This appeal was filed against the decision of the Opposition Division to revoke the opposed patent for lack of inventive step.
Claim 1 of the patent as granted read:
1. A structured matrix in the form of a structure foil or a press plate for the manufacture of a decorative thermosetting laminate (21), which laminate (21) includes a decor paper in the form of a web or a sheet (11 and 1 respectively), provided with a decor pattern having pattern sections with different directions, characterised in that the matrix (12 and 2 respectively), is provided with a number of surface-structure sections being structurally independent from each other and coinciding at least mainly but preferably completely with corresponding decor sections of the decor paper (1, 11) of the decorative thermosetting laminate (21), which décor paper (1, 11) has positioning means (3) such as colour dots, holes, code lines, indentations or the like, that said positioning means (3) are placed in a predetermined relation to the direction variations of the décor pattern and that these positioning means (3) in the décor paper (1, 11) are used for properly positioning the matrix toward the décor paper (1, 11) thereby achieving above desired match between the décor pattern and the surface structure.
Claim 1 of the main request before the Board read:
1. A use of a structured matrix in the form of a structure foil or a press plate in the manufacture of a decorative thermosetting laminate (21), which laminate (21) includes a decor paper in the form of a web or a sheet (11 and 1 respectively), provided with a decor pattern having pattern sections with different directions, wherein the matrix (12 and 2 respectively), is provided with a number of surface-structure sections being structurally independent from each other and coinciding at least mainly but preferably completely with corresponding decor sections of the decor paper (1, 11) of the decorative thermosetting laminate (21), which décor paper (1, 11) has positioning means (3) such as colour dots, holes, code lines, indentations or the like, said positioning means (3) are placed in a predetermined relation to the direction variations of the décor pattern and that these positioning means (3) in the décor paper (1, 11) are used for properly positioning the matrix toward the décor paper (1, 11) thereby achieving above desired match between the décor pattern and the surface structure and thereby getting a decor surface with a surface structure, the different directions of which corresponds with the directions of the different pattern sections of the decor pattern.
The Board finds this request not to comply with A 123:
[2.1] The patent as granted comprised a sole independent product claim directed to a structured matrix in the form of a structure foil or press plate, together with dependent claims directed to preferred embodiments of the structured matrix of claim 1.
The claims of the main request as amended now comprise only use claims, which have replaced the product claims. These use claims, namely independent claim 1 and dependent claims 2 to 5, are directed to the “use of a structured matrix ... in the manufacture of a decorative thermosetting laminate”.
[2.2] In the present case, product claim 1 of the patent in suit as granted, i.e. before amendment to the use claims, confers absolute protection to the claimed matrix, that is to say, for the particular matrix and for all its uses.
[2.3] However, according to EPO practice (see, for instance decision T 401/95 [4.3.2]) a claim directed to “the use of a physical entity to produce a product” is to be considered as a process claim comprising physical steps for producing the product using the physical entity, with the consequence that this type of use claim is a process claim within the meaning of A 64(2). Pursuant to that article of the EPC, the product, insofar as it is directly obtained by that process, is also protected. Hence, the product, when obtained by that process for producing the product, is within the scope of protection conferred by that type of use claim (see decision G 2/88 [5.1]).
In the present case, use claim 1 comprises the physical step of manufacturing a decorative thermosetting laminate. Thus, use claim 1 confers protection on the claimed use of the particular structured matrix and, additionally, pursuant to A 64(2), to the decorative thermosetting laminate obtained by the manufacturing process.
[2.4] When comparing the protection conferred by the granted claims […] with the protection conferred by the amended claims […], it is clear that the protection conferred after amendment extends beyond that conferred before, contrary to the requirements of A 123(3), because the decorative thermosetting laminate obtained using the structured matrix was not protected before the amendment of the claims, but is now protected as a result of the amendment.
[2.5] Consequently, the change of category from the product claim as granted to the use claim as amended, in the present case, extends the protection conferred. The subject-matter of claim 1 of the main request thus offends against A 123(3) and the main request is not allowable.
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