T 0094/84 (Paint layers) of 20.6.1986

Summary of Facts and Submissions

I. European patent application No. 79 400 579.3 was filed on 20 August 1979 claiming priority from an earlier French application of 29 August 1978. On 9 September 1981 European patent No. 0 010 007 was granted for the European application on the basis of 8 claims. Independent Claims 1 and 8 were worded as follows:

1. Process for the insulation of original paint layers, particularly for the application of new paint layers thereover, characterised by applying on the original paint to be insulated a barrier layer of a film-forming dicarboxylic acid- and diamine-based polyamide resin in alcoholic or water-alcohol solutions, and allowing the resulting protective coating to dry.

8. Application of the process of Claim 1 to the repair of original paint layers, particularly on vehicle bodies, characterised by applying on the original paint to be repaired a layer of the liquid film-forming composition, allowing the resulting protective layer to dry, and then applying thereon the new paint used for the repair.

II. The appellant (opponent) filed a notice of opposition to the European patent on 19 May 1982 requesting its revocation on the grounds of lack of novelty and inventive step. The following prior art was cited for the first time: (1) DE-A-25 19 559

(2a) Abstract No. 01236 U-AG published on 22 February 1973 in the Central Patents Index, Basic Abstracts Journal Section A - Plasdoc, Derwent Publications Ltd., London, England

(2b) The published Japanese patent on which that abstract was based

(3) Pamphlet entitled "Ultramid 1 C" published in April 1965 by BASF Badische Anilin und Soda-Fabrik AG, Ludwigshafen am Rhein, Federal Republic of Germany.

III. During oral proceedings held on 12 April 1983 the appellant submitted a German translation of Japanese patent No. 51563/72 (document (2b)) cited with the patent abstract (document (2a)) filed with the notice of opposition. On the basis of Article 114(2) EPC the Opposition Division refused to consider either the Japanese patent or the translation thereof.

In its summing up the Opposition Division announced its intention to maintain the patent in an amended form, the only remaining independent claim being a combination of the earlier Claims 8 and 1.

IV. On expiry of the period provided for by Rule 58(4) EPC, during which the appellant had communicated its disagreement and filed a certified English translation of the Japanese patent (2b), the Opposition Division rejected the opposition in its interlocutory decision of 28 February 1984. In its reasons for the decision the Opposition Division held that the claimed process was not described in any of the cited documents and that none of them, either taken singly or in combination, would have suggested the claimed process.

V. On 18 April 1984 the appellant filed an appeal against this decision and paid the appropriate fee. A statement of grounds for appeal was received on 28 June 1984, in confirmation of a telex.

VI. The appellant claimed that document (2b) had been cited sufficiently early to be considered by the Opposition Division and that it was incumbent on the latter to request a translation if it considered this to be appropriate. Moreover, since a translation of a document explicitly cited in the notice of opposition had been filed by the appellant during the oral proceedings on the latter's own initiative this was not a case of failure to submit facts or evidence in due time. That document, in conjunction with documents (1) and (3), disproved the inventive step in the subject-matter of the impugned patent's claims.

VII. The Board issued a communication stating its reservations as to the patentability of the subject-matter of the claims. In particular it singled out document (2b) which it considered the most closely related to the impugned patent and on the basis of which the problem raised in the application had to be defined. Apparently the only problem that the respondent (patent proprietor) proposed to solve was that of supplying an alternative to the process described in document (2b). In addition, the Board drew attention to the fact that the dossier contained no specific facts permitting an objective comparison with the relevant prior art. Finally it introduced into the proceedings the handbook "Lehrbuch der Lacke und Beschichtungen", Volume IV, 1976 (document (4)) which refers to a general tendency to move away from natural resins (page 105).

VIII. The respondent (patent proprietor) refuted the appellant's interpretation of the Japanese patent (document (2b)) on the grounds that the latter taught that the solutions envisaged had to contain at least 50% shellac and in no way suggested that shellac could be omitted. Consequently, even in combination with documents (1) and (3), document (2b) could not have led a skilled person to the solution claimed in the impugned patent without inventive effort. Replying to the Board's communication, the respondent stressed that an improvement in durability was part of the problem set in the impugned patent and gave the results of tests conducted in bad weather conditions on repair paintwork insulated by the composition of Example 2 (letter received on 10 April 1986).

IX. The appellant called for the impugned patent to be revoked and requested reimbursement of the fee for appeal. The respondent asked that the appeal be rejected and the patent maintained in its present form with the single independent claim worded as follows: Process for the repair of original paint layers, particularly on vehicle bodies, characterised by applying on the original paint to be repaired a layer of the liquid film-forming composition containing a dicarboxylic acid- and diamine-based polyamide resin in alcoholic or water-alcohol solutions, allowing the resulting protective coating to dry, and then applying thereon the new paint used for the repair.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The subject-matter of the claims does not extend beyond the content of the application as filed.

