T 2293/18 () of 31.3.2022 (2023)

events and wishes

I. The Patentee's and the Opponent's complaints refer to the decision of the Opposition Division of the European Patent Office, which decided to uphold European Patent No. 2 606 533 as amended in accordance with Auxiliary Application 3 at that time.

II. The following documents are relevant to this decision:

E2: ON 1 058 201 A1

Q4: Catalog 2004/2005 of the company PARTEX, May 2004

E5: WO 2009/015781 A2

Q8: Excerpt from the PARTEX catalogue

FW1: Artikel: "Crystallinity of Polymers"

FW2: Plastic Testing Glossary: ​​"Crystallinity"

Z2: Practice report by J. Bauer: "All plastic or what?"

III. An oral hearing was held on 31 March 2022 in the presence of the parties via teleconference.

The patent holder (the applicant) requested the annulment of the contested decision and the maintenance of the amended patent based on the main application or on the auxiliary application 1, both filed together with the grounds of appeal, on a subsidiary basis, as an auxiliary application 2 to refuse to grant the participant's appeal , still alternatively maintaining the patent in the amended form in accordance with one of the auxiliary requests 3 to 8 submitted to the opposition.

The objector (appellant) requested that the patent owner's complaint be dismissed, or failing that, that the patent owner's complaint be dismissed. It also sought annulment of the contested decision and revocation of the patent.

4. Claim 1 of the main application reads as follows:

"Marking mat for marking electrical components, with a number of marking units (10), with a marking unit (10) having a crossbar (12) and a number of inscription plates (14) formed on the crossbar (12), with marking units (10) being connected by means of a frame (16), are connected to each other, guide means (18a, 18b) for guiding the marking mat to a printer mounted on the frame (16) guide means (18a, 18b) with at least one path (20a, 20b) for engagement with the printer, in which at least one side surface (30a, 30b) of the web (20a, 20b) is chamfered, characterized in that the recognition layer is made of injection-molded, amorphous plastic that is easier to write on."

V. Claim 1 of Auxiliary Order 1 reads as follows (changes to the main order are indicated):

"[...] that the identification mat is made of amorphous, injection-molded plastic, which is easier to write on than semi-crystalline plastic."

Claim 2 in auxiliary application 1 presents the following change compared to claim 2 in the main application:

"[...] that amorphous plastic is [...] [removed: or an amorphous-partial crystalline mixture]."

SO V. Subsidiary request 2

a) Claim 1 in auxiliary order 2 (corresponding to auxiliary order 3, on which the contested decision is based) has the following wording:

"Marking mat for marking electrical components, with a number of marking units (10), with a marking unit (10) with a crossbar (12) and a number of inscription plates (14) formed on the crossbar (12), with marking units (10) are connected through a frame (16. , 20b) which are placed essentially parallel to each other,

characterized in that the identification mat is made of an amorphous injection-molded plastic, which, unlike semi-crystalline plastic, is easier to write on, with the two bands (20a, 20b) on its inner side surfaces (30b) facing each other in order to each other and/or towards each other, each of the outer side surfaces (30a) has a chamfer."

Requirements 2 to 5 depend on requirement 1.

b) Independent claim 6 in auxiliary order 2 reads as follows:

"Marking mat for marking electrical components, with a number of marking units (10), with a marking unit (10) having a crossbar (12) and a number of inscription plates (14) formed on the crossbar (12), with marking units (10) being connected by means of a frame (16), are connected to each other by guide means (18a, 18b) for feeding the identification mat to a printer mounted on the frame (16), characterized in that the identification layer is made of an injection-molded amorphous plastic, which unlike semi-crystalline plastic is easier to write on, is formed and one or more injection points (28) are provided in the cores across (12).

Requirements 7 to 9 depend on requirement 6.

c) Claim 10 of the independent method in auxiliary order 2 reads as follows:

"Method for manufacturing a marking mat for marking electrical components with multiple marking units (10), wherein a marking unit (10) is formed by a crossbar (12) and multiple marking plates (14) formed on the crossbar (12)) , the marking units (10) are connected to each other by means of a frame (16), guide means (18a, 18b) for guiding the marking mat to a printer mounted on the frame (16), guide means (18a, 18b) ) are essentially U-shaped and each has two flaps (20a, 20b) arranged essentially parallel to each other, characterized in that the recognition mat is injection-molded from an amorphous plastic, which, unlike semi-crystalline plastic, is easier to write with two tissues (20a, 20b} with a chamfering on their inner side surfaces (30b) facing each other and/or on their outer sides (30a} facing each other."

