T 570/05 – A Borderline Case

The patentee claimed a coated transparent substrate. The application as filed taught a coating thickness of from 100 to 500 nm. The patentee then amended the lower limit to 220 nm.

[…] The [patentee’s] arguments may be summarized as follows: The newly claimed ranges find support in the application as originally filed. […] There was no need for the new range of 220 to 500 nm to be originally disclosed as such as long there was a clear basis for the claimed upper and lower limit of the coating thickness. The latter value of 220 nm was disclosed in three examples. Only one example fell outside the amended range. The skilled person was initially taught a range of from 100 to 500 nm. However, he would gather from the examples that the lower end of the range, below 220 nm, was exemplified only by one example, whereas by far the most coated substrates in accordance with the invention exhibited higher coating thicknesses. Although there was an influence between coating thickness and reflectance RL, as stated in paragraph [0057] of the opposed patent with respect to a comparison between individual examples, this did not mean that a general teaching could not be derived from the examples. The proposed amendments did not add new information and did not affect the legal position of third parties. [IX]

[…] The only literal basis in the application as originally filed for the lower value of 220 nm of the claimed coating thickness range is to be found in the examples 18, 21 and 25. [1.1]

A 123(2) stipulates that a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. In the present case, formal disclosure for the value “220” exists; the issue to be decided is whether or not new subject matter is added by forming a new range in a claim using said figure of 220 nm, it being evident that nowhere in the documents as filed said value forms the lower (or indeed any) endpoint of a range of thicknesses. [1.2]

In this respect the board considers the following jurisprudence of the Boards of Appeal as particularly relevant:

T 201/83 [12] reads: “An amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree.”

In decision T 1067/97 [2.1.3] the board stated: “According to established jurisprudence of the boards of appeal, if a claim is to be restricted to a preferred embodiment, it is normally not admissible under A 123(2) to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. […] Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features”.

This jurisprudence is confirmed in decision T 714/00 [3.3]: “Extracting an isolated feature from an originally disclosed combination and using it for delimiting claimed subject-matter can only be allowable under the concept of A 123(2) if that feature is not inextricably linked with further features of that combination. [1.3]

The board must therefore examine whether or not there exists a functional or structural relationship between the coating layer thickness, in particular its lower limit, and the remaining features of the claim. Paragraph [0057] of the patent clearly states: “It should be borne in mind that comparisons of the respective reflectance values between different examples can only be made for similar thicknesses and Sb/Sn ratios because these parameters are of great importance for the reflectance value. For example, two coatings of the same composition will show differences in reflectance as a function of their thickness.” [Emphasis added]. [1.4]

The appellant itself confirmed during oral proceedings that reflectance RL is dependent on coating thickness. […] This dependency of reflectance on the coating thickness is in fact of the same order of magnitude as the claimed influence of the coating additives. […] The condition of absence of any clearly recognisable functional or structural relationship under which an isolated extraction of a feature of an example would be allowable according to the above discussed jurisprudence is thus not satisfied in the present case. [1.5]

[The claims] therefore do not meet the requirements of A 123(2); these requests must be rejected. [1.6] 

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