T 0499/05 () of 22.8.2006

Summary of Facts and Submissions

I. Appellants I and II (opponents 01 and 02)) lodged appeals against the interlocutory decision of the Opposition Division maintaining European patent No. 0 710 183 in amended form.

In the decision under appeal, it was held that the grounds of opposition submitted by the appellants did not prejudice the maintenance of the patent as amended.

II. Oral Proceedings were held before the Board of Appeal on 22 August 2006.

III. Appellants I and II requested that the decision under appeal be set aside and that the European Patent No. 0 710 183 be revoked in its entirety.

The respondent (patentee) requested that the decision under appeal be set aside and that the patent be maintained on the basis of the following documents:

(a) claims 1 to 39 filed as main request on 21 July 2006; or

(b) claims 1 to 27 presented as first auxiliary request during oral proceedings.

IV. Claim 28 according to the main request of the respondent reads as follows:

"28. Apparatus for producing security documents or tokens,, such as bank notes, with security devices according to the method of any one of claims 12 to 25, wherein the apparatus comprises printing means (33) for applying printed indicia to a plastics substrate (10) having at least a transparent portion (42), inking means (20, 21) to apply ink to the printing means (33) and pressure-applying means (24) to press the plastics substrate (10) onto the printing means (33) so that ink from the printing means (33) is transferred as indicia onto the plastics substrate (10), characterised in that the inking means (20) and printing means (33) are so constructed and arranged as to leave said transparent portion (42) of said plastics substrate (10) free of indicia, and said apparatus further includes embossing means (32) arranged to emboss at least said transparent, indicia-free portion (42) to form an embossed image (52-59) of embossings (60) which allows light to pass through, the image being visible from both sides of the substrate, the embossings (60) being of sufficient depth and width such that when light passes through the embossed image from the light source to the viewer in a direction substantially perpendicular to the surface of the transparent, indicia-free portion, the embossed image is not very apparent, and when the viewing angle changes from the perpendicular the embossings reflect light so that the embossed image becomes more apparent to the naked eye."

Claims 1, 12 and 26 of the first auxiliary request read as follows:

"1. A security document or token (40) comprising a plastics substrate (10) bearing printed indicia, said substrate (10) having a transparent window (42) including a security device (50), said security device (50) comprising an embossed image (52-59) in said transparent window (42) which allows light to pass through, the image being visible from both sides of the security document or token, wherein the transparent window is formed by a transparent plastics portion (42) of the substrate (10) on which no indicia is printed, and the embossed image is formed by embossings (60) on the transparent plastics portion which transmit different amounts of light when the embossed image is tilted, rotated or viewed from different angles with respect to a light source, characterised in that the embossings (60) are of a size and shape such that, when light passes through the embossed image from the light source to the viewer in a direction substantially perpendicular to the surface of the transparent portion of the substrate, the embossed image (52-59) is not very apparent, and when the viewing angle changes from the perpendicular, the embossings reflect light, so that the embossed image (52-59) becomes more apparent to the naked eye."

"12. A method of producing a security document or token, such as a bank note (40) with a security device (50), wherein the security document is formed from a substrate having at least a portion formed of transparent plastics material, the method being characterised by the steps of: printing indicia onto part (44) of the substrate in such a manner as to leave the transparent plastics portion (42) of the substrate indicia-free to form a transparent plastics window in the substrate, and embossing at least part of the transparent plastics window (42) with embossings (60) to form an embossed image (52; 54; 56; 58) on the transparent plastics portion which allows light to pass through, the image being visible from both sides of the security document or token, the embossings (60) being of a size and shape such that, when light passes through the embossed image from the light source to the viewer in a direction substantially perpendicular to the surface of the transparent plastics window, the embossed image is not very apparent, and when the viewing angle changes from the perpendicular, the embossings (60) reflect light so that the embossed image (52-59) becomes more apparent to the naked eye."

