T 0458/05 08-03-2007

Reasons for the Decision

1. The Board consents to the opinion of the respondent that the sixth to tenth auxiliary requests have been filed in response to issues raised in the preliminary opinion of the Board given in the annex to the summons to oral proceedings and that these requests were filed inter alia in order to overcome objections raised in this opinion with respect to the requirements of Article 123(2) EPC. These requests, which furthermore have been filed within the time limit set in the annex, are thus admitted.

2. The main issue with respect to all of the requests on file is, whether or not claim 1 of each of these requests fulfils the requirement of Article 123(2) EPC.

Although the ground of opposition according to Article 100(c) EPC has been raised with respect to claim 1 as granted (cf. notice of opposition dated 13 December 2002, paragraph III) the subject of the appeal proceedings is whether or not the amendments to the claims 1 according to all requests lead to the patent with the amended claims satisfying the requirements of the EPC, i.e. also those of Article 123(2) EPC.

3. Amended claims

3.1 Claim 1 according to the second auxiliary request, on which the decision under appeal is based, differs from claim 1 as granted inter alia by the following features

(a) the folding edge A of the curving main surface of the blank is coupled to at least two curving auxiliary surfaces located at mutual distance and separated by a cut edge along the folding edge A,

(b) at least one of the two curving auxiliary surfaces being located at the further straight folding edge B between the flat main surface and curving main surface.

Feature a) is the one which has been extensively discussed in the oral proceedings with respect to the requirement of Article 123(2) EPC.

Features a) and b) are common to the claims 1 of all requests.

3.2 In the following it is indicated, for ease of reference, which additional features, as compared to claim 1 according to the second auxiliary request, have been added to the claims 1 of the further requests.

3.2.1 Claim 1 according to the sixth auxiliary request comprises the additional feature according to which "a space (13, 14) is provided between the curving auxiliary surfaces which space is bounded by a cut edge".

3.2.2 Claim 1 according to the seventh auxiliary request comprises in addition to the features of the sixth auxiliary request the feature according to which "the at least one curving main surface is coupled to a peripheral auxiliary surface along substantially the full length of the further straight folding edge, wherein the peripheral auxiliary surface is fixed to one of the flat main surfaces in the corresponding box".

3.2.3 Claim 1 according to the eighth auxiliary request comprises as additional feature the previously mentioned feature as added to claim 1 according to the seventh auxiliary request.

3.2.4 Claim 1 according to the ninth auxiliary request comprises the following additional features: "blank comprising auxiliary surfaces and six main surfaces forming the walls of the corresponding box: two curving main surfaces, two flat main surfaces and two main end surfaces forming the substantially flat end walls of the box", "the curving main surfaces are provided with two mutually opposite folding edges (a), wherein each folding edge (a) is coupled to at least one curving auxiliary surface" and "the at least two curving auxiliary surfaces being located at the further straight folding edge (b) between the flat main surface and curving main surface in a mirror-symmetrical pattern relative to the middle of folding edge".

3.2.5 Claim 1 according to the tenth auxiliary request comprises the following additional features "at least a further intermediate curving auxiliary surface is provided, wherein two adjacent curving auxiliary surfaces enclose a space which is bounded by a cut edge".

4. Requirements of Article 123(2) EPC

According to Article 123(2) EPC "a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed".

The purpose of Article 123(2) EPC is that the applicant or patent proprietor shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal certainty of third parties relying on the content of the original application (see G 1/93, OJ EPO 1994, 541, point 9 of the Reasons).

According to the established jurisprudence of the Boards of Appeal an amendment to a claim meets the requirements of Article 123(2) EPC if the skilled person can derive the subject-matter of the amended claim directly and unambiguously, using common general knowledge, from the application as filed.

Consequently an amendment is not allowable under Article 123(2) EPC if as a result of it the skilled person is confronted with technical information which is new in respect of the application as filed.

5. Disclosure of the application as filed

According to the respondent the disclosure of the application as filed with respect to the subject-matter of the claims 1 according to all requests is primarily provided by the two embodiments shown in figures 1, 3 and 2, 4 of the application as filed and described with reference to these figures on pages 2, 3 of that application.

In addition the respondent referred to the following statements of the description of the application as filed:

(i) "The invention has for its object to cause the curved wall of the corresponding box to connect well onto the end walls and provides for this purpose a blank as according to claim 1" (page 1, lines 12 - 15);

(ii) "The blank according to the invention preferably has at least two, and more preferably at least three, curving auxiliary surfaces located at a mutual distance on at least one and preferably two folding edge(s) of one and preferably two curving main surface(s). The number and shape of the curving auxiliary surfaces of a blank according to the invention will depend on the desired curve of the curving wall and on the desired closure of the curving wall relative to the end wall" (page 1, lines 22 - 30),

(iii) "Each curving surface 3, 5 preferably has two opposite folding edges A which are provided with a number of, and preferably three, curving auxiliary surfaces 10, 11, 12" (page 2, lines 14 - 17) and

(iv) "The invention is further elucidated with reference to the following figure description of a number of preferred embodiments of the invention" (page 1, lines 31 - 33) and correspondingly "figures 1 and 2 show preferred embodiments of a blank according to the invention in top view" (page 2, lines 2, 3).

