T 1514/09 25-04-2012

Reasons for the Decision

1. Main Request

Request for correction

1.1 According to Rule 140 EPC, in decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected. The Board has interpreted the appellants' request for a correction under Rule 139 EPC as a request for correction pursuant to Rule 140 EPC. The appellants have no legitimate interest in a correction under Rule 139 because such correction would have no legal effect. It could only lead to a correction of the application documents but not to an automatic correction of the decision to grant the patent. See the discussion in J 23/03, point 2.2.

1.2 Claim 1 of the patent as granted includes the requirement that "…the uncoated transparent base substrate has a HAZE value as measured in accordance with ASTM D-1044 in excess of 30%, and the coated substrate has a HAZE value of less than 10%".

1.3 Furthermore, paragraph [0023] of the patent specification discloses "… Abrasion resistance may be measured in accordance with ASTM D-1044 in which a CS10F standard wheel having a 500 gram load is rotated 1000 times on a sample. The HAZE value of the abraded substrate may then be measured. Uncoated acrylic and uncoated polycarbonate substrates give HAZE values of around 30% and 33% respectively (the exact value depending on thickness and source of supply). Use of the invention to apply a "hard-coat" to these substrates makes it possible to reduce these HAZE values to less than the 10% maximum permitted by the ASTM specification".

1.4 The appellants have argued that the requirement in claim 1 that the HAZE values are measured "in accordance with" the ASTM D-1044 Standard (disclosed in document D18) implicitly requires that the CS-10F "Calibrase" wheel is rotated 100 cycles on the specimen, since the paragraph 8.2 of the procedure disclosed in this Standard specifies "…Use an abrasion of 100 cycles with the 500-g load, unless otherwise specified" (emphasis added).

1.5 It appears that the quintessence of the appellants' arguments is that the ASTM Standard requires to apply the abrasion with a 500g load during 100 cycles, and that carrying out the abrasion procedure with a different number of cycles should be explicitly reported, for instance by explaining that the number of cycles applied is in deviation of the 100 cycles in the ASTM Standard. In support of their view the appellants have referred to document D14, which in col. 5, l. 51 - 60 discloses "…In the following examples the abrasion resistance of the coating specified is tested using a Taber Abraser according to the process set forth in U.S. Standard 26-1 (1966) Test No. 17, Method 7.15 except that the samples are tested after 100, 300, 600 and 1,000 cycles on the Abraser in place of the 100 cycles specified in the above Test".

1.6 The Board does not concur with this position of the appellants for the following reasons. Firstly, to the Board's understanding, paragraph 8.2 of the ASTM Standard only specifies that if a number of cycles different from the default value of "100" is applied, this number should be explicitly stated. That applying such a number of cycles different from 100 is feasible and is not uncommon follows directly from the Note at the end of paragraph 8.2 of D18 stating "Note 8 - For plotting curves of light scattering versus cycles of abrasion, 10, 25, 50 and 100 cycles are recommended". Furthermore in Table 1 added to this Standard, abrasion results for different materials are disclosed with applied numbers of cycles 10, 25, 50, 100, 200, 500 and 1000. Indeed, for instance for the case of "coated acrylic" (entries 7 and 8 of Table 1), the HAZE values when applying a higher number of cycles of 200 and 1000 are reproduced. It is likely that the reason for applying more than 100 cycles on this particular sample is that after applying only 100 abrasion cycles its HAZE value is probably still very small, and that only after an augmented number of cycles (200, respectively 1000) a significant HAZE value (2.58%, respectively 12.79%) is obtained. On the other hand, for uncoated polystyrene (entries 1 and 2), already after 10 cycles the HAZE value has a mean value of 43.05%, and after 50 cycles it amounts to 79.17%. It is evident that with such high HAZE values, applying a number of 100 cycles is not useful. Therefore the skilled person learns from this Table that the measuring method specified in the ASTM D-1044 Standard may be applied for any number of cycles in dependence of the resistance properties of the particular specimen under test, and that the only requirement is that for applying a number of abrasion cycles different from 100 this number must be stated. This also follows from the instruction in point 9.1.3 in the Section "9. Report" which reads (9.1 Report the following information) "…Load and the number of cycles used, if other than specified in 7.2" (this should probably read: "8.2").

