T 0219/85 (Inadequate description) of 14.7.1986

Summary of Facts and Submissions

I. European patent application No. 82 200 439.6, filed on 13 April 1982 claiming the priority of an application filed on 7 May 1981, and published under number 0 064 780, was refused by the Examining Division on 10 April 1985.

II. The Examining Division considered that given the existence of BE-A-868 383 the subject-matter of the original Claim 1 was not patentable within the terms of Article 52 EPC owing to lack of novelty as defined in Article 54 EPC. The claim read as follows: "A process for treating a gem stone to provide it with an inscription on one side or facet, or on the table or the girdle, in order to render the stone identifiable, characterised in that the stone is coated with a photoresist resin to which a photographic film bearing the desired inscription is applied, the resin is developed by exposing it to a light source, the exposed portions of the resin are removed by conventional means and the portion of the stone thus treated is subjected to cathode bombardment in such a manner that the stone becomes etched wherever it is not protected by the resin."

III. While examination was in progress the applicant, in a letter received on 28 September 1984, proposed a new wording for Claim 1, hereinafter referred to as "alternative Claim 1", which read as follows: "A process for treating a gem stone to provide it with an inscription on one side or facet, or on the table or the girdle in order to render the stone identifiable, whereby the stone is coated with a photoresist resin to which a photographic film bearing the desired inscription is applied, and said resin is developed by exposing it to a light source and the exposed portions of said resin are removed by conventional means, characterised in that the portion of the stone thus treated is subjected to cathode bombardment under conditions such that the stone becomes etched to a depth of 50 to 500 angströms wherever it is not protected by the resin." The Examining Division concluded that the invention as claimed in alternative Claim 1 was not patentable under Article 52 EPC since its subject-matter did not involve an inventive step as defined in Article 56 EPC vis-à-vis what was known from BE-A-868 383.

IV. On 31 May 1985 the appellant filed an appeal against the decision to refuse the application and paid the fee for appeal. The grounds for appeal were supplied in a document received at the EPO on 31 July 1985 in which the appellant submitted that the subject- matter of the original Claim 1, which had been refused, was new compared with the prior art since none of the documents cited taught that a microscopic mark could be engraved on the surface of a diamond.

V. The description, subordinate claims, drawings and the documents cited in the search report and by the appellant will be found in the file.

Reasons for the Decision

1.The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible. Having examined the documents in the file, the Board concludes that the process for treating a gem as claimed in original Claim 1 is novel since none of the citations relates to an engraving on the stone. The same applies in the case of alternative Claim 1 of 28 September 1985.

2.The substance of Claim 1 in its original and alternative forms calls for closer consideration before a decision can be reached on the question of inventive step.

2.1 The Board agrees with the Examining Division's analysis of BE-A- 868 383, which discloses a process for treating a diamond with a view to inscribing an identification mark on one of its sides or facets. The stone is coated with a photoresist resin so as to form a photoresistant film. A photographic film bearing the desired inscription is applied to the resin and is then exposed using a mask matched to the desired inscription, the film is developed and the exposed resin areas, corresponding to the mark, are removed. The parts of the diamond thus exposed are then subjected to cathode bombardment in the presence of argon. Up to this point the process known in the art and that claimed in the European patent application are identical. According to the state of the art as represented by BE-A-868 383, US-A-3 945 902, US-A-3 325 393, FR-A-1 481 918 and FR A-1 476 536, bombardment prepares the surface of a diamond so as to ensure strong adhesion between the diamond and a metal coating to be applied subsequently and has the effect of a thorough cleaning. None of the documents dealing with the bombardment process consider the possibility of producing an engraving of some depth.

2.2 The processes for treating the surface of the diamond claimed in Claim 1 in its original and alternative forms are the same except that the treatment is said to be effected "in such a manner" (original Claim 1) or "under conditions such" (amended Claim 1) that the stone becomes etched.

2.3 The same treatment applied to the same surface results, according to the state of the art (point 2.1) in the diamond being cleaned and, according to the European application (in so far as it is explained) (point 2.2) in the diamond being etched. The essential difference between the two processes, which gives rise to the different results, is enshrined in the vague term "under conditions such", which can be accepted only if it can be shown that it is sufficiently clear to enable a person skilled in the art to carry out the invention disclosed in the application (Article 83 EPC). Either, therefore, the purport of these words must emerge clearly from a reading of the original text of the patent application or the conditions that give rise to this different result must be so apparent to the skilled person as to require no further explanation.

2.3.1 According to the original text of the European patent application (p. 5, lines 18-21) the etching is effected at stage 5 of the process by cathode bombardment with an ionised gas. The only amplification given (p. 7, lines 8-12) is that cathode bombardment results in etching of the parts not protected by the resin. No further information is therefore given which would enable a skilled person to use the known process to attain this different result. This fact is confirmed by an explanatory memo from the applicant's technical staff annexed to the applicant's letter received on 28 September 1984 which states that "details of the actual production process have been kept secret to prevent them being copied straight from the patent".

2.3.2 There remains the question of what general information was available to the skilled person on the priority date of the European patent application. In a letter received on 11 March 1986, the appellant argues that in view of the literature existing on the subject the mere use of the terms "etching" and "cathode bombardment" in the application would enable a person skilled in the art to carry out the engraving on the diamond. The Board is unable to accept this contention: - firstly, because precisely the same terms are used in the documents concerning treatment that results merely in the diamond being cleaned, and - secondly because the documentation relating to the treatment of materials other than diamond simply shows the complexity of the problem according to the material to be attacked and nowhere considers the treatment of diamond. Vague references such as "in such a manner that" or "under conditions such that" would therefore not on their own enable a skilled person to establish the conditions required to achieve the desired result.

2.4 The Board concludes that Claim 1, both in its original and alternative forms, was not clear within the meaning of Article 84 EPC and furthermore that the invention was not disclosed in the original application in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, as required by Article 83 EPC. There is therefore no way in which the lack of clarity of the claims could be remedied without extending the subject-matter of the application beyond its content as filed, which would contravene Article 123(2) EPC. Neither version of the claim, therefore, is allowable. It is accordingly superfluous to pronounce on whether the subject-matter of original or alternative Claim 1 involves an inventive step, even if this were possible given their lack of clarity.

ORDER

For these reasons, it is decided that:

The appeal against the decision of the Examining Division is dismissed.