T 1683/18 15-12-2022

Summary of Facts and Submissions

I. The patent proprietor and the opponent filed an appeal against the decision of the opposition division that European patent No. 2 077 949 ("the patent") can be maintained in amended form.

II. In a letter dated 15 February 2022, the patent proprietor withdrew its appeal.

III. Among the documents cited in the decision under appeal, only document D4 (JP S61-274993 A) is relevant for the appeal proceedings. The appellant filed the following documents with its statement of grounds of appeal:

D4* Human translation of document D4

D15 T. Furu et al., "Trace Elements In Aluminium

Alloys", Proceedings of the 12th International

Conference on Aluminium Alloys, Yokohama,

Japan, September 5-9, 2010, pages 282 to 289

IV. In a communication pursuant to Article 15(1) RPBA 2020, issued on 21 March 2022, the board inter alia explained that, in view of the withdrawal of the patent proprietor's appeal, the opponent was the sole appellant, and the patent proprietor was the respondent to the opponent's appeal. Consequently, the principle of prohibition of reformatio in peius applied. The board further explained that, against this background, it understood that the respondent (patent proprietor) requested that the appeal be dismissed or that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of auxiliary request 2 or 3, each filed on 4 January 2019.

V. As both parties declared that they would not attend the oral proceedings scheduled for 23 May 2022, the oral proceedings were cancelled.

VI. The appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked.

VII. According to the board's understanding of the respon­dent's requests given in the communication pursuant to Article 15(1) RPBA 2020, which was not contested, the respondent (patent proprietor) requested that the appeal be dismissed or that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of auxiliary request 2 or 3, each filed on 4 January 2019.

VIII. Claims 1 and 9 of the auxiliary request filed during the oral proceedings before the opposition division, which the opposition found to meet the requirements of the EPC (main request), read (feature references used by the board are given in square brackets):

"1. [S0] A lithographic sheet comprising an aluminum

alloy, wherein the aluminum alloy consists of:

[S1] 0.05 wt % to 0.25 wt % Si;

[S2] 0.25 wt % to 0.4 wt % Fe;

[S3] less than or equal to 0.007 wt % Cu;

[S4] 0.01 wt % to 0.25 wt % Mn;

[S5] 0.31 wt % to 0.40 wt % Mg;

[S6] less than or equal to 0.03 wt % Zn; and

[S7] less than or equal to 0.03 wt % Ti;

[S8] the balance aluminum and incidental impurities, the incidental impurities no greater than 0.05 wt % each and 0.15 wt % in combination."

"9. A method for producing a lithographic sheet

comprising the steps of:

providing an aluminum sheet made from the aluminum alloy according to claim 1;

degreasing the aluminum sheet by an electrolytic pre-etching step, wherein

the electrolytic pre-etching step comprises:

contacting the aluminum sheet with an electrolyte bath; and

applying a current having a non-sinusoidal wave form to the electrolyte bath at a constant peak voltage; and

roughening the aluminum sheet by electrograining after degreasing the aluminum sheet."

Claim 1 of auxiliary request 2 differs from claim 1 of the main request in that the upper limit for the weight percentage of Cu is 0.04 instead of 0.007 (feature S3') and the upper limit for the weight percentage of Ti is 0.014 instead of 0.03 (feature S7').

Claim 1 of auxiliary request 3 differs from claim 1 of the main request in that feature S3 was replaced by feature S3' and in that there is a lower limit of 0.01 for the weight percentage of Zn (feature S6').

IX. The parties' relevant submissions may be summarised as follows.

(a) Appeal deemed to be filed

(i) Respondent (patent proprietor)

The opponent incorrectly paid the reduced appeal fee

due for a natural person or an entity referred to in Rule 6(4) and (5) EPC. Although the board issued a communication stating that no declaration pursuant to Rule 6(6) EPC had been filed, no declaration pursuant to Rule 6(6) EPC was filed within the established time limit (25 June 2018), nor was the shortfall in fees paid within the two-month time limit for filing the notice of appeal. Consequently, the opponent's appeal must be deemed not filed or considered inadmissible. Article 8 of the Rules relating to Fees (RFees) is not intended as a remedy for a party that deliberately paid a reduced fee without being entitled to it. Additionally, the shortfall in this case (about 17% of the full amount) is too high to be considered a small amount pursuant to Article 8 RFees. Therefore, the opponent's appeal must be deemed not filed. Moreover, the opponent's request for re-establishment must be rejected. In accordance with the established jurisprudence, an opponent is not entitled to request re-establishment of rights in respect of the two-month time limit for filing an appeal.

