When a claim is amended based on parts of the description, is it necessary to incorporate all the features disclosed in that part? The answer is no, for the features the skilled person would understand to be inessential, as explained in T 331/87 (criticized in T 910/03, but see also T 404/03 [11]). The present case reminds us that there is another case to be considered: the deletion of a feature in a claim is admissible if the sole purpose of such deletion is to clarify and/or resolve an inconsistency. (T 172/82).
The application as filed concerned an “amorphous diamond coating of blades”. Claim 1 as granted read:
A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50), comprising the steps of:(a) providing a substrate;(b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by(c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias to the substrate (50) during deposition, and then applying a second lower bias to the substrate during deposition.
The patent was revoked by the Opposition Division.
Claim 1 of the main request before the Board read (the underlined parts are amendments with respect to claim 1 as granted):
A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50) using a cathodic arc source, comprising the steps of:(a) providing a substrate;(b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by(c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias in the range of 200 to 2000 Volts to the substrate (50) during deposition for up to two minutes to establish adhesion, and then applying a second lower bias in the range of 10 to 200 Volts to the substrate during deposition to optimize the structure of the amorphous diamond coating.
This amendment was based on page 13, lines 25 to 32 of the application as filed:
Will the Board accept the amendment?
[1.1] Process claim 1 of the main request has been restricted to the use of a cathodic arc source; it is based on original claims 1 and 6 in combination with the bias voltage ranges of the two deposition steps taken from page 13, lines 25 to 32 of the application as originally filed (corresponding to the published D5). The deposition steps are disclosed as: “An initial high bias in the range of 200-2000 volts is applied to the substrate during deposition for up to two minutes to establish adhesion. A second stage lower bias in the range of 10-200 volts is then applied to optimize the structure of the amorphous diamond hard carbon coating and to establish the desired crystal structure” (emphasis added by the Board).
[1.1.1] It goes without saying that said bias voltage values are negative so that the missing minus signs need not be incorporated into claim 1.
[1.1.2] The omission of the feature “to establish the desired crystal structure” in the amendment, which the Board in point 4 of its communication considered to be inconsistent with the definition “amorphous diamond”, is in the present case, in line with decision T 172/82, not to be objected under A 123(2) since its inclusion would result in an inconsistency contrary to A 84. Amorphous diamond normally does not have a crystal structure.
[1.1.3] There exists also no need to incorporate the term “hard carbon” after the expression “amorphous diamond” […] since it is clear that the resulting amorphous diamond coating is a particularly hard carbon (see patent, paragraph [0007]). The omission of the term “hard carbon” from the amendment thus complies with A 123(2).
[1.1.4] The aforementioned passage […] is the only one in the description of D5 (the same holds true for the claims dependent upon claim 1 as originally filed) which discloses these – originally preferred – two bias voltage ranges and is taken from the paragraph named “Process Conditions and Adjustments.” This passage is preceded by the statement “Process conditions include a multi-step bias to the substrate; an equal average deposition on both sides of the blade; and attention to the angle of presentation” (see D5, page 13, lines 20 to 32).
Consequently, according to this more general disclosure the multi-step bias is to be combined with an equal average deposition on both sides of the substrate (see also page 14, lines 1 to 3, lines 7 to 9 and lines 29 to 32) and a specific angle of presentation of the substrate to the arc source. This angle is either measured from a line normal to the plane formed by the tips of stacked blades or from the line bisecting the angle enclosed by the tip and the first and second inclined surfaces of the cutting edge of an unstacked blade (see page 15, lines 12 to 23). This disclosure is also in line with the single example of a particular processing sequence (see page 9, line 9 to page 12, line 8).
[1.1.5] The result of this amendment is that claim 1 of the main request – which is now not restricted to depositing a layer of amorphous diamond “at an equal rate or simultaneously on both sides of the substrate” nor to a definition of the angle of presentation – contravenes A 123(2), as it has selectively taken up only the bias voltage ranges from the description as originally filed. This amounts to an unallowable “intermediate generalisation” of the two passages disclosed in D5 at page 13, lines 21 to 24 and at page 13, lines 25 to 32 since the two-step bias deposition without the above mentioned two features is not directly and unambiguously derivable from D5. A preliminary conclusion to this effect had already been drawn in point 4 of the Board’s communication annexed to its summons to oral proceedings.
[1.1.6] The arguments of the appellant to the contrary cannot hold for the following reasons.
An argument is that the equal deposition on both sides of the substrate and the angle of presentation of the substrate to the cathodic arc source do not represent essential features of the claimed process. However, this is contradicted by the aforementioned passage of page 13, lines 20 to 24 relating to the process conditions, which include both features. The amendment is therefore not directly and unambiguously derivable from the application as originally filed.
The quoted statement concerning “an uneven or unbalanced layering” (see D5, page 15, lines 8 to 11) does not support the suggestion that the invention could involve the deposition of an amorphous diamond coating on one side of the substrate only. It has to be seen in the context of the disclosure of the whole paragraph comprising it and to which it is restricted. This paragraph, however, deals with preferred forms of depositing the amorphous diamond coating in a thickness of 1000 angstroms on both sides of a blade stack, i.e. several substrates, either by a simultaneous deposition on both sides or a cyclic alternation on the first and second side of the substrate until the desired thickness is built up on both sides (see page 14, line 33 to page 15, line 8). In the Board’s view this statement makes only sense in the context of the cyclic alternation embodiment – if there is a simultaneous deposition than there should be equal deposition on both sides of the substrate due to the movement of the substrate or the blade stacks - and could be interpreted as meaning that the cycle lengths for each of the two sides may be different so that the individual intermediate layers produced on the first side of the substrate after a first cycle and on the second side after the second cycle can have different thicknesses (e.g. it may be 100 angstroms on the first side of the substrate after a first coating cycle while that on the second side after the second coating cycle may be 500 angstroms, etc. and so on up to a final total thickness of e.g. 1000 angstroms). This statement, however, does not necessarily imply that the final desired coating thickness on both sides must be different.
[1.1.7] Claim 1 of the main request is therefore not allowable.
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