at an extremely late stage of the appeal proceedings and, in addition, the amendments further distinguishing claim 1 from claim 1 of the main request had not been addressed at all. This resulted in both the board and the appellant being left in the dark as to the purpose of this claim request and how it was intended to overcome the grounds for opposition raised by the appellant.

11.5 In view of the foregoing, the board decided not to admit auxiliary request 5 into the appeal proceedings in accordance with Article 12(4) RPBA 2007 and Article 13(1) and (2) RPBA 2020.