3. The impugned European patent relates to the repair of paint layers, particularly paint layers applied to the bodywork of motor vehicles. The closest prior art document as regards subject-matter is Japanese patent 51 563/72 (2b). (References below to document (2b) relate to the certified translation of the Japanese patent contained in the dossier.) Like the impugned patent, document (2b) concerns the repair of paintwork on surfaces such as parts of motor vehicles. According to document (2b) direct application of paint on the previous coating has the unexceptional effect of causing the coated surface to shrink and crack, because the solvent of the top coating penetrates and loosens the previous coating. Furthermore, when applying new lacquer, the pigment coating in the underlayers elutes into the top coating (see description of (2b), page 1, and 6 first lines of page 2). The remedy to these disadvantages proposed by document (2b) consists of insulating the old coating from the new coating by means of an intermediate film which is impermeable to the new coating's solvent. One of the proposals for the impermeable film put forward by document (2b) is a mixture of N-methoxymethylated nylon and shellac resin (page 6). This mixture is soluble in alcohol or water-alcohol mixtures, but insoluble in other solvents (see page 2, last paragraph). According to all the examples in document (2b) the intermediate coating is dried prior to application of the outer coat.

4. Without denying the affinity of the objectives embodied in the impugned patent and document (2b), the respondent argues that (2b) provides for the use of a mixture of shellac and polyamide for repairing motor vehicle bodywork, and not a polyamide resin. The proprietor found that shellac-based insulators soluble in alcohol, though effective and fast-drying, have the disadvantage of poor durability (cracks, peeling off).

5. In the light of the above the problem should be to find an insulator without the disadvantage of poor durability. Despite the Board's suggestion that the claim to an improvement in durability should be substantiated, the respondent has merely reported trials on the pigmented insulating composition of Example 2, which were apparently satisfactory. As regards the closest prior art the respondent has simply stated that compositions based on shellac would have resulted, under the same conditions, in defects such as cracking and peeling within 3 to 6 months of exposure (see letter received on 10 April 1986, page 3, 2nd and 3rd paragraphs). The Board considers this a purely speculative statement, since the respondent has provided no substantive facts permitting an objective comparison with the closest prior art (see decision T 20/81 Shell/Aryloxybenzaldehydes, OJ 6/1982, p. 217, in particular p. 221, 2nd paragraph). Consequently the problem must be reduced to one of simply supplying an alternative to the known insulator. In other words, the problem is the same as that set in document (2b).

6. The solution proposed by the patentee consists of using a polyamide resin based on dicarboxylic acid and diamine in an alcoholic or water-alcohol solution. Seven examples of compositions capable of yielding the result sought by the patentee were given in the description. All the compositions contain no shellac and are in line with the definition given in the claim; the entire disclosure demonstrates that the proposed solution does match the problem set - a fact that was never called in question.

7. The novelty of the subject-matter of Claim 1 is not in doubt; none of the documents cited in the course of the proceedings discloses that subject-matter.

8. The issue is whether a skilled person anxious to find an alternative to the insulator described in document (2b) according to the problem set would have had to be inventive to use a polyamide resin based on dicarboxylic acid and diamine to repair paintwork, taking into account the state of the art and in particular document (2b). For the alternative insulating composition to answer the problem set it would have to make it possible to avoid the drawbacks associated with direct application of a new layer of paint on existing paintwork, as did the insulating composition in document (2b).

8.1 Among the products belonging to the state of the art available to the skilled person was the copolyamide described in the pamphlet "Ultramid 1C", BASF, Ludwigshafen, April 1965 (document (3)), according to which ultramid 1C is a ternary copolyamide based on caprolactam, hexamethylene diamine/adipic acid and p, p'-diamine dicyclohexyl-methane/adipic acid. This polyamide is suitable for paintwork and is soluble in alcohol and water-alcohol mixtures, but is resistant to most solvents such as benzene, ketones, ethers and esters (see document (3), page 1, title and first two paragraphs, and page 2, penultimate paragraph). According to the pamphlet, ultramid 1C is suitable for production of lacquers. Ultramid 1C films are resistant to numerous solvents and adhere to numerous surfaces such as metals and synthetic materials (see document (3), paragraph running from page 5 to 6). It is clear from document (3) that the properties of the product described are virtually the same as those sought in document (2b) and to such an extent the product is evidently also suitable for solving the problem in question. The alternative should have readily occurred to the skilled person, since he would only have had to test the insulating capacity of a copolyamide film between an old coat of paint and a new coat.