Claims 11 to 13 depend on claim 10.

Supplementary Application 2 also includes amended description pages 1 to 14 submitted at oral hearing before the Opposition Division on 18 June 2018.

WE YOU. The patent holder's arguments in relation to this decision can be summarized as follows:

Main application - approval

The main claim is admissible. By including the phrase "as opposed to semi-crystalline plastics" in claim 1, the patentee simply wanted to remove the objection raised in the Opposition Division's preliminary opinion that the intermediate generalization was unacceptable. They did not want to deliberately prevent a decision in this case. The exclusion of the phrase "in opposition to semi-crystalline plastics" from claim 1 of all claims, presented on appeal, was due to the surprising development of the oral proceedings before the Opposition Division. In particular, the exception of ambiguity regarding the contradiction between claim 1 and 2 due to the new wording was raised for the first time in the hearing. The now omitted wording is therefore a normal procedural development that represents an acceptable reaction to the surprising development of the oral proceedings before the opposition department. Reference is also made to the relevant jurisprudence of the appeal departments in T 848/09 and T 134/11.

Request for assistance 1 - Article 84 of the Civil Code

Claim 1 could not meet the requirements of Article 84 of the EC Treaty according to the principles of G 3/14. The question of delimitation of the term "amorphous plastic" has already been raised in the same way in the approved claim 1. Furthermore, it is clear that an amorphous plastic according to claim 1 is a pure amorphous plastic without crystalline components. Claim 1 is therefore self-explanatory, because the person skilled in the art can easily distinguish between an amorphous and a semi-crystalline plastic. Reference is also made to T 1989/18 and T 978/16. In particular, these decisions show that Article 84 of the PCL concerns the clarity of claims and that the description cannot by itself make a statement vague.

Subsidiary request 2 - admissibility of amendment

The second clause in section [0008] of the published order is inserted with the word "in particular". Thus, it introduces an optional feature. Thus, with regard to the example of printing on inkjet printers and thermal transfer printers, this extract reveals that it is possible to print without the risk of the ink again running out during printing. The omission of the corresponding half-sentence in claim 1 therefore does not constitute an impermissible intermediate generalization.

Help Request 2 - Innovation

The subject matter of claim 1 was new compared to the E2 and E4 documents. The protrusions 5 described in document E2 (see figure 5) did not have chamfers in the sense indicated in claim 1. With respect to document E4, a person skilled in the art would not consider an angle of 90° between an edge and a surface as a chamfer, when the term in claim 1.

Ancillary Claim 2 - Step of Invention

The purpose of claim 1 was not suggested by document E5 together with documents E2 and E4. The E5 document does not specify the type of plastic used. Therefore, it differs from the purpose of claim 1 in that no amorphous plastic is used.

The objective technical problem arising according to section [0005] of the patent in question is to provide an identification mat which can be registered permanently and reliably by all commercially available printing processes, in particular thermal transfer printing and/or inkjet printing.

The E2 and E4 papers revealed several types of plastics, including amorphous and semi-crystalline plastics. These documents contained no mention of the advantages of amorphous plastic in terms of better printability and more permanent marking effect on the ID mat. Documents E2 and E4 therefore provide no information about the specific use of amorphous plastic in the marking layer according to E5.

Therefore, neither the E5 document nor the other E2 and E4 documents discussed the impact of materials on inscription durability. In section [0017], E2 only lists various types of plastics that have an amorphous or partially crystalline structure, without mentioning these properties. The same applies to the E4 document.

VIII. The opposing parties' arguments regarding this decision can be summarized as follows:

Complaint - acceptable

In his appeal, the patent owner sought maintenance of the patent on the basis of the approved claims. EPC Rule 99(1)(c) required the subject matter of the appeal to be stated in the notice of appeal. Since the approved claims were not the subject of the opposition process, the patentee could not claim the maintenance of the patent based on these claims, as there was no claim in this regard. Therefore, the only contention contained in the appeal was dismissed and the appeal is therefore liable to be dismissed under Article 99(1). 1(c) EPC because the appeal did not specify the subject matter of the appeal.

Main application - approval

The main order is unacceptable. The phrase "in opposition to semi-crystalline plastics" was deliberately included in claim 1 of all claims at first instance in order to prevent the Opposition Division from ruling on the question of the legality of the amendments (Article 123(1) EC Treaty). . The lack of clarity caused by the amendment should not surprise the patentee. The objector has in the letter of 3. May 2018 pointed out the contradiction between claim 1 and 2, which the change entails.