"26. A security document or token, such as a bank note (40) made by the method of any one of claims 12 to 25, comprising a substrate (10) having a part (44) bearing printed indicia and a transparent window (42) including a security device, said security device comprising an embossed image (52-59) in said transparent window (42) which allows light to pass through, the image being visible from both sides of the security document or token, characterised in that the transparent window is formed by a transparent plastics portion (42) of the substrate on which no indicia is printed, and the embossed image is formed from embossings (60) on the transparent plastics portion (42) of the substrate, the embossings (60) being of such a size that, when light passes through the embossing image (52-59) from a light source to the viewer in a direction substantially perpendicular to the surface of the transparent window, the embossed image (52-59) is not very apparent, and when the viewing angle changes from the perpendicular, the embossings (60) reflect light so that the embossed image (52-59) is more apparent to the naked eye."

V. The following documents have been referred to in the appeal proceedings:

D1: AU-B-87665/82

D2: US-A-4,304,809

D3: US-A-4,715,623

D7: EP-A-0 194 042

D8: WO-A-90/02658

D9: WO-A-92/16378

D11: US-A-4,564,409

VI. In written and oral proceedings, the appellants argued essentially as follows:

Claim 28 of the main request is directed to an apparatus, so that the features of the security document mentioned in the claim must be ignored.

The apparatus as claimed in claim 28 is thus not distinguished from a conventional printing machine. In particular, it is not necessary to change the structure of a printing machine in order to print on a transparent substrate.

There is no disclosure in the application as filed of the feature of claim 1 of the first auxiliary request according to which "the embossings reflect light, so that the embossed image (52-59) becomes more apparent to the naked eye". According to the application as filed, published as WO-A-94/29119, it is merely disclosed, for example in claim 3, that "when the document is tilted, rotated or viewed from different angles with respect to a light source the embossed image reflects and transmits more or less light as it is tilted, rotated or viewed from different angles". The application as originally filed thus teaches that an increased visibility of the embossings occurs due to an interplay of reflection and transmission of light rather than reflection alone.

The amendment to claim 1 of the first auxiliary request of the respondent thus does not comply with the requirement of Article 123(2) EPC.

According to claim 1 as granted, when the embossed image is viewed out of the perpendicular, the embossings "block" light. The amendment to claim 1 of the first auxiliary request, in which the word "block" is replaced by "reflect" results in an extension of the protection.

The skilled reader of the application as filed finds references to light being reflected and transmitted. Thus, references to light being blocked must be understood as referring to a phenomenon which is neither transmission nor reflection, that is, absorption. In addition, the term "block" means that no light at all reaches the viewer.

The amendment to claim 1 of the first auxiliary request of the respondent thus does not comply with the requirement of Article 123(3) EPC.

Claim 1 of the first auxiliary request requires that "embossings (60) on the transparent plastics portion … transmit different amounts of light when the embossed image is tilted, rotated or viewed from different angles with respect to a light source". Mere rotation of the image does not, however, result in a change in the visibility of the image.

In addition, there is no teaching of the size and shape of the embossings necessary to achieve the specified effects.

The invention is thus not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art and the requirements of Article 83 EPC are not satisfied.

Document D2 discloses at column 5, line 66 to column 6, line 42 with reference to Figure 4 a security document having a grid image provided in a transparent window. As stated at column 4, lines 45 to 47, the images are formed from lines at spacings from ten lines per millimetre to several hundred lines per millimetre. This is of the same order of magnitude as the line spacing proposed in the patent in suit at paragraph [0013]. The disclosure of a line width of 125mym corresponds to approximately eight lines per millimetre. The grid images of document D2 thus inherently have the same properties as those of the patent in suit.

Document D9 (cf. inter alia page 14, lines 1 to 3 and 6 to 9) also discloses the provision of embossings in a transparent substrate which will inevitably produce the optical effect specified in the characterising portion of claim 1.

The use of the term "include" at page 4, line 2, of document D9 indicates that effects other than diffraction are contemplated. At page 7, lines 4 to 7, of document D9 it is disclosed that, instead of diffraction, matt diffusing effects and engraved line patterns may be used. In conjunction with the passage at page 5, lines 23 to 31, of document D9 this indicates that the invention is also applicable to embossed structures in which a light diffracting effect does not occur.

