T 0519/12 17-03-2017

1. Applicable law

It is noted that the revised version of the Convention (EPC 2000) does not apply to European patent applications pending at the time of its entry into force (13 December 2007), unless otherwise provided. In the present decision, where Articles or Rules of the former version of the EPC apply, their citation is followed by the indication "1973".

2. The appeal is admissible.

3. Main request

3.1 D1 reproduces the content of the present application insofar as the embodiments of Figures 1 to 14 are concerned. Concretely, document D1 discloses a transaction card made of metal and a method of manufacturing such a card. In this respect, the Board shares the view of the examining division that D1 illustrates the closest prior art.

3.2 The question arises whether the examining division also rightly considered that the method of claim 1 according to the main request differed from the manufacturing method disclosed in D1 in that it comprised the steps of:

- milling a second pocket on a first surface of the

transaction card;

- disposing an adhesive within the second pocket; and

- disposing a microchip within the second pocket.

3.3 Paragraph [0100] in D1 explicitly refers to the presence of "any other pocket" that may be milled in one or more surfaces of a transaction card. Therefore, contrary to the view of the examining division, the feature of milling a second pocket on the first surface of the transaction card, that is on a surface different from the one receiving the first pocket, as mentioned above, is known from D1. Since, moreover, the part of the description relating to the embossing pocket also refers to a milling process, it follows that D1, as a whole, discloses milling both the embossing pocket and "other pocket" on said first surface.

Since said paragraph explicitly refers to a microchip transaction card, it is considered that the feature of disposing a microchip in an additional pocket is also disclosed in D1.

There is however no indication to be found in this paragraph or in the disclosure as a whole that the second pocket to be milled on the first surface is the one that would receive the microchip. For these reasons, a further selection is to be made between the two configurations identified above in paragraph [0100] which shall actually define the closest prior art.

3.4 The embodiment referring to the incorporation of a microchip as a card feature is considered to define the most promising starting point (closest prior art) when deciding on the inventive merits of the claimed invention since it reproduces the functionalities of the claimed transaction card.

It follows that the subject-matter of claim 13 differs from the card disclosed in D1 only in that the second pocket is disposed on the first surface of the card.

Similarly, the method of making the transaction card of claim 1 differs from the method disclosed in D1, in that the second pocket is milled on the first surface of the transaction card.

3.5 The presence of the second pocket for receiving the microchip on the first surface of the transaction card does not justify the presence of an inventive step since it results from requirements contained in said International Standard ISO/IEC 7816-2:2007(e). Specific reference is made to section 5 ("Location of contacts relative to other technologies") where it is specified that "Embossing (ISO/IEC 7811.1) when present, shall be located on the same side as the contacts". No inventive activity can be recognised with regard to this technical prescription. It is expected from the skilled person that he would exercise his skills in the framework of technical Standards in force in his field of activity. No inventive activity can thus be derived from a feature that simply reflects the content of such a technical prescription.

3.6 Consequently, the subject-matter of claims 1 and 13 of the main request does not involve an inventive step in the sense of Art. 56 EPC 1973.

The main request is thus not allowable.

4. Auxiliary request I

4.1 The appellant's view, according to which the amendment to claim 1 (cf. point IX above) permitted to avoid damage to a microchip during the milling process of the pocket (cf. point 45 in the statement of grounds), is not convincing.

In effect, there appears to be no need in the claimed method to dispose the microchip in the second pocket before milling the first pocket. It is stressed that claim 1 does not define any clear sequence with regard to the various operations being carried out. In this respect, the effect relied upon by the appellant appears not only artificial in that it would not reflect normal practice, but also at odd with the claim's wording which does not include the limitation relied upon by the appellant.

The problem addressed by the invention must thus be reformulated so as to apply to claim 1 in its generality and be technically sensible (cf. decision T 0939/92, OJ 1996, 309).

Applying the approach developed in T 0939/92 and having regard to the teaching of document D1, the technical problem solved by the claimed method would simply consist in selecting a location for said first pocket.

The claimed configuration does not then extend beyond an arbitrary selection of the position for said first pocket for which the presence of an inventive step is denied.

4.2 Consequently, the subject-matter of claim 1 of auxiliary request I does not involve an inventive step in the sense of Art. 56 EPC 1973. The same applies to claim 13.

Auxiliary request I is thus not allowable.

5. Auxiliary request II

5.1 The appellant puts forward that the features added to claim 1 of auxiliary request II (cf. point X above) derived from the statement on page 21, lines 24, 25 of the original application (cf. paragraph [0110] of the published application) in combination with the embodiment of Figures 14A to 14C from which it could be derived that the pocket 1410 in which the microchip is disposed was positioned above the location of the signature panel (cf. point 57 in the statement of grounds).

The passage and Figures relied upon by the appellant relate, however, to different embodiments which cannot be combined. As a matter of fact, the embodiment of Figure 14A to 14C indeed discloses a pocket for the microchip being positioned above the location of the signature panel but also a pocket for the back panel being positioned above said signature panel, contrary to the claim's wording. The original disclosure does not contain any clear indications that would support the claimed wording. Even when assuming that the "inset fill panel", disclosed with regard to the embodiment of Figure 11, could define a back panel in the sense of claim 1, this embodiment does not contain any information regarding the relative positioning of said inset fill panel relative to the microchip panel. It therefore does not constitute a suitable basis for the amendments carried out.

5.2 Claim 1 of auxiliary request II is therefore considered to define added subject-matter contrary to Art. 123(2) EPC. The same applies to claim 13.

Auxiliary request II is thus not allowable.

6. Auxiliary requests III to VI

6.1 Claim 1 of auxiliary requests III to VI comprises inter alia the limitation that "the method further comprises disposing indicia on the back panel and then pairing the back panel with the card and performing the bonding of the back panel to the first pocket" (cf. points XI to XV above).

The appellant puts forward that said features derived from the statement on page 20, line 32 to page 21, line 1 of the original disclosure (cf. paragraph [0108] of the published application) or from original claim 1.

While it is acknowledged that the passage referred to by the appellant discloses the added features, it is also observed that said passage relates to a context different from the one corresponding to the independent claims of the main request. The passage cited by the applicant neither explicitly nor implicitly disclose the now claimed combination of features.

It is stressed that the wording of claim 1 implies that the back panel corresponds to the panel to be disposed in the embossing pocket. This understanding of the claim's wording reflects thus the configuration illustrated with regard to the embodiment of Figure 11 with a back panel, incidentally referred to as "inset fill panel". The inconsistent terminology between the claim and the disclosure would not as such constitute a problem under Art. 123(2) EPC insofar as the deriving technical teaching would indeed be supported by said embodiment. More fundamental, however, is the fact that the passage referred to by the appellant refers to the embodiment of Figures 14A to 14C with a back panel, indeed identified in this embodiment as "back panel", which fulfills functionalities different from those of Figure 11. In this regard, it is emphasized that the original disclosure does not contain any suggestion to provide the inset back panel of Figure 11 (incidentally defined as "inset fill panel") with indicia. Similarly, the embodiment of Figures 14A to 14C does not contain any suggestion to dispose the back panel in the first embossing pocket. It follows that the claimed methods according to claim 1 of auxiliary requests III to VI combine various embodiments of the disclosure in a way for which no basis can be found in the original disclosure.

6.2 Consequently, claims 1 of auxiliary requests III to VI define added subject-matter contrary to Art. 123(2) EPC.

Auxiliary requests III to VI are thus not allowable.

7. In conclusion, the appellant's request for the grant of a patent on the basis of the pending main request or auxiliary request I to VI is rejected.