5.1 Concerning the disclosure of the application as filed it is undisputed that figures 1 - 4 are, besides the description, a means of disclosure. In line with the established jurisprudence of the Boards of Appeal (cf. Case Law of the Boards of Appeal, fifth edition, December 2006, III.A.1.3) the Board considers figures 1 - 4 of the application as filed to be an integral part of the documents of the application disclosing the invention.

6. Content of the application as filed

6.1 The Board agrees with the respondent that the content of the application as filed concerns a blank for a box, comprising a curving main surface to be formed into a curved surface when folding the blank into a box, the blank being such that two conflicting requirements are to be reconciled.

According to the first requirement the structure of the blank has to be such that the curved main surface has sufficient flexibility to be easily transformed in the desired curved shape, when the blank is folded into a box.

According to the second requirement the structure of the blank has simultaneously to be such, that each curved main surface connects well onto the end walls of the box (page 1, lines 12 - 15).

In other words the content of the application as filed concerns the structure of a blank of which each curving main surface can easily be formed into the desired curved shape and then be well maintained in this curved shape.

6.2 As explained by the respondent, the basis for fulfilling these requirements is the manner in which a curving main surface, which is to be transformed into a curved form in the folded box, is coupled to curving auxiliary surfaces, by means of which the curving main surface is later maintained in its curved shape within the folded box, with the help of the end surface(s).

This is achieved by curving auxiliary surfaces being coupled to an associated curving main surface, as defined by features a) and b), particularly feature a), of claim 1 of each request, in mutual distance and separated by a cut edge along folding edge A and furthermore in that the curving auxiliary surfaces are arranged along that folding edge in such a manner that the relationship between the lengths of the folding edge A over which the curving auxiliary surfaces are coupled to the curving main surface and the length of the folding edge A existing between adjacent curving auxiliary surfaces (that part of the folding edge being formed as cut edge) is chosen to satisfy certain criteria (in the following: the relationship condition).

According to the relationship condition the relationship between these two types of length portions of the folding edge A has to be chosen such that on the one hand the curving main surface has sufficient flexibility - due to the length and arrangement of the portion of the folding edge A between two curving auxiliary surfaces, formed as cutting edge - to be easily brought and held in the required curved shape. On the other hand the length over which each curving auxiliary surface is coupled to the folding edge A has to be chosen such that it does not oppose the formation of the associated curving main surface into a curved shape and that it allows for the curving main surface, having been bent into its curved shape, to be securely maintained in this shape by means of the associated curving auxiliary surfaces.

This means that for allowing a smooth curve of the curving main surface one would rather not have a curving auxiliary surface intermediate the two curving auxiliary surfaces at the opposite ends of the folding edge in common with the associated curved main surface, but one should provide such an intermediate curving auxiliary surface to maintain the curvature. The above is however difficult to reconcile with the further requirement for the solution of the problem, namely that the curving auxiliary surfaces have to have a sufficiently large area in order to be able to connect well onto end walls of the blank, when the latter is folded into a box. Such large surface areas of the curving auxiliary surfaces would obstruct the curving of the curving main surface in the folded box when resulting in long lengths of the folding edge in common with the curving main surface.

Therefore these coupling lengths should be as short as possible, to allow the curving of the curving main surface and to allow the proper fixation of that surface to the end walls of the box.

6.3 While the Board agrees that feature a) needs to be considered as being of particular importance with respect to the invention disclosed by the application as filed it considers the relationship condition imposed on feature a) as being of equal importance, since without the resulting combination of feature a) with the relationship condition the problem underlying the application as filed (page 1, lines 12 - 15) cannot be considered as being solved by the invention, as explained by the respondent and as disclosed in the application as filed.

7. Subject-matters of the claims 1 of all requests

7.1 Claim 1 according to each request comprises feature a) as referred to above. None of the claims 1 comprises a feature defining that the curving auxiliary surfaces coupled to the folding edge A as defined by feature a) are additionally arranged such that also the relationship condition is fulfilled, when the blank is folded into a box.

Since, as indicated above (sections 6.2 and 6.3), according to the invention disclosed by the application as filed it is indispensable that the relationship condition as imposed on feature a) is met, these claims relate to new subject-matter which is not comprised within the content of the application as filed.