1.7 Therefore already from the information provided in the ASTM D-1044 Standard itself (D18) it is clear that it is by no means imperative to apply the method for 100 cycles (in contrast to the specifications set to the apparatus, the abrasive wheel, the photometer and the load applied, which appear to be fixed in this Standard).

1.8 To support their argument the appellants had referred to document D14 which discloses in col. 5, l. 51 - 60 that the samples are tested after 100, 300, 600 and 1000 cycles in place of the 100 cycles in the "above Test". In this respect the Board follows the argument in point 20.1 of the Decision under appeal, pointing out that document D14 refers to a different Standard (U.S. Standard 26-1 (1966) Test No. 17, Method 7.15) and not to the ASTM D-1044 Standard. Since the method applied in that Standard is not known to the Board, it is not possible to draw any conclusion with respect to a prescription of a number of cycles to be applied, nor is it clear whether HAZE values obtained with the method according to the "26-1" Standard are comparable with those obtained when applying the ASTM D-1044 method.

1.9 It is therefore concluded that the skilled person does not have any reason to query the value "1000" in the phrase "…in accordance with ASTM D-1044 in which a CS10F standard wheel having a 500 gram load is rotated 1000 times" in para [0023] of the patent specification, since he gets the information that the HAZE values are obtained by executing the method of this Standard for a selected number of cycles of 1000. Indeed already in Table 1 of the ASTM Standard such a number of cycles is reported (for coated acrylic, entry 8) and, as discussed supra, applying a higher number of cycles may be expedient if surfaces/coatings of high abrasion resistance are to be tested. Since the patent specification addresses exactly such abrasion resistant hard-coats (para [0023], col. 3, l. 48 - 49), the skilled person has no reason to put the disclosure in this paragraph [0023] into question.

1.10 The appellants have also reasoned that, should the skilled person find that there was a conflict between claim 1, in which "in accordance with ASTM D-1044" would automatically imply "by applying 100 cycles", and the description in para [0023], it would be clear to him that the disclosure in claim 1 would prevail and that the value "1000" in para [0023] was therefore in error and should be corrected.

The Board does not see any conflict between claim 1 and the disclosure in para [0023]. Both the claim and the disclosure in this paragraph specify that the HAZE values are to be measured "in accordance with ASTM D-1044". Both the claim and para [0023] specify HAZE values for the uncoated substrate "in excess of 30%" and for the coated substrate values of "less than 10%". Paragraph [0023] provides the further information that in the applied method a CS-10F standard wheel with a 500 gram load is rotated 1000 times on the sample, but this is not in conflict with claim 1, rather it provides further information which is typical for a patent specification.

1.11 In conclusion it is not apparent that the disclosure in para [0023] of the patent specification would contain an error and the request for correcting the value "1000" to "100" cannot be allowed. The Main Request is therefore not allowable.

2. First Auxiliary Request

2.1 According to this Request, the patent should be considered in its unamended form; the appealed Decision should be set aside and the Case should be remitted to the Department of the First Instance for considering the Grounds of Opposition under Art. 100(a) and 100(c) EPC.

2.2 The Board interprets claim 1 in the light of the further disclosure, in particular para [0023], because this paragraph provides relevant information how the ASTM method is applied for measuring HAZE values of in excess of 30% (for the uncoated transparent substrate) and less than 10% (for the coated substrate), namely by rotating the wheel 1000 times on the sample.

It is noted that the Opposition Division in addressing the grounds of opposition under Art. 100(b) EPC and Art.83 EPC against the patent as granted similarly considered that the HAZE values specified in claim 1 were defined to be measured after 1000 cycles (points 18.2, 20.4, 20.5 of the Reasons). The Opposition Division found that the description of the patent did not contain any preferred embodiment or example and that the skilled person would not know which substrate or coating materials could be used to arrive at the HAZE values defined in claim 1. In particular the patent proprietors had not provided any evidence supporting disclosure of the required materials (point 21 of the Reasons).