Transparency of the substrate, allowing images to be viewed in transmission, is disclosed, for example, at page 14, lines 1 to 3 and 6 to 15, of document D9.

In addition, the passage at page 7, lines 8 to 15, of document D9 refers to combining embossing in the transparent window with "coarser non-diffractive embossing patterns", which are thus also situated in the transparent window. The fact that the paragraph at page 7, lines 4 to 7 refers to "the invention" indicates that the non-diffractive effects disclosed in this paragraph are situated in the transparent window. There is thus a disclosure of coarse, non-diffractive markings to be viewed in transmission used alone and of such markings used in combination with diffractive markings.

Document D11 discloses a security document which, when viewed at a perpendicular angle has a less apparent image than when viewed at a certain angle (see Figure 7 and column 6, lines 23 to 32). Whilst document D11 refers to a translucent layer, the terms "translucent" and "transparent" overlap and the foil shown in Figure 2a can be described as transparent.

The subject-matter of claim 1 of the first auxiliary request thus lacks novelty in view of the disclosure of each of documents D2, D9 and D11.

Insofar as the subject-matter of claim 1 of the first auxiliary request is considered to be novel, it nevertheless does not involve an inventive step.

Any of documents D1, D3 and D9 can be regarded as being the closest prior art.

The subject-matter of claim 1 of the first auxiliary request is only distinguished from the disclosure of document D1 in that, in place of a hologram or moiré grating, a pattern such as that shown in Figure 6 of the patent in suit is used.

In order to reduce costs, it would be obvious to replace the optically variable structure of document D1 by a latent image such as that disclosed in any of documents D3, D7 or D8.

As discussed at column 1, lines 11 to 15, of document D3, images which are invisible when viewed perpendicularly, but appear when viewed at an angle are known as latent images. This is illustrated in Figure 21 and is discussed at column 3, line 59 to column 4, line 3 in connection with Figures 5 and 6.

Starting from this state of the art, the problem to be solved is to allow the document to be examined from both sides.

It is well known to the person skilled in the art that a complementary effect to that seen in reflection occurs in transmission. It thus does not require an inventive step to allow the image to be viewed in transmission.

As regards document D9, even if the passage at page 7, lines 4 to 15 were to be construed as merely disclosing that coarser patterns are placed in opaque areas of the document, the person skilled in the art would immediately realize that such patterns could equally well be placed in transparent areas.

In particular, it would be obvious to the skilled reader to utilize one or more of the latent image structures described in documents D3, D7 and D8 in the transparent window of document D9.

If the problem to be solved is regarded as being that set out in paragraph [0006] of the patent in suit, that is, to provide a cheaper and simpler security device, the solution to this problem is known from document D7, as stated at page 2, lines 18 to 26.

Document D7 proposes the use of embossed images as disclosed in particular at page 6, lines 3 to 21, and page 9, lines 24 to 31. At page 12, line 13, the preferred range for the line spacing is 16 to 200 lines/cm.

The subject-matter of claim 1 of the first auxiliary request thus does not involve an inventive step.

VII. In written and oral proceedings, the respondent argued essentially as follows:

The term "reflect" as used in claim 1 of the first auxiliary request is disclosed at page 11, line 13 of the application as filed (published version). The effect is further disclosed therein with reference to Figures 4a and 4b.

The amendment to claim 1 of the first auxiliary request thus complies with the requirement of Article 123(2) EPC.

The term "block", as used in claim 1 as granted refers to light being both absorbed and reflected. The amendment of the claim to refer to light being reflected thus does not extend the scope of protection.

The amendment to claim 1 of the first auxiliary request thus complies with the requirement of Article 123(3) EPC.

The general statement in the preamble of claim 1 of the first auxiliary request that "the embossed image is formed by embossings (60) on the transparent plastics portion which transmit different amounts of light when the embossed image is tilted, rotated or viewed from different angles with respect to a light source" is not in contradiction to the characterizing features of the claim which are more specific.

