T 1871/14 - Rule 137(5) and single general inventive concept

Key points

• The Board, about Art. 83 of the Main Request in this examination appeal: "[t]he only passage describing an embodiment of the invention on pages 47 to 58 of the 175 page A2-publication is completely silent about the contested claim feature of an area of the 1931 CIE chromaticity diagram. It also contains no indication as to whether the embodiment provides the claimed difference in correlated colour temperatures. The remaining 164 pages are nothing more than copies of claim wording and repetitions." The Board considers the invention to be insufficiently disclosed.
• Turning to AR-2, the Board notes that "[w]ith this request, filed with the statement of grounds of appeal, this technical concept [about a ratio of first and second power lines] has been claimed for the first time during the European phase of the application. Thus, this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept, which like the claims of the present main and first auxiliary requests were characterised by properties of the light emitted by the device, such as correlated colour temperatures [...]. Therefore, the subject-matter of the second auxiliary request constitutes an inadmissible amendment in the sense of Rule 137(5) EPC. Should the appellant have wished to pursue subject-matter of this nature, they should have filed corresponding claims upon entry into the European phase of the application." 
• The Board however then combines this holding about Rule 137(5) with Article 12(4) RPBA: “In that context, with respect to Article 12(4) RPBA, because the second auxiliary request relates to a different invention not covered by the supplementary European search, it clearly could and should have been filed before the department of first instance. [] Consequently, the board exercised its power under Article 12(4) RPBA to hold inadmissible the second auxiliary request.”
• As a comment, I see no advantage in adding Article 12(4) RPBA for holding a request inadmissible that is already inadmissible under Rule 137(5) EPC. 
• On the other hand, I like how the  Board states that the two cumulative requirements of Rule 137(5) are met: “this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept” (emphasis added). 

EPO T 1871/14 -  link

Reasons for the Decision

1. Admissibility of the appeal

The appeal was filed in due time and form and sufficiently substantiated. Thus, the appeal is admissible.

2. Main request and first auxiliary request

Clarity (Article 84 EPC)

2.1 The independent claims 1 and 11 according to the main request as well as independent claims 1 and 10 according to the first auxiliary request define the claimed subject-matter merely by a result to be achieved.

2.2 The appellant's argument, that the examining division had never raised an objection under Article 84 EPC against claim 1 does not take into account point 2.6.5 on page 14 of the contested decision, where former claim 2, the features of which are contained in the independent claims of the present main request and auxiliary request, was found not to comply with the requirements of Article 84 EPC, because it lacked essential features. Besides that, the appellant's argument has no bearing on the decision because the board can, according to Article 111(1), 2nd sentence EPC, exercise any power within the competence of the department which was responsible for the decision appealed. Thus, in appeal proceedings concerning a decision of an examining division, the board may even raise new objections which did not form part of the contested decision at all.

2.3 The board is also not convinced by the appellant's substantive arguments with respect to Article 84 EPC.

The definition of an area in a 1931 CIE chromaticity diagram provides no more information than the result that shall be achieved with the claimed lighting device, i.e. the emitted colour. It can also be read as to provide the lighting device with the required features such that the light emitted by it lies within the defined area of the 1931 CIE chromaticity diagram.

The board has no doubts that it was within the skill of an ordinary light colour mixing artisan to identify colour points in a CIE chromaticity diagram that relate to light emitted by individual light emitters, to draw line segments representing the mixture of emitted light from two light emitters and that in the case of more than two light emitters, the range of mixed colour light was defined by the perimeter obtained from drawing lines connecting the respective colour points of the light emitters.

However, the appellant's arguments do not reflect the claimed subject-matter, which does not relate to the representation of a given colour point on a CIE diagram. In contrast, the claimed subject-matter relates to creating a lighting device that has the technical properties to achieve a desired light colour which is represented by a colour point in a predefined area on a CIE chromaticity diagram. That is the opposite of indicating a colour point on a CIE diagram for a known wavelength of a given light emitter.