2.3 Against this finding of the Opposition Division the appellants have essentially argued that the gist of the invention is not in the selection of new or unknown transparent substrate or coating materials, but the use of an inkjet printer for applying a resin to a substrate material. The requirements on the resin are specified in para [0017] and [0018] of the patent specification, further information being provided in para [0013] to [0021]. Therefore the skilled person would not be faced with a problem in redoing the invention.

2.4 Furthermore, for the materials to be applied the appellants have referred to documents D14, D18, D20 and D21 (D20 and D21 having been filed with the appeal), which should illustrate that suitable materials were available to the skilled person.

2.5 The respondents have objected that, even if disregarding the fact that none of the cited documents discloses materials with the required HAZE values after 1000 cycles, the patent specification also does not provide information on the combination of substrates and coatings which could be used, apart from the generic classes of materials in para [0016] and [0018]. In particular the patent specification does not provide any information whatsoever how the HAZE values can be reduced to 2-4% and in certain cases to even lower allegedly obtained values, e.g. 1-1.5% (para [0023], col. 3, l. 52 and 53).

2.6 The appellants have cited a number of documents (D14, D18, D20, D21) in support of their view that materials with the reported HAZE values had been available before the priority date of the patent, and that the skilled person would therefore not have encountered a problem in applying these materials when redoing the claimed method. First of all, the Board has some reservations to accept that these documents can be considered as generally accessible prior art, which should be in textbooks rather than in patent documents, in particular in a long-established field of technology.

2.7 When considering these disclosures separately the Board finds:

2.7.1 As already pointed out in para 1.8 supra, document D14 discloses HAZE values obtained by following a different US Standard. Therefore the issue of whether the reported values would be comparable with those obtained by following the method in ASTM D-1044 is completely open. In any case the type of substrates (polyethylene terephthalate, PET) differs from the examples disclosed in para [0016] of the patent specification (polycarbonates, poly-acrylics, polyesters and allyl carbonate; or glass). Furthermore in the method applied in D14 the coating compositions were prepared using a casting blade depositing a wet film, with subsequent curing, instead of inkjet printing. It is not apparent that the skilled person would have considered this document at all, since both the Standards, as well as the applied substrate material and the coating methods are different from those in the patent specification.

2.7.2 Document D18 discloses the ASTM D-1044 Standard according to which the HAZE values in the claimed method were measured. Since the patent specification makes explicit reference to this Standard the skilled person might have consulted it for further details on the applied method and would have considered the results in Table 1. With respect to the uncoated substrates (entries 1 - 6 for polystyrene, acrylic and polycarbonate) the respondents have objected that no results for 1000 cycles are disclosed. The Board, however, concurs with the appellants that at least in case of polycarbonate the HAZE value after 100 cycles is already >30% and falls within the terms of claim 1. For acrylic, comparing the HAZE values after 25 cycles (14.88%) and after 100 cycles (27.98%) it appears quite probable that after 1000 cycles the HAZE value would also be in excess of 30%, as defined in claim 1.

With respect to the coated surfaces (entries 6 - 10) document D18 does not give any information about the type of the coating material, nor about the method of applying it onto the (acrylic or polycarbonate) substrate materials. In any case, the HAZE value for coated acrylic after 1000 cycles is 12.79%, which is not within the range defined in claim 1. The same holds for coated polycarbonate, which has a HAZE value of 27.06% after 500 cycles. Hence, according to Table 1 of document D18, both coated substrate materials (acrylic and polycarbonate) referred to in para [0023] of the patent specification have HAZE values outside the range defined in claim 1. Therefore the disclosure in this document is of no avail to the skilled person, rather he might conclude that the values defined in claim 1 were not routinely obtainable.

2.7.3 Document D20 had been cited by the appellants for demonstrating that uncoated polycarbonate has a HAZE value of >55% after 300 cycles abrasion in accordance with ASTM D-1044 (col. 4, l. 1 - 4; and Tables I and II), therefore its value after 1000 cycles should clearly also be in excess of 30%. The document does not give HAZE values after 1000 cycles.