The invention is thus disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art and the requirements of Article 83 EPC are satisfied.

Document D2 is solely concerned with diffractive effects, as stated at column 4, lines 42 to 53. As disclosed at column 6, lines 12 to 17, an image can be seen in vertically transmitted light. In contrast, according to claim 1 of the patent in suit, the image is not very apparent under these conditions.

Document D9 does not unambiguously disclose the provision of embossings in a transparent window which will inevitably produce the optical effect specified in claim 1. The passage at page 7, lines 4 to 15 does not mention a transparent window.

Document D11 does not disclose a document having a transparent portion. At column 3, lines 52 to 56, it is stated that the plastic material is translucent, that is, it can be permeated by light, but is turbid. The resultant effect is similar to a watermark.

The subject-matter of claim 1 of the first auxiliary request is thus novel.

The closest prior art is represented by document D9. Whilst document D9 refers to transparency, this is only in connection with a diffractive device or a holographic embossing.

The problem to be solved is to provide a bank note or other security document or token with a simpler, less expensive security device as compared with a diffraction grating, but which is still effective and difficult to reproduce.

The person skilled in the art has no incentive, either from common general knowledge, or from the cited prior art, to provide non-diffractive structures, such as coarser embossing, on a transparent window.

Document D7 discloses a plastic card in which embossings are provided on a reflective background and is not concerned with effects which occur in transmission as opposed to reflection.

Document D3 is concerned with paper or paper-like opaque materials. The problem to be solved suggested by the appellants, that is, to allow the document to be examined from both sides, cannot be regarded as being the objective problem. The person skilled in the art would not consider using a transparent background.

The subject-matter of claim 1 of the first auxiliary request thus involves an inventive step.

Reasons for the Decision

Main Request

1. Novelty of claim 28

Claim 28 is directed to an apparatus per se, so that the references in the claim to embossings being formed on a transparent (as opposed to an opaque) substrate do not limit the claim.

The subject-matter of the claim is thus an apparatus for producing security documents or tokens, comprising printing means for applying printed indicia to a plastics substrate, inking means to apply ink to the printing means and pressure-applying means to press the plastics substrate onto the printing means so that ink from the printing means is transferred as indicia onto the plastics substrate, and embossing means for forming an embossed image.

Such an apparatus is known from, for example, document D3 and described with reference to Figures 15 and 16 at column 5, line 32 to column 6, line 4. As disclosed at column 5, lines 51 to 54, the apparatus produces an intaglio impression and printed images.

The subject-matter of claim 28 is thus not novel and the main request of the respondent is accordingly not allowable.

First Auxiliary Request

2. Amendments

2.1 Article 123(2) EPC

The application as filed (published version) discusses the effect of the embossed image at page 10, line 31 to page 11, line 15, with reference to Figures 4a and 4b of the drawings. Figure 4a illustrates that, when light passes from a source to a viewer through the substrate (10) in a direction perpendicular thereto, very little light is reflected, so that the image is not "very apparent" (page 11, line 10). Figure 4b illustrates that, as the viewing angle changes from the perpendicular, more light is reflected and the image formed by the embossed lines becomes more visible.

In particular, the term "reflect" as used in claim 1 is disclosed at page 11, lines 11 to 15 of the application as filed (published version).

The application as filed thus discloses that, when the viewing angle changes from the perpendicular, the embossings reflect light, so that the embossed image becomes more apparent to the naked eye. It is noted that, whilst it is not explicitly disclosed in the application as filed that the increased visibility of the image occurs as a result of reflection alone, nevertheless, the phenomenon of increased visibility of the image occurs as a result of increased reflection of incident light by the embossings.

The amendments thus satisfy the requirements of Article 123(2) EPC.

2.2 Article 123(3) EPC

The term "block" as used in claim 1 as granted is not construed as referring only to absorbed light. Rather, the term is construed as referring to all light which cannot be seen by the viewer as shown in Figures 4a and 4b, that is, light which is not transmitted through the substrate to the viewer. The replacement of the word "block" by "reflect" thus results in a restriction of the claim, since a possible alternative, in which light which is not transmitted is absorbed rather than reflected, is excluded. Just as the term "reflect" does not require that all light is reflected, the term "block" is also not seen as requiring that no light at all reaches the viewer.