Help Request 1 - Clarity

Claim 1 according to help request 1 was not self-explanatory. In particular, it is not clear which materials should be included in the term "amorphous plastic" as opposed to "partially crystalline plastic". The description does not contain corresponding limit values ​​for the crystallinity of the two plastic classes, nor does it state suitable measurement methods.

Subsidiary request 2 - admissibility of amendment

In light of the description in section [0008] of the published application, the "improved etchability" of claim 1 is solely related to eliminating the risk that the ink applied during printing will later peel off the surface again. However, this passage was not included in claim 1, so claim 1 of auxiliary claim 2 was subject to an unacceptable intermediate generalization.

Help Request 2 - Innovation

The subject matter of claim 1 of auxiliary order 2 was not new compared to documents E2, E4 and E8. From these documents, in particular, beveled screens are derived according to claim 1. A bevel is a deviation in an acute or obtuse angle from a horizontal line. The vertical line as a deviation from a horizontal line falls under a chamfer according to claim 1. The relevant feature is thus described in E4 (and mutatis mutandis in E8).

Document E2 also shows an oblique side view of a track in fig.

Ancillary Claim 2 - Step of Invention

The subject matter of claim 1 was suggested by document E5 together with document E2 or E4. The article according to claim 1 differed from the E5 document in that the plastic was an amorphous plastic. The E5 document does not contain information on suitable materials for the marking layer. The objective technical task is therefore the selection of a suitable plastic. Documents E2 and E4 already disclosed the use of amorphous plastic for a similarly constructed marking mat. The person skilled in the art would therefore have reason to construct the identification mat described in E5 from an amorphous plastic.

Reason for decision

1. Admissibility of the patent holder's complaint (Article 108 of the Civil Code, Article 99, paragraphs 1 and 2 of the CPE)

1.1 The patent holder's complaint can be accepted as admissible.

1.2 In accordance with the consolidated jurisprudence of the Appellate Divisions, in the event of an appeal by the patent applicant or proprietor, the notice of appeal need not contain a request to maintain the patent in a particular form. This situation is linked to the requirement in Article 99, subsection 2, EPC, according to which the appellant must state in the grounds of appeal the extent to which the decision must be changed (see e.g. T 358/08, grounds 5). The EPC requirement in Article 99, subsection 1, letter c), on the other hand, is generally already fulfilled if the notice of appeal contains a request for annulment of the contested decision. Such a request has the effect of determining the subject matter of the appeal (see Jurisprudence of the EPO Appellate Divisions, 9th edition 2019, V.A.2.5.2 c)).

1.3 In the instant case, the patent owner stated in the complaint that he was appealing the Opposition Division's decision on the limited preservation of the disputed patent and asked "that the challenged decision be overturned and the patent preserved on the basis of the approved claims. to dismiss the failure".

In any case, the patent holder's complaint must contain an express request for the annulment of the contested decision in order to fulfill the requirement of Article 99(1). 1, letter c), EPC.

The fact that the patentee sought to maintain the challenged patent on the basis of the claims approved on appeal does not contradict it. On the contrary, this circumstance must be assessed in the context of the award of the main appeal and does not raise any question as to the admissibility of the appeal.

1.4 Therefore, the patent holder's appeal meets the requirements of Article 108 EPC and Rule 99, para. 1 and 2 EPC, and is therefore admissible.

2nd main order - authorization (§ 12(4) RPBA 2007)

2.1 The main complaint is not accepted in the complaint process.

2.2 According to § 12.º, no. 4, of the RPBA 2007, amended by § 25.º, no. in the first instance.

2.3 The patentee did not dispute that the inclusion of features taken from the description "as opposed to semi-crystalline plastic" in claim 1 in all claims during the proceedings before the Opposition Division was intended to remove the grounds for opposition under Art. . 100(c) EPC (see in particular point II.2. of the letter from the patentee, received on 18 April 2018).

In the main app now available, this feature has been removed.

2.4 The board agrees with the opponent that, by including the above remedy in all the claims, the patentee has prevented the Opposition Division from reaching a reasoned decision on the crucial question of an impermissible intermediate generalization with respect to the phrase "best registered".

2.5 In principle, it cannot be ruled out that the patent holder can make requests in appeals that lead to broader claims than those raised during the opposition proceedings. However, the acceptance of such requests is based on the procedural rules applicable to the appeal procedure and the circumstances of the relevant procedure (see also the case law of the EPO Appeal Divisions, 9th edition 2019, V.A. 4.12. In this case, Article 12.º, No. 4, of the RPBA 2007 decisive for the approval of the main application.