(b) Admittance of documents D4* and D15

(i) Respondent (patent proprietor)

Documents D4* and D15, which were submitted for the first time along with the opponent's statement of grounds of appeal, could have been presented during the opposition proceedings and should not be admitted into the appeal proceedings (Article 12(4) RPBA 2007). Docu­ment D4* replaces a machine translation of a Japanese patent application. The opponent was aware that some passages of that translation were unclear. Moreover, the new translation is not certified. The authors of document D15 are from companies having a connection with the opponent, and the document could have been presented in the opposi­tion proceedings. It should be held inadmis­sible (Article 12(4) RPBA 2007). Moreover, this document cannot be considered evidence of the common general knowledge of the skilled person.

(ii) Appellant (opponent)

Documents D4* and D15 should be admitted. Document D4 was part of the first-instance proceedings. The filing of an improved translation does not create new facts. The objection based on an alleged ambiguity in the machine transla­tion was only raised during the oral proceedings. Document D15 is introduced in support of the argument that the Cu contents according to main­tained claim 1 are customary in the art. Its filing in the appeal proceedings was triggered by the admission of a new auxiliary request during the oral proceedings in which the Cu content was limited. The document substantiates that the Cu content according to claim 1 of the auxiliary request is customary in the art.

(c) Main request: compliance with Article 123(2) EPC

(i) Appellant (opponent)

The subject-matter of granted claim 10 (corresponding to claim 9 of the patent as maintained) has no basis in the originally filed application. The process features added in the claim referred to a pre-etching step of a sheet and were at most disclosed for a strip in the original application. The opposition division assumed that it was clear from the original application that the terms "sheet" and "strip" were interchangeable in the context of the application and that, according to the understanding of the skilled person, the disclosed process steps also extended to the treatment of a sheet (section 1.2 of the decision under appeal). However, this assumption is incorrect since the patent nowhere indi­cates an interchangeability of these terms. On the con­trary, the wording of the patent and also the tech­nical knowledge contradict this assumption. Thus, the oppo­si­tion division's decision must be set aside. Paragraphs [0058] to [0065] of the original application do not provide a basis for the amendments. The first line of paragraph [0060] does not speak of treating a plate with the pre-etching step. Rather, the pre-etching step explicitly referred to the strip, while the sheet is only referred to in terms of the subsequent properties of the product. A direct refe­rence to the effect of the pre-etching step on the sheet is not found in the original application. Rather, it is clear from para­graph [0060] that a strip is used to produce the sheet and that the strip is subjected to the pre-etching step. The original disclosure does not give any indica­tion that "sheet" and "strip" are synonymous or inter­changeable. It is clear from the wording chosen in the original application that "strip" refers to the semi-finished product processed in the process - including the pre-etching step - while "sheet" refers to the product of the process. Para­graphs [0002] and [0035] of the original applica­tion also describe that lithogra­phic plates are made from strips. This clearly distin­guishes the plate as the product from the strip as the semi-finished product. This distinction also directly corresponds to the under­standing of the person skilled in the art. The difference between a strip and a plate is also by no means trivial in terms of carrying out the process steps. Finally, claim 9 as maintained relates to a working method on an aluminium plate, in which a plate provided according to the feature "provi­ding an aluminum sheet made from the aluminum alloy according to claim 1" is acted upon via the pre-etching step according to the feature "degreasing the aluminum sheet by an electrolytic pre-etching step". Whether a working step acts on a plate or a strip is clearly distinguishable. Thus, claim 9 as maintained does not comply with the requirements of Article 123(2) EPC.