The amendments thus satisfy the requirements of Article 123 (3) EPC.

3. Sufficiency of Disclosure

The preamble of claim 1 is not construed as requiring a change in the amount of transmitted light when the document is viewed in a direction substantially perpendicular to the surface of the transparent portion of the substrate and is then rotated. The claim merely includes the general statement that different amounts of light are transmitted "when the embossed image is tilted, rotated or viewed from different angles with respect to a light source". This general statement is qualified in the characterising portion of claim 1, which specifies the conditions under which increased visibility of the image occurs.

It is correct that, as shown in Figure 4a of the patent in suit, even when the incident light is perpendicular to the plane of the substrate, some light is reflected from the edges of the embossings. Similarly, some of the light at an angle to the perpendicular will, nevertheless, pass through the embossing in the region of the edge of the embossings. This is, however, consistent with the terminology used in claim 1, which refers to the image being "not very apparent" and becoming "more apparent" with a change in viewing angle.

Furthermore, there is no reason to suppose that a person skilled in the art would have any difficulty in producing embossings which will engender the effect described with reference to Figures 4a and 4b of the drawings.

4. Novelty

4.1 Document D2

Document D2 relates to an identity card having a window in which a grid image is located which can be viewed in transmission. The image is, however, a coloured image obtained by diffraction, as stated at column 4, lines 47 to 50. In the case of the embodiment of Figure 4, the effect which is obtained is described at column 6, lines 12 to 17, where it is stated that the image can be seen "in approximately vertically transmitted light". This is in contrast with claim 1 of the patent in suit, which requires that, under these conditions, the embossed image should be not very apparent.

Whilst in column 2, lines 45 to 47, of document D2 it is stated that the grid images can contain from ten lines per millimeter to several hundred lines per millimeter, this cannot be construed as a teaching to work at line spacings and embossings of a size and shape which do not produce a diffractive effect.

4.2 Document D9

Document D9 is generally concerned with security documents incorporating optically variable effect devices such as holograms which are difficult to detach (page 3, lines 17 to 19). As stated at page 4, lines 1 to 3, the term "optically variable effect" includes "visible light diffraction, visible light interference and polarisation effects".

It is mentioned at page 7, lines 4 to 7, that the invention is also applicable to "embossed articles having other types of fine markings in which the embossing does not create a light diffracting effect, such as matt diffusing effects, engraved line patterns and the like." In the absence of an indication as to where on the document such markings should be arranged, this disclosure does not amount to a disclosure in document D9 of non-diffractive embossing patterns provided in a transparent portion of the article.

The passage at page 6, lines 5 to 12, refers to an optically variable effect in one or more areas, a second area which may bear printing, and an optional third area "which may be selected from an optically variable effect image, reflective metal, transparent plastic or a combination." The passage at page 7, lines 8 to 15, refers to the possibility of ink-free intaglio printing subsequent to an embossing process, but does not suggest that this should be done in a transparent portion of the article. Finally, the passage at page 15, line 26 to page 16, line 4 refers to engraving effects in "non-optically variable effect areas of the completed article, such as coated or plain metallic areas."

There is thus no disclosure in document D9 of embossings which are not very apparent when light passes through the embossed image from the light source to the viewer in a direction substantially perpendicular to the surface of the transparent portion of the substrate.

Whilst document D9 discloses various optical effects obtained by embossing, engraving, metallising and printing, on opaque, reflective and transparent substrates, it does not disclose a combination of features which would give rise to the effect specified in the characterising portion of claim 1.

4.3 Document D11

Document D11 discloses a card consisting of a transparent layer 2 and a translucent, turbid layer 3, as shown in Figures 2a and 2b and described at column 3, lines 50 to 56. There is no disclosure of a transparent portion which enables an image to be viewed in transmission.