2.6 In the present case, granting the main application would mean that the Board of Appeal would have to decide for the first time whether the change to the term "enhanced registrability" during the review process meets the requirements of Article 123(1). EPC. However, this aspect was not included in the impugned decision due to the amendment made by the patentee in the lower court and could not be done as the amendment was made in each of the requests.

2.7 The patentee rightly argued that it is not uncommon for new aspects, such as ancillary claims, to be discussed in the appeal process. However, this fact is irrelevant to the question under section 12(4) of the RPBA 2007 as to whether the patentee could and should have already filed the present main application in the first instance proceedings before the Opposition Division.

2.8 In this context, the patentee claimed to have been surprised by the discussion during the oral proceedings before the Opposition Division on the question of the clarity of claim 1 with regard to the additional wording "as opposed to semi-crystalline plastic". In this context, it is no longer possible to present the submitted main application with grounds for the appeal in the first instance.

2.9 The board is convinced that the patentee cannot be surprised by the discussion of the issue of clarity in the wording of the amended claim in the oral proceedings. The objector had already filed a similar exception before the oral hearing.

In this context, the objector has referred to her letter of 3 May 2018 received on 8 May 2018, see section 1 on the sides. 2 and 3: "Uncertainty - art. 84". In particular, the last paragraph on page 2 and the first paragraph on page 3 contain an explicit reference to the conflicting content of claim 2 with respect to claim 1. It reads as follows:

"Furthermore, an amorphous-partially crystalline mixture according to claim 2 can also be an amorphous plastic. Again, the specification of the patent in question does not specify the extent to which a partly crystalline polymer can be contained in the mixture. consequently. of further ambiguity in to distinguish it from a purely semicrystalline plastic" (emphasis on chamber side)

2.10 According to the patent registry, the opponent's relevant submission was faxed to the patentee on 9 May 2018. It must therefore have been taken into account more than a month before the oral hearing on 18 June 2018. He must therefore have had plenty of time to familiarize himself with the opponent's clarity objections on the new applications on April 18, 2018. The patentee should also take into account that the clarity issues raised in the objector's letter should be discussed during the oral process.

Deleting the additional wording "as opposed to semi-crystalline plastics" in the currently available main order would be an obvious way to overcome the clarity objections.

2.11 Overall, the department therefore cannot see justified reasons why the main case at hand should not have already been brought before the lower court. In particular, the new main claim is not the result of a normal procedural development and is, in this respect, not an acceptable reaction to the surprising development in the oral proceedings before the Opposition Division.

2.12 The Board of Appeal's conclusions in decision T 0134/11 in relation to § 12, subsection 4, RPBA 2007, applies to the present case (see in particular point 3.3 of the premisses). Therefore, the present case is based on the special circumstance that the patent owner prevented the decision of the Opposition Division on the issue of inadmissible intermediate generalization (Article 100c) CPC) by including the phrase "as opposed to semi-crystalline plastics" in claim 1 in all rulings.

The patent owner's argument that the preemption was unintentional does not convince the board. In any event, the corresponding amendment of all requests undoubtedly served to overcome the objection of inadmissible intermediate generalization asserted by the Opposition Division in its preliminary opinion. It is therefore not apparent that the change has occurred unintentionally.

However, the patentee could make an informed decision on the question of inadmissible intermediate generalization by filing the main application now available in the first instance. It is unclear why she should be stopped from doing so.

2.13 The other decision on appeal T 848/09 cited by the patentee is not inconsistent with the Board's conclusions in this case. In particular, it was explained that it is a party's normal responsibility to anticipate that the main claim will be rejected and, if so, to file the relevant ancillary claims in a timely manner (see point 3.4 of the recitals).

2.14 In light of the above considerations, the Board has decided to exercise its discretion under section 12(4) of the 2007 RPBA not to accept the main application in the appeal process.

3. Subsidiary request 1

3.1 Access to examine the requirements of Article 84 of the Civil Code in light of Decision G 3/14

3.1.1 Claim 1 of auxiliary order 1 has the following additional characteristics, highlighted by underlining, in relation to the main order, taken from the description in section [0008]:

"[...] that the identification mat is made of amorphous, injection-molded plastic, which is easier to write on than semi-crystalline plastic."

3.1.2 The patentee considered that the amendment of claim 1 in accordance with auxiliary application 1 did not open the examination of the claims of Article 84 EPC in light of the rules laid down in decision G 3/14. By way of justification, it stated that the question of the definition of the term "amorphous plastic" had already been similarly raised in claim 1, which was upheld. The change therefore does not entail a (new) violation of Article 84 of the CPC, so that it is not possible to examine the requirements of Article 84 of the CPC according to the criteria in G 3/14.

