Key points
- In this opposition appeal, the opponent argues that the claim is not novel over Example 22 of E1, a prior art European patent publication. The claim under examination is directed to a cutting tool with a titanium carbonitride layer defined inter alia by certain parameters describing the texture. E1 does not describe the texture. The opponent performed experiments and filed a report repeating Example 22 of E1.
- The Board: “ this sample reproduced by the appellant according to the teaching of E1 fulfils the texture requirements of features M9 and M10 of claim 1 of the patent irrespective of the method used for processing the [electron backscattering diffraction] data. The parameters defined in claim 1 are therefore implicitly disclosed by E1 in line with established case law such as T 1523/07 and T 1085/13 cited by the respondent.”
- As a comment, in my article in epi Information 4/2020, I propose that it may be more precise to say that E1 discloses a product that inherently falls within the ambit of claim 1 because probably an amendment of E1 to add the texture features would involve added subject-matter under Article 123(2).
- The Board, on when an experiment is a sufficiently close repetition of a prior art example: “The Board agrees with the conclusions presented in the case law cited by the respondent [patentee] that only a true repetition of an example of the prior art can be taken into account for proving that a parameter is implicitly met by an example of the prior art. However, the technical particularities of the specific example, the technical field and the practical implications thereof have to be taken into account. In the present case, the Board concludes that [opponent's] sample 17ELi05-N25M is sufficiently close to example 22 of E1 to prove, that the texture parameters defined in features M9 and M10 of claim 1 are unambiguously fulfilled by said example.”
T 0474/17
https://www.epo.org/law-practice/case-law-appeals/recent/t170474eu1.html
Hence, E1 does not describe which overall texture is obtained for the TiCN layer.
1.2.2 The appellant performed experiments on the basis of the examples of E1 comprising a TiN innermost layer and a TiCN layer having (111)(222)(200) orientation. The results of these experiments are reported in Annexes 1, 2 and 8.
The following reasoning focuses on sample 17ELi05-N25M, which is considered by the Board to represent a fair repetition of example 22 of table 6 of E1.
The sample 17ELi05-N25M produced according to Annex 8 comprises a cemented carbide substrate having the composition 5.35 wt% Co, 2.70 wt% Ta, 0.42 wt% Nb, 1.80 wt% Ti and balance W+C, an innermost TiN layer having a thickness of 0.5 µm and an inner TiCN layer having a thickness of 6.4 µm.
source http://justpatentlaw.blogspot.com/2021/06/t-047417-implicit-disclosure.html
