T 0687/14 - Novelty, genus and species mistake?

Key points

• " Appellant I (patent proprietors) argued that document D3 does not unambiguously necessarily disclose that the mark appears "as a three dimensional mark when viewed in transmitted light". Thus, as argued on behalf of appellant I, the expres­sion "rastered half-tone ima­ges, such as portraits" of document D3 may encompass portraits such as silhouettes or abstract facial representations (e.g. a "smiley") which are flat."
• " The expres­sion "portraits" [in D3] encom­pas­ses portraits such as the ones illustrated in fi­gures 1 and 2 of document D7 or figure 12 of document E14. These portraits [in D7 and E14] are a representation of a human face and thus satisfy the requirement of "appearing as a three dimensional mark" in the sense of the patent in suit, because they are an attempt at a three dimensio­nal ap­pea­ring representation of a (necessarily three dimen­sio­nal) human face." 
• " The disclosure "rastered half-tone images, such as portraits" of document D3 thus necessarily includes portraits which fall under the understanding of the feature "at least one digitised mark made of at least one set of dots appearing as a three dimen­sio­nal mark when viewed in transmitted light" [] as defined in the patent in suit. The fact that, in addition, there may be portraits which fall under the disclosure of document D3 but which do not cor­res­pond to the claimed feature does not invalidate the existence of those that do: the wording of the claimed feature is even more generic than the disclosure in document D3 and is thus anticipated by it." (underlining added twice).
• I seriously think that the Board makes a species - genus mistake here. D3 discloses 'portrait' . This is a genus including 3D portraits as species (and also 2D portraits). The claim requires a 3D-looking image.  However, mentioning a genus does not disclose a species. As the Board seems to think. By analogy, if a claim requires "a yellow-green gas" , and the prior art teaches "halogen", then it is not relevant that one of the 6 known halogen elements is chlorine (which is a gas with yellow-green color). Because not all halogens are yellow-green gases (e.g. iodine is not), the claim is clearly novel. Obvious perhaps, but novel. However, perhaps I overlook something.  

EPO T 0687/14 -  link

Auxiliary request 1

2. Novelty

2.1 Document D3 concerns security films for embedding in, or applying on, papers of value consisting of a trans­lucent carrier film and a metal cover layer applied thereto, having coating-free areas, which are clearly visible in particular in transmitted light (paragraph [0001], preamble of claims 1 and 16). The Process disclosed in document D3 aims to generate negative images in metal-coated foils which are characterized by a high contour sharpness (paragraph [0006]). This sharpness of the contours makes it possible to produce rastered half-tone images. Thus, half-tone images, such as portraits in the cover layer, can be formed on coated security films. Embedding these foils between two layers of a security paper creates a watermark-like effect, since the portraits are not or only slightly visible in incident light, but highly recognisable and rich in contrast in transmitted light (paragraph [0009]).

2.2 Thus document D3 discloses a security support (such as a "security paper") comprising a security element comprising a carrier substrate 10 comprising a transparent or translucent area carrying at least one digitised mark made of at least one set of dots appearing as a three dimensional mark when viewed in transmitted light, wherein the digitised mark is made of deposits and/or voids 50 of metal 20 applied onto the carrier substrate 10 by metallisation techniques and/or partial demetallisation techniques, wherein the security element is in an elongated form, being a thread, and is at least partially embedded in the said support, or wherein the security element is a stripe or a patch applied to the said support.

2.3 Appellant I (patent proprietors) argued that document D3 does not unambiguously necessarily disclose that the mark appears "as a three dimensional mark when viewed in transmitted light". Thus, as argued on behalf of appellant I, the expres­sion "rastered half-tone ima­ges, such as portraits" of document D3 may encompass portraits such as silhouettes or abstract facial representations (e.g. a "smiley") which are flat.

However, the expres­sion "rastered half-tone images, such as portraits" is not inherently limited to flat represen­ta­tions. The expres­sion "portraits" encom­pas­ses portraits such as the ones illustrated in fi­gures 1 and 2 of document D7 or figure 12 of document E14.

[ Fig. 2, Fig. 12 ]

These portraits are a representation of a human face and thus satisfy the requirement of "appearing as a three dimensional mark" in the sense of the patent in suit, because they are an attempt at a three dimensio­nal ap­pea­ring representation of a (necessarily three dimen­sio­nal) human face. However, figure 2 of document D7 and the actual por­trait 3 of figure 12 of document E14 only use areas of black ink on a uniform back­ground and are therefore only binary representations in the sense that they do not involve any attempt to simulate interme­diate levels of grey, i.e. they do not make use of half-toning.

FORMULA/TABLE/GRAPHIC

On the other hand, as acknowledged by appellant I, fi­gure 1 of document D7 uses half-toning to represent a human bust: the line thickness of the black lines for­ming the portrait is varied such that, when viewed from a sufficient dis­tance, the varying line thickness will be perceived as different levels of grey in an appro­xi­ma­tion of the con­tinuous tone of a corresponding black and white photo­graph. Thus, figure 1 of document D7 makes use of half-toning and, in consequence, is a type of por­trait which is necessarily included in the ex­pres­sion "rastered half-tone images, such as por­traits" of document D3.

The embodiment of figure 2 of the patent in suit is similarly a rastered half-tone portrait of a lady, in which "a succession of dots of different colours [is] arranged in such a way that the mark appears as a three dimensional image" (patent in suit, column 12, lines 6 to 8).

The disclosure "rastered half-tone images, such as portraits" of document D3 thus necessarily includes portraits which fall under the understanding of the feature "at least one digitised mark made of at least one set of dots appearing as a three dimen­sio­nal mark when viewed in transmitted light" (see above point 1.1.8) as defined in the patent in suit. The fact that, in addition, there may be portraits which fall under the disclosure of document D3 but which do not cor­res­pond to the claimed feature does not invalidate the existence of those that do: the wording of the claimed feature is even more generic than the disclosure in document D3 and is thus anticipated by it.

2.4 The subject-matter of claim 1 according to auxiliary request 1 is not new with respect to document D3 (Article 54(2) EPC 1973).