4.4 The remaining cited documents similarly do not disclose the provision of an embossed image on a transparent portion of the substrate which enables an image to be viewed in transmission as specified in the characterising portion of the independent claims. Thus, document D1, whilst disclosing an optically variable security device on a transparent substrate, does not disclose the use of an embossed image on the transparent substrate. Documents D3, D7 and D8 do not disclose optical effects obtained in transmission through a transparent substrate.

4.5 The subject-matter of claim 1 is thus novel.

5. Inventive step

5.1 The closest prior art has variously been suggested as being represented by documents D1, D3 or D9.

Document D1 discloses a security document incorporating an optically variable security device comprising Moiré patterns and diffraction gratings within transparent areas so as to utilize optical transmission effects (page 4, lines 9 to 17). The disclosure of this document thus does not go beyond that of document D9 as discussed above.

Document D3, whilst disclosing an optical effect in which an image becomes invisible when viewed in a direction substantially perpendicular to the surface of the substrate (cf. Fig. 21 and column 6, lines 29 to 47), is concerned with paper or paper-like materials (cf. column 3, lines 46 to 54). There is no suggestion of any optical effect which could be obtained when light passes through an embossed image.

Document D9 is thus regarded as being the closest prior art. The disclosure of this document is discussed under point 4.2 above.

5.2 The problem to be solved is to reduce the cost of providing the security device, as set out in the patent in suit at paragraph [0006].

5.3 The cited prior art does not offer the solution to this problem as claimed in claim 1 of the first auxiliary request and set out in the characterising portion of the claim.

It is alleged on behalf of the appellants that it is well known to the person skilled in the art that a complementary effect to that seen in reflection occurs in transmission. No document disclosing this effect has, however, been cited. There is thus no incentive based on the common general knowledge of the person skilled in the art to place coarser patterns intended to utilize this effect in a transparent area of the document known from document D9.

As discussed above under point 4.1, document D2 is concerned with diffraction effects and does not suggest a less costly alternative.

Document D7 does address the problem of reducing costs as set out at page 2, lines 18 to 26. The solution to this problem is disclosed as being to provide "an embossed patterned uniformly reflective portion, which portion includes first and second non-light diffracting pattern defining relief elements defining first and second patterns, respectively, the first and second relief elements being so structured that when the direction of view of the surface is changed from a first to a second direction the relative perceived distinctness of the first and second patterns is changed" (page 2, line 29 to page 3, line 3). This effect is also disclosed at page 6, lines 3 to 21.

There is, however, no suggestion that such patterns could be applied other than to a reflective portion of the article. Thus, when the article of document D9 is modified in the light of the teaching of document D7, the person skilled in the art would not consider applying the patterns to a transparent portion of the article.

Document D8 is also not concerned with effects which occur in transmission as opposed to reflection.

There is thus no incentive in the cited documents belonging to the prior art which would encourage a person skilled in the art to apply a latent image to a transparent substrate, so as to enable the latent image to become more apparent when light passes through the image from a light source to the viewer at an angle to the perpendicular.

The subject-matter of claim 1 thus involves an inventive step.

5.4 Claim 12 is directed to a method of producing a security document or token having the features specified in claim 1. Claim 26 is directed to a security document or token, such as a bank note made by the method of any one of claims 12 to 25 and similarly specifies that the embossed image is formed on a transparent portion of the substrate so as to produce the optical effect specified in claim 1.

Claims 2 to 11 are directly or indirectly appendant to claim 1, claims 13 to 25 are directly or indirectly appendant to claim 12 and claim 27 is appendant to claim 26. Claims 2 to 11 and 27 relate to preferred embodiments of the security document or token and claims 13 to 25 relate to preferred embodiments of the method of forming the security document of claim 12.

The subject-matter of claims 2 to 27 thus also involves an inventive step.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the first instance with the order to maintain the patent on the basis of the following documents:

(a) claims 1 to 27 presented as first auxiliary request during oral proceedings;

(b) description, pages 2 to 6, presented during oral proceedings;

(c) drawings, pages 16 to 20, as granted.