[3.1] During the proceedings the application has been amended so that the claimed invention is directed to the formation of a layer of indium-doped zinc oxide on a polymeric substrate made of one of the specific polymeric materials specified in claim 1. As a result of the limitations imposed by these amendments, all the specific examples 1 to 23 disclosed on pages 21 to 32 of the description and relating all to the formation of a coating on a substrate made of glass do not represent examples of the claimed invention.
The fact that none of the specific examples 1 to 23 given in the description constitutes an example of the claimed subject-matter was objected by the examining division pursuant to A 84 EPC 1973. However, in the view of the Board the fact that all these examples - which have been maintained in the description as presently amended for illustrative purposes only - do not constitute examples of the claimed invention does not constitute an objectionable deficiency, let alone a deficiency giving rise in the circumstances of the present case to an objection under the EPC.
In particular, the description specifies several alternative coating techniques that can be used in the formation of a coating of indium-doped zinc oxide on a transparent polymeric substrate as claimed […] and also contains a detailed description of several apparatuses that can be used in the formation of the claimed indium-doped zinc oxide coating together with the operation of the same […]. In addition, the specific examples 1 to 23 on pages 21 to 32 of the description - although all involving only substrates of glass - illustrate indirectly how the coating techniques and apparatuses referred to above can be applied to substrates made of the claimed polymeric materials.
It follows that the claimed invention is fully supported by the description within the meaning of A 84, second sentence, and is also sufficiently disclosed within the meaning of A 83.
In addition, although none of the specific examples labelled 1 to 23 on pages 21 to 32 of the description constitutes an example of the claimed invention, the requirements of Rule 42(1) (e) EPC are complied with since this rule requires that the description “shall [...] describe in detail at least one way of carrying out the invention claimed using examples where appropriate” and, as already noted above, the description contains a detailed description of several ways of carrying out the invention. As regards the “examples” referred to in R 42(1)(e), the Board considers that in the circumstances of the present case in which the amended application documents satisfy the requirements of A 83 and A 84 and the description describes in detail at least one way of carrying out the invention within the meaning of R 42(1) (e), specific examples are not indispensable and therefore the fact that none of the specific examples given in the description constitutes an example of the claimed invention does not give rise to any objection under R 42(1)(e) EPC which only requires specific examples of the invention “where appropriate” (see in this respect decision T 990/07 [3], regarding R 27(1)(e) EPC 1973, the text of which is identical to R 42(1)(e)).
If you wish to read the whole decision, you can find it here.
NB: This decision has also been reported on Le blog du droit européen des brevets.
NB: This decision has also been reported on Le blog du droit européen des brevets.
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