In this connection it also needs to be taken into consideration that according to the content of the application as filed (cf. section 6.3 above) feature a) cannot be considered isolated from the relationship condition, since only then curving auxiliary surfaces are coupled to the folding edge A of an associated curving main surface, in such a way that the conflicting requirements as discussed in sections 6.1 and 6.2 above are reconciled.

7.2 Defining a blank comprising feature a) without the relationship condition imposed on it, as it is the case with respect to the claims 1 according to all requests, leads to a teaching different from the one given by the content of the application as filed.

Seen from a different point of view (in line with an argument of the respondent) feature a), without the imposed relationship condition, needs to be considered as having been taken in isolation from the relationship condition and thus from the invention as disclosed in the application as filed. Introducing feature a) in the claims 1 without that condition thus leads to an amendment of claims 1 according to all requests, which extends beyond the content of the application as filed.

Consequently the subject-matters of the claims 1 according to all requests do not fulfil the requirement of Article 123(2) EPC.

8. The respondent contended with respect to the claims 1 according to all requests, referring to portions i) - iv) of the description (cf. section 5 above), that the disclosure of the application as filed is not limited to the two embodiments shown in figures 1 - 4 and that consequently these claims 1 comprise all features necessary to define subject-matter as disclosed in the application as filed.

8.1 In this respect the respondent argued in particular that according to the description these two embodiments are preferred ones and that it is apparent from of the description as filed (section 5, ii)) that "the number and shape of the curving of the curving auxiliary surfaces of a blank according to the invention will depend on the desired curve of the curving wall and on the desired closure of the curving wall relative to the end wall".

Concerning the before mentioned closure of the curving wall relative to the end wall, the respondent further contended that figures 1 - 4, in particular 3 and 4, show two embodiments in which the closure is particularly advantageous due to the manner in which curving auxiliary surfaces are interwoven with an end wall and an auxiliary end wall (cf. page 3, lines 20 - 26) and that features defining such an advantageous closure need not be comprised in claim 1 of any of the requests.

8.2 The Board agrees, in so far as not every detail of the embodiments shown in figures 1 - 4 needs to be taken into account when considering the disclosure by this figure. It is, however, of the opinion that the relationship condition imposed on feature a) as indicated above (sections 6.2 and 6.3) is, due to its fundamental importance for the invention as disclosed in the application as filed, indispensable for the main claim to satisfy the requirement of Article 123(2) EPC.

The Board also agrees that in a main claim the curving auxiliary surfaces coupled to the folding edge A do not have to be defined in number and shape exactly as disclosed by the two embodiments.

In this respect the Board, however, is also of the opinion that it is indispensable for a definition of the arrangement of curving auxiliary surfaces on the folding edge A of a curving main surface in the main claim, such that it does not extend beyond the content of the application as filed, that besides feature a) also the imposed relationship condition is reflected in this claim.

9. Concerning the argument of the respondent referring to the impugned decision as being correct with regard to the examination of the requirement of Article 123(2) EPC, with respect to claim 1 according to the second auxiliary request, the following needs to be considered.

9.1 According to this decision "The skilled man understands from the application as a whole that the curving auxiliary surfaces and the cut edge(s) along the folding edge (a) cooperate and solve in combination the same problem of providing a regular curvature and a good maintain (sic) of the curving main surface" (Reasons for the Decision, page 4, paragraph "Amendment", No. 1.).

According to the decision under appeal claim 1 according to the main request and the first auxiliary request have been found to extend beyond the content of the application as filed.

Claim 1 according to the second auxiliary request has been found, in the impugned decision, to meet the requirements of Article 123(2) EPC since it "recites the curving auxiliary surfaces and the cut edge in combination" (reasons, page 4, paragraph 2.).

9.2 As can be derived from the reasons given above with respect to feature a) the "combination" referred to in the decision under appeal, which corresponds to only feature a), does not suffice for amended claim 1 to satisfy the requirement of Article 123(2) EPC, since this claim comprises feature a) in isolation from the relationship condition, which according to the disclosure of the application as filed must be met as well.

10. The reasons given above apply directly to the claims 1 according to all requests since all these claims comprise feature a) and since none of these claims has been further amended such that the lack of the relationship condition imposed on feature a) has been sufficiently compensated by other features added to these claims.

10.1 Concerning the arrangement of the curving auxiliary surfaces on the folding edge, the claims 1 according to the sixth, seventh and tenth auxiliary request comprise the additional feature that "a space (13, 14) is provided between the curving auxiliary surfaces which space is bounded by a cut edge". The wording of this feature corresponds to a passage of the description of the application as filed (page 2, lines 17 - 19) and such a space is shown in figures 1 - 4 as being provided within the "confines" of the two curving auxiliary surfaces at two opposite ends of the folding edge. The Board is of the opinion that the argument of the respondent, that the provision of such a space, as shown in the figures, is advantageous, as by means of this space it is avoided that after folding of a box from the blank portions of curving auxiliary surfaces would extend beyond the circumference of the then curved curving main surface, can be followed.

