Pages 73-80

BOARDS OF APPEAL

Decisions of the Technical Boards of Appeal

Decision of Technical Board of Appeal 3.3.2 dated 16 January 1995 - W 4/94 - 3.3.2

(Translation)

Composition of the board:

Applicant: Merck Patent GmbH

Headword: Pigments/MERCK

Article: 155(3) EPC; 34(3)(a) PCT

Rule: 68.2, 68.3(c), (e) PCT

PCT Guidelines Chapter III, 7, Chapter VI, 5.5, 5.7

Keyword: "Obligation under Rules 68.2 and 68.3(e) PCT to provide justification" - "Assessment of unity a posteriori" - "Functional feature not definitely called into question" - "Reimbursement of all fees"

Headnote

I. The obligation under Rule 68.2 PCT to provide justification can be seen as fulfilled if the prime reason for the decision is identifiable, even though the reasons could be seen as insufficient or incorrect (see reasons, 4.1).

II. If the arguments submitted in the protest do not necessitate any additional discussion on technical and/or patent law issues, ie do not lead to any new assessment of the facts, it is not automatically incorrect for the notification of the result of the review under Rule 68.3(e) PCT merely to refer back to the reasons given on form PCT/IPEA/405 (see reasons, 4.2).

Summary of facts and submissions

I. The applicants filed international application PCT/EP92/02351 on 12 October 1992 using form PCT/RO/101. According to sheet 5, box No. VIII ("CHECK LIST"), of the form, the application comprised 49 sheets of description, "6 sheets" of claims, a one-sheet abstract and 3 sheets of drawings. Claim 1 on page 50 of the application reads as follows:

"1. A platelike pigment with high gloss and high covering capacity or high transparency, consisting of a transparent, inorganic, platelike matrix which may contain an additional component, characterised in that the additional component is a soluble or insoluble colouring agent and that to achieve gloss the matrix is covered at least on one side with one or several thin, transparent or semi-transparent, reflecting layers of metal oxide or metal."

II. The five pages of the application numbered 50 to 54 contain the further claims, of which claims 2 to 15 are dependent on claim 1 and concern, successively, the material form of the matrix, cross-linking agents for modifying the matrix, barium sulphate for smoothing the surface, the material form of the colouring agents and the material form of the layers covering the matrix. Claim 16 concerns a process for manufacturing a platelike pigment. It is followed by dependent claims 17 to 25 and, according to the applicants in their communication dated 28 July 1993, page 2, third paragraph, further dependent process claims 26 and 27 and use claim 28. No more pages containing claims can be found in the file.

III. In the "invitation to restrict the claims or pay additional fees" in accordance with Article 34(3)(a) and Rule 68.2 PCT, dated 29 June 1993, the applicants were informed that the European Patent Office as the "International Preliminary Examining Authority" (IPEA) was of the opinion that the international application claimed five inventions and therefore, as was explained, either the claims had to be restricted or four additional examination fees had to be paid.

The IPEA also stated that, having regard to the description of JP-A-2-32 170, claim 1 of FR-A-1 581 309 and the abstract of FR-A-1 273 230, the problem of preparing multi-layered platelike pigments was not a novel idea. Consequently, claims 1 to 25 contained a variety of inventions which were not linked with each other so as to form a single general inventive concept. The inventions were:

(I) A platelike pigment, consisting of a transparent, inorganic, platelike matrix, the matrix being covered at least on one side with one or several thin, transparent or semi-transparent reflecting layers of metal oxide or metal.

(II) The above pigments, with the matrix containing a colouring agent.

(III) The above pigments, with the matrix modified by cross-linking agents.

(IV) The above pigments, with the matrix containing barium sulphate for smoothing the surface.

(V) A new process for manufacturing the above pigments, in which the matrix is treated with acid prior to coating.

Thus inventions II to V concerned further embodiments of the same general concept, each representing a different problem relating to the matrix.

IV. The applicants paid all the required additional fees under protest, arguing in their letter dated 28 July 1993 and in the letter accompanying their payment of the protest fee, dated 12 January 1994, inter alia not only that the colouring agent in the matrix was to be seen as an essential feature of claim 1, but also that the subject-matter of that claim had not been described before by the documents cited as prior art in such a way as to be prejudicial to novelty, the known substrates not being equatable with the matrix material now claimed, and therefore, according to the PCT Guidelines, claims for a product, its manufacture and use were permissible in one application.

V. In the "invitation to pay the protest fee" in accordance with Rule 68.3(e) PCT, dated 22 December 1993, the IPEA informed the applicants without further addressing the grounds given for the protest that the review also provided for in Rule 68.3(e) PCT had found that the invitation of 29 June 1993 had been justified.

VI. The applicants responded by paying the protest fee, filing a new main claim and, in their accompanying letter dated 12 January 1994, explaining inter alia that the problem of the invention should be seen as overcoming the disadvantages of natural materials by using a platelike matrix which could be manufactured by solidifying a liquid precursor on a smooth base.

Reasons for the decision

1. The protest is admissible.

2. Regarding the obvious absence from the file of the originally filed sixth sheet of claims, corresponding to a page 55 of the description, it should be noted that, apart from the fact that the IPEA likewise did not consider the missing claims 26 to 28 when assessing unity, this can in the final analysis have no influence on the decision of the board (whose authority is derived from Article 155(3) EPC in conjunction with Rule 68.3(c) PCT) as to whether the objections of non-unity concerning the invention's subject-matters I to V as defined in the contested invitation to pay four additional fees are correct and whether the invitation was therefore justified.