3.1.3 In G 3/14, the extended appeals board concluded that in the investigation pursuant to Article 101, subsection 3, EPC, whether the patent as amended meets the requirements of the EPC, the patent claims only relate to the requirements of Article 84 ETC can be considered if - and only to the extent - this amendment leads to a violation of Article 84 ETC (G 3/14, main note) .

3.1.4 Contrary to the patentee's opinion, the infringement of the requirements of Article 84 of the EPC in the present case is due to a change caused by the adoption of a characteristic of the description ("unlike semi-crystalline plastic").

Claim 1 as originally granted relates exclusively to an amorphous plastic. A possible violation of Article 84 could therefore consist, among other things, in the fact that the term "amorphous plastic" is not self-explanatory or is not supported by the description.

With the amended claim 1, however, the case is different because the clear distinction between an amorphous and semi-crystalline plastic now contained in the claim follows directly from the fact that claim 1 is a purely amorphous plastic (as opposed to a purely semi-crystalline plastic). , see point 3.3.3 below).

However, the amendment raises the question of sufficient support for the description, as it contains contradictory elements that are inconsistent with amended claim 1. This violation of Article 84 of the CPI is due to the amendment in claim 1.

3.1.5 The amendment is therefore open for consideration under Article 84 of the ETS in accordance with the standards of G 3/14.

3.2 Clarity of complaints (Article 84 of the Civil Code)

3.2.1 Claim 1 of Auxiliary Request 1 is at least sufficiently clear to meet the Article 84 ETC clarity requirement.

3.2.2 The opponent argued that the distinction between an amorphous and semi-crystalline plastic, now contained in claim 1 of auxiliary application 1, is not self-evident within the meaning of Article 84 EPC.

3.2.3 The board agrees with the objector that the patent does not contain specific information about the crystallinity of the claimed plastic types (amorphous and partially crystalline). Furthermore, the chamber does not reject the possible existence of amorphous plastic, which in terms of crystallinity may be on the border of semi-crystalline plastic.

However, the chamber is satisfied that the specialist is able to fundamentally distinguish between the two main groups, amorphous and semi-crystalline plastics, based on his specific knowledge and make a corresponding classification. In this context, the table refers to the technical knowledge elements presented by the adversary in the FW1 and FW2 documents. Among other things, FW2 reveals the following:

"The number of amorphous thermoplastics with crystallinity equal to or very close to 0% is manageable [...]. All other thermoplastics belong to the large group of semicrystalline thermoplastics with crystallinity generally in the range of 10% to 80% [1, 2, 4] ."

3.2.4 Thus, the person skilled in the art not only knows the classification of polymers in relation to the two main groups amorphous and partially crystalline, but undoubtedly also knows the crystallinity criterion necessary for the determination, as well as the corresponding measurement methods that are usual. in trade.

Therefore, the chamber can have no doubt that a person skilled in the art can easily assign plastics to the two main groups using criteria and methods that are customary in the field. This also applies to amorphous plastic, which lies in the border area of ​​semi-crystalline plastic.

Overall, claim 1 is therefore self-explanatory because the distinction between an amorphous plastic and a semi-crystalline plastic can be determined sufficiently specifically by methods customary in the art (see FW2).

3.2.5 Claim 2 of auxiliary application 1 has been adapted according to claim 1, deleting the addition "or an amorphous-partially crystalline mixture". Therefore, on this point too, there is no ambiguity in the claims, and the opponent has not contested this either.

3.3 Claims supported by the description (Article 84 of the CPC)

3.3.1 Article 84, second sentence, EPC not only requires claims to be clear and precise, but claims must also be supported by a description. This requirement is not met in the present case.

3.3.2 The patent description is not adapted to the changed requirements in auxiliary application 1 and therefore forms the basis for considering whether the requirements are supported by the description.

Section [0010] of said patent reads as follows:

"...or an amorphous-partially crystalline mixture is used as amorphous plastic. Instead of a purely amorphous plastic, such as polycarbonate, a mixed plastic, i.e. an amorphous-partially crystalline mixture, such as a mixture of polycarbonates, can also be used where at least one of the plastic materials they contain is amorphous plastic." (underline added next to camera)

A similar description is contained in section [0024] of the pending patent.

3.3.3 The amended claim 1 refers to a clear and distinct differentiation between the main group of amorphous plastics on the one hand and the main group of semi-crystalline plastics on the other. The person skilled in the art therefore understands an amorphous plastic in the sense of claim 1 as referring to a pure amorphous plastic and a partially crystalline plastic as a pure partially crystalline plastic.