Such a space as shown can, due to its location relative to the folding edge and within the "confines" of the respective curving auxiliary surfaces, have an impact on the relationship condition. However, this space has remained undefined in the claims 1 of these requests. Presently, as a consequence of not being further defined as indicated, the feature as added does not compensate for the lack of the relationship condition as imposed on feature a).

In addition to the feature defining the provision of a space, claim 1 according to the seventh auxiliary request comprises the further feature "the at least one curving main surface is coupled to a peripheral auxiliary surface along substantially the full length of the further straight folding edge, wherein the peripheral auxiliary surface is fixed to one of the flat main surfaces in the corresponding box". This feature does not help in further defining feature a). It concerns a solution to an entirely different, separate problem: how to maintain the box in the form of a tube via the main (curving and flat) surfaces (see paragraph [0015] of the patent in suit. This applies likewise with respect to claim 1 according to the eighth auxiliary request, which, as only additional feature over the features of claim 1 according to the second auxiliary request, comprises the aforementioned feature as well.

10.2 Claim 1 according to the ninth auxiliary request comprises in addition to claim 1 according to the second auxiliary request the following features: "blank comprising auxiliary surfaces and six main surfaces forming the walls of the corresponding box: two curving main surfaces, two flat main surfaces and two main end surfaces forming the substantially flat end walls of the box", "the curving main surfaces are provided with two mutually opposite folding edges (a), wherein each folding edge (a) is coupled to at least one curving auxiliary surface" and "the at least two curving auxiliary surfaces being located at the further straight folding edge (b) between the flat main surface and curving main surface in a mirror-symmetrical pattern relative to the middle of folding edge".

Of these added features only the feature concerning the mirror-symmetrical arrangement of at least two curving auxiliary surfaces concerns the curving auxiliary surfaces. This feature modifies feature b). It does, however, not contribute to feature a) being further defined with respect to the relationship condition imposed on it.

10.3 Claim 1 according to the tenth auxiliary request differs from claim 1 according to the second auxiliary request by the following features: "at least a further intermediate curving auxiliary surface is provided, wherein two adjacent curving auxiliary surfaces enclose a space which is bounded by a cut edge" and by the feature according to which a "space" is provided as has already been considered with respect to the claims 1 according to the sixth and seventh auxiliary request.

For the sake of argument the feature concerning the provision of at least a "further intermediate curving auxiliary surface" has been considered as defining that a further auxiliary curving surface is provided and that this surface is located intermediate of, i.e. between, the at least two curving auxiliary surfaces previously defined in this claim.

Although by these features the arrangement of curving auxiliary surfaces according to feature a) is further defined with regard to the necessary number of such surfaces located on the folding edge A (see point 6.2 above, penultimate paragraph), they fail to further define feature a) with respect to the remainder of the imposed relationship condition (see also the discussion of the sixth, seventh and tenth auxiliary request in point 10.1 above).

Concerning the above finding the argument of the respondent that claim 1 according to the tenth auxiliary request is composed of features of dependent claims of the application as filed bears no significance.

10.4 Summarising it can be concluded that for the reasons given above none of the claims 1 according to the second auxiliary request and the sixth to tenth auxiliary requests can be considered as satisfying the requirements of Article 123(2) EPC for the reason that into all of these claims feature a) has been introduced in isolation from the relationship condition (cf. sections 6.2 and 6.3), imposed on it according to the content of the application as filed.

11. The claims 1 according to all requests not satisfying the requirement of Article 123(2) EPC for the reasons given above, there was no need to further examine whether or not the amended claims satisfy the requirement of Article 84 EPC and whether or not the features added to the claims 1 according to the sixth to tenth auxiliary requests in comparison with claim 1 according to the second auxiliary request - which presently have been regarded exclusively in view of their relationship to feature a) - can, considered by themselves, lead to objections with respect to the requirement of Article 123(2) EPC.

Likewise, the possible amendments proposed by the appellant at the oral proceedings, to overcome deficiencies of the amended claims with respect to Article 84 EPC as brought forward in these proceedings, need not be further considered. Such a proposal concerned in particular claim 1 according to the tenth auxiliary request and involved the deletion of a feature present in claim 1 as maintained by the opposition division. If further pursued also its admissibility would have had to be considered with respect to the principle of reformatio in peius (cf. G 9/92, supra), as in the present case the opponent is the only appellant.