According to Table I, the HAZE value for coated polycarbonate after 300 cycles Taber abrasion is 7-8%. In a further example shown in Table II, coated polycarbonate samples after 300 cycles Taber abrasion show a HAZE value of 3-4% and after 500 cycles 6-9%. Since D20 does not provide HAZE data for 1000 cycles and, in addition, the coating compositions are applied by spraying, dipping or flow coating (col. 2, l. 22 - 24), its usefulness for the skilled person attempting to redo the method defined in claim 1 by using a jet printer is in doubt.

2.7.4 Finally the appellants have cited document D21, where in Example 2, a polycarbonate lens having been coated with a solution "D" discloses HAZE values after 200 and 500 cycles Taber abrasion of 2.4% and 5.0%. According to the appellants, the relatively small increase of the HAZE value from 200 to 500 cycles would suggest that going to 1000 cycles this value would still be below 10%.

However, this coating solution D includes a metal oxide colloid in sufficient concentration as to prevent mudcracking, see claim 1 and the Abstract of D21. Furthermore the coatings were applied by dipping and subsequently curing for 1.5 hours at 120°C. Since both the composition of the solution of the coating, the manner of applying it and the number of cycles differ from the method proposed in the current patent, it is not clear that the teaching of document D21 would be of any assistance to the skilled person attempting to redo the claimed method.

2.8 Therefore the documents referred to by the appellants do not substantiate the availability before the priority date of the present patent of coated substrates of the materials mentioned in the patent specification (in particular acrylic and polycarbonates) having a HAZE value of less than 10% after 1000 cycles according to ASTM D-1044, and in particular not in the range of 2-4% or even 1-1.5% as disclosed in col. 3, l. 52 and 53 of para [0023].

2.9 Furthermore, apart from disclosing values for the viscosity of the solution to be applied (para [0017]), the patent specification does not disclose information as to whether applying a coating by means of a jet printer would give comparable results as the known techniques (dipping, spraying, flow coating), since different parameters (viscosity, temperature, adherence to the substrate, hardening or curing) might influence the adherence of the coating to the substrate. Therefore the question of whether the materials used in these prior art techniques could be used without further modification of the parameters, including post-treatment (curing or hardening), remains unanswered.

2.10 It is added that, as already noted in point 21 of the Decision under appeal, the patent proprietors (appellants) have not provided any evidence or comparative measurements supporting disclosure of the required materials.

2.11 The appellants have argued that the gist of the invention resides in an enabling technology, namely: the use of a jet printer for producing abrasion resistant coatings on a transparent substrate, and that the question of sufficiency of disclosure is therefore not related to a selection of materials. It is, however, not shown that the materials and parameters of existing coating techniques could be used in a jet printer without modification and which effect the deposition of the coating solution by jet printer on the coating would have. Furthermore, none of the prior art coatings cited by the appellants meets the requirement for the HAZE values after 1000 cycles as stated in para [0023] and defined in claim 1. Finally the patent specification does not disclose a preferred embodiment which the skilled person could use as a cue to be able to reproduce the claimed method successfully.

2.12 Therefore the Board concurs with the respondents that in the present case the person skilled in the art encounters a situation similar to that referred to in T0399/05, in that "…the person skilled in the art has to find out merely by trial and error as to which, if any, compound meets the parameter set out in claim 1, i.e. by proceeding on a lottery basis or by making own investigations without the shadow of any useful guidance, namely by performing a research program".

2.13 Consequently the disclosure cannot be reproduced without undue burden (see Case Law of the Boards of Appeal, 6th edition, 2010, II.A.4.2).

2.14 In conclusion, the subject-matter of the patent specification, in particular that of claim 1, does not meet the requirements of Art. 100(b) and 83 EPC 1973.

3. Auxiliary Requests 2 - 5

The independent claims of these Requests are based on claim 1 of the patent as granted. They include further features, but still comprise the above definitions in terms of HAZE values. for the base substrate and surface coating. Since it has been found that the subject-matter of the patent specification does not in this respect.meet the requirements of Art. 100(b) EPC 1973, this objection similarly arises against these further Requests.