A mixture, ie. a mixture of an amorphous and semi-crystalline plastic, is therefore not covered by an amorphous plastic according to claim 1 according to a person skilled in the art.

The description in the patent's sections [0010] and [0024] contradicts this because it possibly includes an amorphous plastic that is designed as a mixture, that is to say a mixture of amorphous and semi-crystalline plastic.

The patentee did not dispute that this alternative definition of "amorphous plastic" in the specification was inconsistent with amended claim 1 of auxiliary application 1. However, the patentee did not find it necessary to adapt the description to amended claim 1 according to order auxiliary 1.

3.3.4 In this connection, however, the patent holder referred to the decision on appeal T 1989/18, especially point 5 of the reasons. He claimed that the description could not hide the claims because the claims were inherently clear. In particular, claim 1 was self-explanatory regarding the differentiation between an amorphous plastic and a semi-crystalline plastic. Therefore, the conflicting part of the description in paragraphs [0010] and [0024] could not lead to ambiguity according to Article 84 PolD.

3.3.5 The Department cannot accept this argument. According to Article 84, second sentence, CPL, the support of the claims with the description, in addition to the clarity and brevity of the claims as such, is an independent and fundamental requirement for the claims of Article 84 CPL (see T 1024/ 18, point 3.1.7 of the justification, see also Teschemacher in the Munich Community Commentary, article 84, paragraphs 3 and 7).

The requirement that the claims must be supported by the description basically means that the object can be claimed in the claims based on the description. This is to ensure that the claims contain only what is considered disclosed, present and accessible to a person skilled in the art after reading the description (see T 409/91, points 3.3. to 3.5 of the justification).

The requirement that the claims be based on the description therefore ensures that the claims reflect the actual contribution to the prior art in such a way that they can be performed by a person skilled in the art throughout the area they cover (see T 659 / 93, point 3.4 in the justification).

Therefore, requirements and description, as parts of a single document, must match. Although they may contain different information depending on their different functions, as derived from the EPC, they must not contradict each other. In the description, the invention characterized in the claims must be presented clearly and completely (Article 83 together with Rule 42(1)(c) EPC). Complainants must state the object of the requested protection (Article 84, first sentence, in conjunction with Article 43, paragraph 1, ETC). The requirement that claims must be supported by the description - like all other CTE requirements - applies mutatis mutandis to claims that have been amended during the opposition procedure (Article 101(3)(a) ETC).

In light of these principles, the jurisprudence of the Appellate Division has shown that Article 84 of the CPC is the basis for adapting the description to the amended claims, in order to avoid inconsistencies that could obscure the scope of the claims (see al. T 1808/06, point 2 of the reasoning) . The sufficiency of the description must be performed as required by legal certainty. If contradictions arise as a result of limitations in the claims, they must be corrected by adjusting the description in such a way that all information that no longer explains the limited purpose of the patent and that is not necessary or useful for its understanding is removed from the invention ( see for example T 113/92, point 2 of the reasons and T 636/97, point 3 of the reasons).

In order to fulfill the requirement to be substantiated by the description, it is not enough that the claimed object is taken from the description and therefore described in part. Instead, the description as a whole must be consistent with the requirements. In this respect, the division of appeals fully follows the division of appeals in T 1024/18, cf. especially points 3.1.7 to 3.1.10 of the reasons (see also T 2231/09, points 3.1.1 to 3.1.10) of the reasons).

This consolidated jurisprudence of the boards of appeal was also expressly included in the guidelines for examination by the European Patent Office (March 2021). This clarified - in accordance with the consolidated jurisprudence of the Appellate Divisions - the cases where the description must be adapted to the requirements in order to avoid inconsistencies between the requirements and the description (see in particular Part F-IV, 4.3 and the corresponding explanations in Part B-XI, 3,7 and 3 ,8, C-II, 3.1 and 3.2, C-III, 2 and C-V, 1.1).

In the instant case, the patentee argued that the description should not be used because the claims are self-explanatory. This view does not take into account the additional requirement of Article 84 of the IPC that allegations must be supported by the description. The question of whether a professional will refer to the description in case of (un)clear claims is actually separate from the question of whether the description supports the claims.

According to the amended claim 1, it is a mandatory feature that the identification layer is made of an amorphous plastic as opposed to semi-crystalline plastic. However, this is not reflected in the description because it includes the choice of an amorphous plastic, which is understood as a mixture of amorphous and semi-crystalline plastic (sections [0010] and [0024]). As a result, there is a discrepancy between claim 1 and parts of the description, because it appears to a person skilled in the art that the description discloses ways of carrying out the invention which, however, do not fall within the text of the claim.