3. Nor does the board have any authority to examine the unity of the invention on the basis of the "new main claim" filed by the applicants with their letter of 12 January 1994 (see W 3/91, dated 21 September 1992, reasons ,2). In coming to its decision, however, the board sees no reason for it not to consider the general remarks on the disputed unity which are contained in that letter.

4. Although the obligation to provide justification was not expressly referred to by the applicants in their protest, the board feels compelled to comment on the matter in this case because of the brevity of the IPEA's remarks.

4.1 The IPEA established lack of unity with reference to three documents, ie a posteriori, and maintained its finding unamended after the review. Although the relevant remarks, as will be shown below, are not fully in accord with the PCT Preliminary Examination Guidelines, Chapter VI, 5.5 and 5.7, with reference to Chapter III, 7, the fact that in their protest the applicants commented on an objection concerning the novelty of the invention's subject-matter according to claim 1 indicates that the IPEA's remarks were understandable as being more than a mere allegation; as a result, the minimum required under the obligation stipulated in Rule 68.2 PCT to provide justification can be seen as fulfilled. The board does not consider the obligation to be infringed if the prime reason for the decision is identifiable, even though the reasons could be seen as insufficient or incorrect. In the board's opinion, EPO board of appeal case law adheres to this principle. A comparable approach can also be seen in the decisions on protests, for example published decision W 3/93, OJ EPO 1994, 931 ff., reasons, 3.1. In that case the board took the view that since the applicants were able to make a substantive response at all, the reasoned statement could be considered sufficient.

4.2 Regarding the extent of the notification of the result of the review under Rule 68.3(e) PCT, it should be noted that the wording of that rule, in contrast to the "invitation to restrict or pay" in Rule 68.2, first sentence, stipulates only that a result be notified and does not expressly mention any obligation to give reasons. The corresponding guidelines on implementing the rules at Chapter VI, 5.7 also stipulate a technically reasoned statement only where the review produces a negative result, ie where the facts in the invitation under 68.2 are not confirmed. The board therefore takes the view that, where the review body reaches the conclusion that the arguments put forward in the protest do not necessitate any further discussion on technical and/or patent law issues, ie do not lead to any new assessment of the facts, the phrase "... doit indiquer les raisons techniques de ce résultat ..." or "... will give a technical reasoning of that result ..." does not mean that it is automatically incorrect merely to refer back to the reasons given on form PCT/IPEA/405.

The review under Rule 68.3(e) PCT can also be compared with interlocutory revision in accordance with Article 109 EPC, which does not stipulate any separate obligation to provide justification.

5. All that remains is to examine whether the reasons given in accordance with Rule 68.2 PCT justify the demand for four additional examination fees.

5.1 The board infers from the listing drawn up by the IPEA of what it refers to as different groups of inventions (I) to (V) that this is based on the assumption that, contrary to what is stated in the applicants' protest, the subject-matter of claim 1 is a platelike pigment for which the matrix contains, merely as an option, a soluble or insoluble colouring agent. The board can agree with this basis for assessment and with the ensuing conclusion, but only in so far as items (II) to (V) on the list relate to further embodiments of the matrix of the pigments according to the invention.

5.2 However, irrespective of whether a colouring agent is present or not, said claim 1 is directed to a platelike pigment consisting of a transparent, inorganic, platelike matrix. Not only have the applicants repeatedly contested that a platelike matrix within the meaning of the application is already known, but also it follows directly from the overall disclosure in the application documents, the description and the examples (both with and without colouring agents) that the term matrix in claim 1 is specifically intended to possess the property of being able to absorb a soluble or insoluble colouring agent, ie the term matrix is to be considered in the sense of a functional feature when compared with the prior art. Moreover, the board feels that it is quite clear to the skilled person, even without consulting the description in the application, that not all platelike, inorganic substrates are matrices suitable for specifically incorporating colouring agents. Obviously, subsequent, uncontrolled diffusion processes into a substrate cannot be interpreted as the deliberate preparation of a matrix. Nor, therefore, can the novelty of the subject-matter of claim 1 in the form considered by the IPEA be definitely called into question.

5.3 On this point the board has likewise consulted cited documents FR-A-1 581 309, FR-A-1 273 230 and, in addition to the information contained in the description of the application, the English-language abstract of JP-2 032 170, and reached the conclusion that none of these documents describes a matrix in the sense of the invention so clearly that the objection of lack of novelty could be raised without any further explanation. Taking the approach that all the groups of inventions listed contain the matrix as a functional feature, it is then no longer immediately clear how the inventions are to be divided into groups because the aforementioned "idea" lacks novelty (see paragraph 5.2 above). Given that novelty cannot be definitely called into question, an objection of non-unity a posteriori requires further explanation on the basis of a problem to be defined against the cited prior art and including the claimed solutions, ie within the framework of an inventive step examination. The problem chosen in the present invitation is of no immediate assistance here, while that proposed by the applicants concerning a liquid precursor, though clearly containing the beginnings of a solution, also appears to be unsuitable.

5.4 Since the reasons given in the IPEA's invitation of 29 June 1993 for finding non-unity are thus unconvincing, the invitation to pay four additional fees is not justified and the fees paid for four additional inventions and the protest fee cannot be retained.

5.5 To conclude, it should be noted that under Rule 68.3(c) PCT the board only had to examine whether, considering the reasons given by the IPEA and the submissions made in support of the protest, retaining additional fees was justified, and could not investigate ex officio whether an objection of lack of unity would have been justified for reasons other than those given, eg after taking into consideration further documents found during the search. It is therefore possible that the objection of lack of unity could be raised again on different grounds in the event of subsequent proceedings under PCT Chapter II.

Order

For these reasons it is decided that:

Reimbursement of the additional fees paid for four inventions and the protest fee is ordered.