(ii) Respondent (patent proprietor)

Claim 10 as granted complies with the requirements of Article 123(2) EPC since the additional feature "made from the aluminum alloy according to claim 1; degrea­sing the aluminum sheet by an electrolytic pre-etching step" is disclosed in paragraph [0060], whereas the additional feature "roughening the aluminum sheet by electrograining after degreasing the aluminum sheet" is disclosed in paragraph [0065]. The terms "sheet" and "strip" are interchangeable in the context of the patent application (in particular, from paragraphs [0058] and [0060]) and, consequently, the skilled person would have understood from the overall disclo­sure of the patent application as originally filed that the method steps of paragraphs [0060] and [0065] not only apply to a "strip" but also to a "sheet". The application uses these terms interchangeably, so that the use of the term "sheet" in amended method claim 10 as granted complies with requirements of Article 123(2) EPC. It is not relevant that the skilled person knows that sheets and strips have different dimensions and that different devices may be required to treat them chemi­cal­ly since the application as originally filed refers to both "aluminum sheet" and "aluminum strip". Thus, granted claim 10 does not present the skilled person with new technical information. This reasoning also applies to corresponding claim 9 of the patent as maintained by the opposition division.

(d) Main request: insufficiency of disclosure

(i) Appellant (opponent)

The subject-matter of the patent is not disclosed in a matter sufficiently clear and complete for it to be carried out by a person skilled in the art. For the skilled person to put into practice the teaching of the patent, it is not sufficient that a plate with any composition of the alloy according to claim 1 can be obtained. Otherwise, the teaching of the patent would merely be a trivial, unpatentable extension of the prior art. The production of aluminium alloy plates is complex. The actual properties of the final product depend on a variety of parameters during manufacture. While not all parameters need to be reproduced in detail, the disclosure of the invention in the patent is insufficient if those skilled in the art can no longer determine whether they are working within the scope of the invention or not. In the current case, there is no information available to the skilled person about mechanical or surface properties towards which the skilled person could work by means of experiments. Finally, the patent does not indicate a single way of carrying out the alleged invention. The "ALLOY" referred to in paragraph [0040] of the patent does not constitute an example of an embodiment according to the features of the maintained claim. Consequently, the patent does not fulfil the requirement of a sufficient disclosure.

(ii) Respondent (patent proprietor)

The subject-matter of the patent is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Even though the "ALLOY" described in paragraph [0040] of the patent is outside the range of claim 1, the method of making the lithographic sheet provided by the patent application as originally filed can be easily adapted to perform the invention. Thus, the patent provides enough information for the skilled person to make the lithographic sheet of claim 1 as granted and, additionally, to apply the method of claim 10 as granted and claim 9 of the patent as maintained. Claim 1 as granted relates to a lithographic sheet having a specified composition. It would not be an undue burden for the opponent to attempt to reproduce the teaching to support its argument of insufficiency of disclosure. In the absence of such experimental evidence, the opponent's allegation had to be considered unfounded and unsubstantiated.

(e) Novelty of the subject-matter of claim 1 over the disclosure of document D4

(i) Appellant (opponent)

The subject-matter of maintained claim 1 is not new over document D4. It is clear from translation D4* that the Cu content according to document D4 is preferably 0.004-0.020 wt.% (see page 8, first paragraph). Feature S3 is thus clearly anticipated by document D4. The selection of a sub-range of numerical values from a larger range is only novel if all the following criteria are met:

- The selected sub-range is narrow. This criterion is not fulfilled because the range for the Mg content extends over a substantial part of the prior-art range (see D4*: page 6, "Summary of the invention" and the additional minimum requirement for the Mg content in view of the Si and Mn content). The claimed range for the Zn content (feature S6) of 0-0.03 wt% covers more than half the previously known range of 0-0.05 wt% (see page 8, first paragraph).

- The selected sub-range is sufficiently far removed from the known range illustrated by means of examples. Alloy "A" from Table 1 of document D4 has a composition containing 0.28 wt.% Fe (feature S2), 0.07 wt.% Si (feature S1), 0.01 wt.% Mn (feature S4), 0.31 wt.% Mg (feature S5) and 0.02 wt.% Ti (feature S7). Zn is not mentioned (feature S6), but the range for impurities is 0-0.05 wt.% (see page 8, first paragraph) (feature S8). Only the explicit indication of the Cu content of 0.016 wt.% of alloy "A" is above the claimed range maximum of 0.007 wt.% (feature S3). However, the skilled person is already informed that the exact Cu content is not decisive for the assessment of alloy "A" by the indication that Cu is only present as an impurity - and not as an alloying addition - and is preferably contained in the range of 0.004-0.020 wt.% (see page 8, first paragraph). Rather, the person skilled in the art would have tried to keep the amount of impurities small. On the basis of alloy "A", it is thus clear that the examples of document D4 readily convey an alloy according to maintained claim 1.