3.3.6 The patent holder continues to support his arguments in the decision on appeal T 978/16. There, the board of appeals discussed in particular the question of whether the description can be used to interpret claims according to Article 69(1) of the ECHR.

In this context, the board cannot see how this can support the patentee's argument that the description cannot lead to ambiguity in the claims if the claims themselves are clear. On the contrary, the council in T 978/16 referred to the decision on complaint T 1808/06, where it stated that only article 84 of the Civil Code was applicable to remove the inconsistencies in the description (see T 978/16 in point 2.4 of the reasons). In this context, the board also confirmed the principle that the adaptation of the description to the changed requirements must be carried out with care to avoid inconsistencies and therefore fulfill the requirement of Article 84 ETC (see T 978/16, paragraph 3.1 of paragraph reason) .

3.3.7 In light of the above considerations, the board concluded that requirement 1 in supplementary order 1 is not supported by the description and therefore does not meet all the requirements of Article 84 ETC.

4. Auxiliary requirement 2 (issuance of a patent in a case is considered acceptable)

4.1 Clarity and support of the description (Article 84 CPI)

4.1.1 Auxiliary claim 2 includes an adapted description where passages from sections [0010] and [0024] that conflict with claim 1 are excluded (see point 3.3.2 above).

The objection that the claims are not supported by the description therefore does not contradict auxiliary claim 2. The objector has not contested this.

4.1.2 However, the opponent repeated his clarity objection regarding the supplementary wording "as opposed to semi-crystalline plastic" for claim 1 in auxiliary order 2.

On this point, the council refers to its respective conclusions on auxiliary order 1, which apply in the same way to claim 1 of auxiliary order 2. Accordingly, claim 1 of auxiliary order 2 is self-evident in Art. 84 of the ETS (see point 3.2 above). This applies according to independent claims 6 and 10.

4.2 Admissibility of changes (Article 123(2) TEC)

4.2.1 Subsidiary requirement 2 fulfills the requirement in Article 123, subsection 2, in ETS.

4.2.2 Claim 1 of auxiliary application 2 contains the additional wording "in contrast to semi-crystalline plastics". This wording comes from the following sentence from the original description on page 3, lines 6 to 14:

It has surprisingly been shown that amorphous plastic, in contrast to semi-crystalline plastic, has better etching and printing properties and can be printed in particular with inkjet printers and thermal transfer printers without the risk that the ink applied during printing will later be removed from the surface of the marking units or is or may be detached from the inscription surface of the marking units." (emphasis added on side of chamber)

4.2.3 Contrary to the opponent's argument, "better recordability" is not inextricably linked to avoiding the risk of ink detachment, as mentioned in the sentence above.

The Council, on the other hand, agrees with the patentee that the second clause is introduced with the term "in particular" and must therefore clearly be understood as optional. The ability to print without the risk of ink leakage, as mentioned in the section above, clearly refers to the two optional printing processes.

4.2.4 The fact that the resource in question was not included in requirement 1 in aid application 2 does not therefore lead to the purpose exceeding the content of the application in the originally submitted application in accordance with Article 123, subsection 2, EPC.

Since the other party did not request further inadmissible changes to auxiliary order 2, the board concluded that the requirement in Article 123, subsection 2, ETC was met.

4.3 Innovation (Article 54 CPL)

4.3.1 The subject matter of claim 1 in auxiliary order 2 is new in relation to documents E2 and E4/E8.

4.3.2 None of the documents E2, E4 or E8 show webs whose side surfaces are inclined according to claim 1.

4.3.3 The board especially agrees with the opposition department that figure 5 in the E2 document does not directly and clearly show an oblique side view.

4.3.4 The Opposition Division also agrees that an edge forming an angle of 90° with a surface cannot be considered a "chamfer" within the meaning of claim 1.

Since neither Document E4 nor Document E8 unambiguously discloses anything other than a boundary formed in the above sense, the subject matter of Claim 1 of Auxiliary Order 2 is new compared to Documents E4 and E8. The question of whether the E8 document is more relevant than the E4 document could therefore be left open.

4.3.5 Overall, the board concluded that the subject matter of claim 1 in auxiliary order 2 is new compared to documents E2 and E4 or E8. The other party made no further objections on the basis of Article 54 of the ETS against auxiliary order 2.

