Thursday 2 June 2011

T 1858/07 – Late Arrival


The applicant filed an appeal against the decision of the Examining Division (ED) refusing its application.

Claim 1 of the main request before the Board was identical with the claim which the ED had found to lack novelty:
An asymmetric optical storage medium (10) comprising a plurality of layers, said plurality of layers including a substrate layer (20), a data layer (30) and at least one high modulus layer (40), which improves dimensional stability in said medium, said high modulus layer comprising a cured high modulus organic polymer having a tensile modulus of at least one Gigapascal, and at least one film layer (50) which is in direct contact with said high modulus layer.

Together with the statement of grounds of appeal, the appellant filed claims according to an auxiliary request.

Claim 1 of this request the last feature reads as follows:
An asymmetric optical storage medium (10) comprising a plurality of layers, said plurality of layers including a substrate layer (20), a data layer (30) and at least one high modulus layer (40), which improves dimensional stability in said medium, said high modulus layer comprising a cured high modulus organic polymer having a tensile modulus of at least one Gigapascal, and at least one thin film layer (50) which is in direct contact with said high modulus layer and is a homopolymer, a copolymer, a thermoplastic, a thermoset or any mixture thereof.
The Board confirms that claim 1 of the main request is not new and then deals with the admissibility of the auxiliary request:

[3.1] In claim 1 according to the auxiliary request, the thin film layer material has been specified by features set out in original claim 17. However, original claim 17 was present only in the international phase. It was not present in the first-instance proceedings, i.e. the European phase. More specifically, original claim 17 was not present in any of the claim sets submitted to the first instance and the features of original claim 17 have not been discussed in first-instance proceedings.

[3.2] The thin film layer materials specified in claim 1 of the auxiliary request are not disclosed in the description, with the exception of the specific example of a “co-polycarbonate-ester thin film of about 75 micron thickness” […]. The function or technical meaning of this thin film layer, however, is not disclosed in the application. In particular, the application does not disclose which function this thin film layer has in the context of improving dimensional stability. Nor has the appellant submitted any arguments concerning the relevance and function of the thin film layer specified in claim 1 of the auxiliary request in the context of inventive step, particularly in view of the reasoning as to lack of inventive step given in the decision under appeal. Hence admission of the auxiliary request would result in the need for further investigations at least as to inventive step.

[3.3] In the board’s view, the applicant could have presented this or a similar request in response to one of the objections of lack of novelty based on D3 in the first-instance proceedings, so that the ED could have carried out a complete examination in the present case after duly exercising its power of discretion under R 137(3). The board could then have carried out its primary task of examining the correctness of the decision under appeal.

[3.4] In addition, the appellant’s case in respect of the auxiliary request is incomplete. If the board had decided to exercise its power within the competence of the examining division in accordance with A 111(1) EPC 1973, it could not have ordered the grant of a patent without further investigations. The decision under appeal gave reasons why it may have been obvious to a person skilled in the art to provide certain additional layers to an (optical) disc. However, the appellant’s arguments concerning this reasoning’s relevance in view of the auxiliary request are not on file. Nor has the appellant discussed the further documents (D2 and D4) mentioned in the board’s communication dated 21 June 2010 or their relevance in view of the auxiliary request. The appellant has merely argued that these additional features established novelty, and decided not to attend the oral proceedings scheduled by the board.

[3.5] In view of the above, the board does not admit the auxiliary request into the appeal proceedings (Article 12(4) RPBA). […]

The appeal is dismissed.

To download the whole decision, click here. The file wrapper can be found here.

4 comments:

Myshkin said...

Most Boards would have simply remitted the case to the Division for further prosecution. How is an applicant to know what mood the Board will be in? Or should applicants keep track of each Board's individual case law?

oliver said...

That is certainly something to consider for those of us who always deal with the same Board (although in different compositions).

NB: Careful readers might have noted that I have introduced labels for each Board. « Z 3.5.04 » stands for Board 3.5.04. In order to see only Board 3.5.04 decisions, click on Keyword « Z 3.5.04 » in the right hand side margin.

Michael Thesen said...

My impression is that the request was not filed too late in an absolute sense but not sufficiently substantiated since e.g. arguments supporting the inventiveness were missing.

I dare to say that no matter what board is sitting and in which mood it is, it is very likely that any new claim with a randomly chosen additional limitation without accompanying arguments on the relevance thereof will be rejected.

Besides, the labelling for the Boards is a very good idea!

Myshkin said...

Good point, the lack of arguments in support of inventive step seems to have been an important reason for not admitting the auxiliary request as well. That probably distinguishes this case from many of the cases where the Board simply remits. I withdraw my criticism :-)