8.2 German patent application DE-A-2 519 559 (1) actually does describe multi-layer coatings of paint on metallic or non-metallic surfaces. An intermediate coat of non-crosslinked polyamide is applied between the final enamel and the primer, permitting the former to be restored without touching the primer. The final enamel can then be removed without removing the intermediate coat. The intermediate coat is resistant to solvents, thus permitting the outer enamel to be stripped while protecting the primer (document (1), page 2, 2nd and 3rd paragraphs; page 3, first lines and 3rd and 7th paragraphs).

8.3 To sum up, the solution consisting of replacing the intermediate coat described in document (2b) with a polyamide resin based on dicarboxylic acid and diamine in an alcoholic or water-alcohol solution for repairing paintwork is obvious from the state of the art. Moreover, it follows the general trend away from natural resins (see, for example, document (4), page 105, paragraph 4.2.2.1.4, 1st sentence).

9. Since all the claims of the impugned patent must meet the requirements of the Convention it is unnecessary to verify the validity of the other claims, particularly since no inventive feature can be deduced in any other respect, nor has any been validly put forward.

10. The appellant requests reimbursement of the fee for appeal on the grounds that the Japanese patent cited in the notice of opposition was not considered by the Opposition Division. The fee for appeal may be reimbursed only in accordance with Rule 67 EPC. The question arises, therefore, whether a substantial procedural violation has taken place.

10.1 According to Article 113(1) EPC decisions of the European Patent Office must be based on grounds or evidence on which the parties concerned have had an opportunity to comment. In the case of a decision to reject an opposition it is self-evident that both the grounds for opposition and the facts and evidence put forward in support of those grounds must be fully taken into account by the Opposition Division. The opposition is then rejected only if all the grounds for it, after being given due consideration, are regarded as not confuting maintenance of the patent.

10.2 In the present case the Opposition Division refused to consider both the Japanese patent (document (2b)) and its German translation, put forward by the opponent during the oral proceedings. Apart from the assertion that these documents were cited for the first time during the oral proceedings, no other reason for refusing to take their contents into consideration is given either in the decision or in the minutes of the oral proceedings. The Board would point out that, contrary to the view taken by the Opposition Division in its contested decision (see Section I, page 2, 3rd paragraph), the Japanese patent was indeed mentioned in the notice of opposition (see page 2 thereof, citation (2), last two lines).

10.3 The Board acknowledges that a possible error in assessing the state of the art could not represent a violation of procedural norms. It has already advanced the view that objective assessment of the relevance of every document in the state of the art is part of the normal examination process and cannot ever be a procedural violation (see decision T 28/81 of 11 June 1985, point 11 of the Reasons). This is not however the case here, since the Opposition Division did not even take note of the contents of document (2b), contenting itself merely with the incomplete information contained in the abstract (document (2a)). It would seem as if the Opposition Division were deliberately preventing the opponent from setting out completely one of the principal grounds for opposition, namely one of the four documents cited in support thereof. This breach of Article 113(1) is in itself sufficient to affirm a substantial procedural violation.

10.4 In refusing to consider document (2b) the Opposition Division referred to Article 114(2) EPC. However, paragraph 1 of that Article stipulates that in proceedings before it the European Patent Office must examine the facts of its own motion. In previous decisions the Board has accepted that exercise of tolerance in allowing documents submitted after expiry of the period for opposition could become a source of abuse difficult to control. It has already acknowledged the disadvantage inherent in admitting such documents, but has considered this disadvantage to be counterbalanced by the obligation on the part of the EPO to examine of its own motion, in cases where such documents could lead to the contested decision being reversed (see decision T 273/84, point 6, last two paragraphs, of the Reasons). Even if it could be conceded that the Japanese document (2b) was cited at the oral proceedings for the first time (which is not the case), a rapid inspection of its contents was called for to assess its relevance; the simultaneous supply of a translation in one of the official languages made such inspection possible. However, nothing in the opposition dossier suggests that it took place. Yet document (2b) has been shown above to be the closest prior art and to cast doubt on the contested decision (see points 3 and 4). It can therefore be concluded that Article 114 EPC has not been observed in its entirety.

10.5 Nor could it be argued that in the notice of opposition the opponent had put the emphasis on the Derwent abstract (document (2a)) and not on the Japanese patent (document (2b)) on which the abstract was based. The notice of opposition contains a specific reference to the patent (document (2b)):" . . . like the Japanese patent on which this summary is based". Moreover, Rules 59 and 1(2) EPC allowed the Opposition Division to require the Japanese patent and a translation thereof to be supplied. It is also worth adding that the tenor of the Derwent abstract (document (2a)) is such as to suggest the patent's relevance.

10.6 All these circumstances taken as a whole impel the finding that a substantial procedural violation has taken place and that the opponent's request for reimbursement of the fee for appeal is to be granted.

ORDER

For these reasons, it is decided that:

1. The impugned decision is set aside

2. The patent is revoked

3. Reimbursement of the fee for appeal is ordered.