4.4 Inventive activity (Article 56 of the Civil Code)

4.4.1 Claim 1 of auxiliary application 2 comprises an inventive step within the meaning of Article 56 of the EPC.

Nearest known technique

4.4.2 Document E5 is undoubtedly the closest to prior art.

distinctive character

4.4.3 It is also undisputed between the parties that the E5 document differs from the subject of claim 1 at least because the marking layer is made of amorphous plastic, because the E5 document does not contain information about suitable materials for the marking mat.

objective technical work

4.4.4 The patent refers to the provision of identification mats as objective technical work that can essentially be engraved or printed by all commercially available printing processes (see section [0005] of the patent description). Section [0008] also shows that the invention is based on the discovery that amorphous plastic can be written or printed better than semi-crystalline plastic.

4.4.5 The objector tried to demonstrate, through the presentation of the Z2 document, that the objective technical problem stated in the patent has not been solved to the extent claimed. In their opinion, Paper Z2 shows that stress cracking can occur when printing amorphous plastic injection molded parts, so the entire range of amorphous plastics cannot be better marked.

4.4.6 The Board is satisfied that the Z2 report is not sufficient to demonstrate that the objective technical problem identified in the pending patent is only partially resolved. First, the report is undated, so it is not possible to determine when it was actually published. The opponent, on the other hand, called the report post-published (see page 6 of the letter of 21 January 2022). For this reason, the relevance of the Z2 document is questionable.

Regardless, the Board does not believe that the content of the Z2 document is sufficient to call into question the resolution of the objective technical problem of the claimed invention. Among other things, the Z2 document discloses "some risk of cracking after printing" of amorphous plastic injection molded parts (see especially page 2, left column, second sentence).

However, this general statement in no way permits the conclusion that the desired printability of the claimed marking mats made from an amorphous plastic cannot be achieved by all commercially available printing processes. In particular, it is not entirely clear to which specific places and under what specific circumstances the relevant passage from the Z2 document refers.

In this regard, based only on the general statements contained in Z2, there can be no serious doubt that the objective technical problem is fully solved by the alleged relationship.

4.4.7 The board also sees no other reason to reformulate the question raised in the patent in the case, and the opposing party has not put forward any other convincing arguments in this regard.

4.4.8 The objective technical problem according to point 4.4.4 above no longer contains any reference to the claimed solution. In particular, the solution according to claim 1 refers to the use of an injection-molded amorphous plastic, while the additional term "better absorbability" is merely a functional description of this property. But this does not in itself contribute to the solution of the objective technical problem.

In this regard, the Council is not convinced by the patentee's argument that the objective technical problem contains an impermissible reference to the claimed solution.

apparently

4.4.9 The purported solution to the objective technical problem is not proposed in documents E2 and E4.

4.4.10 It is true that document E2 describes the use of an amorphous injection molded plastic for a marking layer (see section [0017], "polycarbonate"). Document E4 also mentions amorphous plastic in relation to ID mats (see especially page 93, 'Polyamide PAH'). The patent holder has not disputed this fact.

4.4.11 However, the patentee argued that neither E2 nor E4 gives any indication of the use of an amorphous plastic to solve the objective technical problem and that the person skilled in the art had no reason to use an amorphous plastic for marking mats in relation to these documents according to E5 to solve the objective technical work.

The department agrees with this point of view.

4.4.12 Contrary to the opponent's argument, the board is also not convinced that the expert had exactly two corresponding material classes to choose from, of which he would naturally have chosen one.

In contrast, most plastics are semi-crystalline plastics, while only a few are amorphous plastics (see especially FW2, first paragraph). In the opinion of the chamber, an expert will need a concrete justification for using a plastic from the amorphous plastic category for the E5 identification mat.

However, there are no corresponding references in either the E2 document or the E4 document. In particular, the mere fact that the E4 images show perfectly embossed marks is not a corresponding indication that the person skilled in the art would specifically choose an amorphous plastic to solve the objective technical problem, beginning with the E5 document. In principle, this also applies to the information on page 93 of E4 under the heading "Resistance".

4.4.13 The panel therefore reached the general conclusion that the subject matter of claim 1 is not suggested by a combination of documents E5 and E2 or E5 and E4. The opponent made no further objections under Article 56 of the Civil Code.

The object of claim 1 therefore comprises an inventive step within the meaning of Article 56 of the EPC. This applies according to the subject matter of independent claims 6 and 10.

5. Results

Since the main claim was not upheld in the appeal process, and auxiliary claim 1 was not upheld, the objector's request to dismiss the patent owner's complaint had to be upheld. However, since auxiliary claim 2 met the requirements of the EPC, the patent owner's request to dismiss the opponent's complaint had to be granted.

type of decision

For these reasons, it is decided:

Claim rejected.