Moreover, in claim 1 according to the main request and according to the first auxiliary request, there is no correlation defined between the colour points on the CIE diagram and the peak wavelength and dominant wavelength which are used to define the first and second groups of light emitters and the first and second groups of luminescent materials, respectively. Thus, although it may be assumed that the colour points of the light emitters and luminescent materials lie within an area such as the one defined in the independent claims, the claims contain no definition whether the colour points relating to the claimed light emitters and luminescent material are located in the CIE diagram as defined in the independent claims. This is because the claims define merely two types of light sources, the light emitters and the luminescent material, but five distinct colour points in the CIE diagram that define the claimed area. Already for this reason, the independent claims are not clear.

Further, even under the assumption that such a correlation was defined in claim 1, it would not be possible for the person skilled in the art to determine the light emitters and luminescent materials according to the subject-matter of claim 1 because neither the peak wavelength nor the dominant wavelength correspond to a single specific colour point on the CIE diagram, because they both represent a wavelength spectrum.

Moreover, contrary to the argument of the appellant that it was clearly within ordinary skill to select light emitters such that the resulting colour point lies within a predefined area, the person skilled in the art is limited by the claim wording to a predefined area and to the peak wavelengths and dominant wavelengths defining the light emitters and luminescent materials, which do not directly correlate to corresponding colour points in the CIE diagram.

2.4 Thus, the board has arrived at the conclusion, that the independent claims according to the main request and the first auxiliary request merely define the technical effect to be achieved without defining the technical features of the lighting device that are required to arrive at the desired technical effect, contrary to the requirements of Article 84 EPC.

Insufficient disclosure (Article 83 EPC)

2.5 The application also does not disclose the invention according to the independent claims of the main request and the first auxiliary request in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art in the sense of Article 83 EPC.

As discussed above under 2.3, neither the peak wavelength nor the dominant wavelength can be interpreted to unambiguously define a corresponding colour point in a CIE diagram. The reason for this lies in the emitted wavelength spectra of the light emitters and the luminescent materials, which cannot be deduced from the peak wavelength or the dominant wavelength alone, respectively.

Moreover, the whole application does not seem to provide a different definition of the lighting device than the one given in the independent claims of the main request and of the first auxiliary request. The passage on page 34 cited by the appellant to support the claim wording is more or less a copy of the claim wording without any further technical details.

The only passage describing an embodiment of the invention on pages 47 to 58 of the 175 page A2-publication is completely silent about the contested claim feature of an area of the 1931 CIE chromaticity diagram. It also contains no indication as to whether the embodiment provides the claimed difference in correlated colour temperatures. The remaining 164 pages are nothing more than copies of claim wording and repetitions.

Further, the application as a whole does not provide any information as to which colour points correlate to the claimed light emitters and luminescent materials based on the peak wavelength and dominant wavelength as defined in the independent claims, which could be regarded as a way to carry out the invention in the sense of Rule 42(1)(e) EPC.

Therefore, the disclosure of the claimed invention is not complete in the sense of Article 83 EPC.

2.6 Thus, the board has arrived at the conclusion that the independent claims according to the main request and the first auxiliary request do not fulfil the requirement of Article 83 EPC.

3. Second auxiliary request (Rule 137(5) EPC)

The independent claims according to the second auxiliary request contain features directed to a first power line and a second power line as well as a first ratio and a second ratio of light emitters of the first group and of the second group on the respective first and second power lines.

With this request, filed with the statement of grounds of appeal, this technical concept has been claimed for the first time during the European phase of the application. Thus, this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept, which like the claims of the present main and first auxiliary requests were characterised by properties of the light emitted by the device, such as correlated colour temperatures, CRI and coordinates on the CIE Chromaticity Diagram.

Therefore, the subject-matter of the second auxiliary request constitutes an inadmissible amendment in the sense of Rule 137(5) EPC. Should the appellant have wished to pursue subject-matter of this nature, they should have filed corresponding claims upon entry into the European phase of the application.

In that context, with respect to Article 12(4) RPBA, because the second auxiliary request relates to a different invention not covered by the supplementary European search, it clearly could and should have been filed before the department of first instance.

Since the appellant did not put forward any arguments in support of the admissibility of their second auxiliary request, the board sees no reason to deviate from its preliminary opinion given in the communication under Article 15(1) RPBA.

Consequently, the board exercised its power under Article 12(4) RPBA to hold inadmissible the second auxiliary request.

4. Since none of the appellant's requests is allowable, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.