- The selected area does not provide an arbitrary specimen from the prior art. This criterion is not fulfilled because no technical effect is apparent for the Cu content seen as a distinguishing feature. The selection of the alloy ranges - as far as they do not directly result from document D4 - is thus an arbitrary selection.

(ii) Respondent (patent proprietor)

The opposition division's finding that claim 1 as

granted is not novel over document D4 (see item 5.2.3 of the Grounds for the decision under appeal) is incorrect. The skilled person in the art would have been aware of the upper limit of the impurity range (0.05 wt%) and would have been prompted to work below this limit, but there is no information in document D4 that would have motivated them to work specifically below the limit of 0.03 wt%. Prior to the disclosure of patent, the skilled person would not have made additional efforts to maintain the limit of impurities not higher than 0.03 wt% because there was no reason to do so. The inventors had found, however, that a content of Zn lower than or equal to 0.03 wt % (in the aluminium alloy composition of claim 1 as granted) is advantageous for electrograining in nitric acid, and it can function as the initiator for pit formation during electrograining (see paragraph [0019] of the patent). According to Table 1 of document D4, alloy A consists of 0.28 wt% Fe, 0.07 wt% Si, 0.01 wt% Mn, 0.31 wt% Mg, 0.016 wt% Cu, 0.02 wt% Ti, 0.04 wt% Zr, the remainder being aluminium. Thus, although the general description of the aluminium alloy provided by D4 states that it can comprise not more than 0.05 wt% of impurities, the specific definition of alloy "A" does not mention the presence of any unspecified impurity. Consequently, document D4 does not teach an aluminium alloy having feature S6 in combination with the rest of elements specified in claim 1 as granted. According to translation D4*, a technical effect is associated with a copper content from 0.004 to 0.020 wt% since this range is preferable for resistance to ink staining (see page 8, first paragraph). Thus, the skilled person would have understood that copper is not a mere impurity that does not have any effect on properties of the aluminium alloy. Taking into account that the amount of Cu present in alloy "A" is 0.016 wt% (see Table 1 of document D4), the skilled person in the art would have been motivated to work in the upper part of the above-mentioned preferred range, i.e. outside the range specified in claim 1 of auxiliary request 1 (less than or equal to 0.007 wt%). When looking at the examples contained in document D4 (see Table 1), it would be clear that the main focus of this prior-art document is on compositions clearly outside the claimed scope of the current invention. Moreover, a Cu amount of less than or equal to 0.007 wt%, in combination with the other alloying elements in the aluminium alloy comprised in the lithographic sheet of the invention, allows a uniform pitting response. Consequently, this range cannot be considered an arbitrary selection. Thus, document D4 does not clearly and unambiguously disclosure feature S3 in combination with the other alloying elements in the aluminium alloy and, therefore, claim 1 is new over document D4. Furthermore, the skilled person would have been aware of the upper limit of the impurity range disclosed in document D4 (i.e. 0.05 wt%) and, there­fore, would have been prompted to work below this limit, but there is no information in this prior-art document that would have motivated them to work specifi­cally with an amount of Zn below the limit of 0.03 wt%. Thus, the skilled person would not have been motivated to work specifically below the limit of 0.03 wt% Zn.

(f) Auxiliary requests 2 and 3: admittance

(i) Appellant (opponent)

Auxiliary requests 2 and 3 should not be admitted in

application of Article 12(4) RPBA 2007. The patent proprietor did not explain why auxiliary requests 2 and 3 were not submitted at first instance. The content of document D4 was known from the opposition proceedings. Moreover, auxiliary requests 2 and 3 do not meet the criterion of convergence. Taking into account auxiliary requests 2 and 3, the patent proprietor has filed a total of three auxiliary requests differentiated from each other by the inclusion of different features. The subject-matter of the main request is further limited by the following (seemingly indiscriminate) inclusion of various parameters: restriction of the Cu content (auxiliary request 1); limitation of the Ti content (auxiliary request 2) and limitation of the Zn content (auxiliary request 3). Thus, different further developments are pursued by the inclusion of different features.

(ii) Respondent (patent proprietor)

Auxiliary requests 2 and 3 should be admitted. Claim 1 of auxiliary request 2 specifies that the amount of Ti is less than or equal to 0.014 wt%. Claim 1 of auxiliary request 3 requires the amount of Zn to lie within the range of 0.01-0.03 wt%.