T 0986/04 14-11-2006

Reasons for the Decision

Main request

1. Article 100(c) - admissibility of ground

1.1 In its notice of opposition the opponent objected under Article 100(c) EPC to a number of amendments that had been made to claim 1 during the grant proceedings. The opposition division in a first decision revoking the patent decided that this objection was not justified, but that the subject-matter of claim 1 lacked novelty over D4 (a conflicting application pursuant to Article 54(3) EPC) and lacked inventive step over the teaching of D7 in combination with the teachings of D2, D5 or D6.

1.1.1 The subsequent appeal was dealt with by Board 3.2.04. During those appeal proceedings claim 1 was amended. The Board amongst other matters decided that the amendments made to the claim during the appeal proceedings complied with Article 123(2) and (3) EPC. The Board came to the conclusion that the decision of the opposition division on novelty and inventive step was not justified. The Board nevertheless remitted the case since it came to the conclusion that an alleged prior use, already brought forward in the opposition proceedings, could be more relevant than the document D7 on which the opposition division had partly relied in its decision. In its decision the Board, when explaining the reasons for the remittal (see section 6 of the reasons for the decision), referred only to the prior use.

1.1.2 In the subsequent continuation of the opposition proceedings the ground under Article 100(c) EPC was not mentioned by any party nor was it mentioned in the decision under appeal.

In its response to the appeal the respondent did not mention the ground.

1.1.3 The ground was first mentioned in the present appeal proceedings with the submission of the respondent dated 16 October 2006 (and received by fax on that date). This letter was not copied directly to the appellant by the respondent. According to the statement of the representative of the appellant in the oral proceedings before the present Board, the appellant received a copy of the submission from the Board on 26 October 2006.

1.1.4 In its submission the respondent argued that a part of claim 1, to which no objection had been made in the notice of opposition, was not disclosed in the application as originally filed.

This part of the claim had apparently also not been discussed during the first appeal proceedings as regards its disclosure in the application as originally filed.

1.1.5 The appellant argued that the ground in accordance with Article 100(c) EPC was res judicata in view of the preceding decision T 1116/97 and was a new ground in the appeal proceedings, with the introduction of which it did not agree. Moreover, appellant argued that it was filed too late in the appeal proceedings for it to react, in particular to formulate possible auxiliary requests.

1.2 In the opinion of the Board the ground can only be considered in the present appeal proceedings if it was already in the preceding opposition proceedings since the appellant does not agree with its introduction. In decision G 9/91 (OJ EPO 1993, 408) the Enlarged Board of Appeal explained (see point 18 of the reasons) that the purpose of the appeal procedure is mainly to give the losing party the chance to challenge the decision on its merits. The decision of the opposition division presently under appeal does not deal with Article 100(c) EPC since the opponent has not relied upon this ground in the continued opposition proceedings. In the absence of a reassertion of this ground in the continued opposition proceedings and its consequent absence in the reasoning for the decision presently under appeal the ground cannot be considered to have been in the opposition proceedings leading to the present appeal proceedings and thus is a fresh ground for the present appeal.

1.3 In this respect the question of whether or not the ground was res judicata as a result of the decision T 1116/97 does not play a role since, if it was res judicata it could not have been considered in the continued opposition proceedings and if it was not res judicata then the failure of the opponent to reassert the ground during the continued opposition proceeding meant that the ground must be excluded from the present appeal proceedings unless the appellant permits its inclusion, which is not the case.

1.4 Since the ground is not part of the present appeal proceedings the question of the late filing of the ground does not have to be considered.

2. Inventive step

2.1 The parties both consider that D19 is the nearest documentary prior art and the Board agrees with this view. The subject-matter of claim 1 is distinguished over the disclosure of this document by the features (using the identification letters used by the parties during the proceedings) that:

(i) said first element being operated by sensor means which senses the arrival of each product fed by said second conveyor, and

(k) sensor means for controlling the unwinding of the web of packaging material and for timing the dispensing of adhesive material are associated with said second dispensing element.

2.2 The appellant is of the opinion that also the feature whereby "with the front end of which there are associated, externally, a second conveyor (14) for feeding products (13) one after one onto said web" is not disclosed in D19.

2.2.1 The Board cannot agree with the appellant in this respect. The front end of the conveyor is defined in the claim as being associated with both the external conveyor and the internal folding means. The front end must therefore indicate a region starting at the front and ending at the folding means.

The appellant argued that with respect to the second conveyor a frontal direction was being defined. This argument, however, is inconsistent with the wording of the claim which indicates a region since the boundaries are defined for the front end. Since the front end is defined as a region it does not define a direction. In D19 the products arrive in some undisclosed manner at the station E which is positioned before the folding means. The products therefore arrive at the front end of the first conveyor. The term "conveyor" is not restrictive to any particular type of conveyor but includes any arrangement which conveys. Such an arrangement must be implicitly present in the apparatus according to D19 in order that the products arrive on the conveyor so that the Board concludes that also this feature is disclosed in D19.

2.3 The appellant has argued that the problem to be solved is to provide a more reliable and faster packaging apparatus. However, the appellant has not convincingly demonstrated that the distinguishing features of claim 1 solve the problem of faster packaging. The appellant argued that feeding in the frontal direction allowed faster feeding, but as indicated above the Board does not agree with this interpretation of the claim.

2.4 For feature (i) the Board considers that it would be a normal measure for the skilled person, where adhesive is being applied in relationship to a product, to have a system to check that the product has actually arrived so as to avoid the unnecessary application of the adhesive. To provide a sensor to effect this check is a standard matter. A typical such sensor is a photoelectric cell together with an associated light source.

2.4.1 In the opinion of the Board also the provision of feature (k) in the apparatus known from D19 is obvious to the skilled person. As indicated by the appellant paper is less elastic than plastics film so that the unwinding of paper from a roll has to be controlled. A sensor for controlling the unwinding is a normal measure for the skilled person. It is also known that with paper the presence of adhesive contacting a cutting knife is undesirable since the adhesive can adhere to the cutting knife which is detrimental to its cutting effect. It is clear to the skilled person that to avoid this contamination the application of the longitudinally applied adhesive must be interrupted in the area of the package which is to be cut. This requires a timer and a means of controlling the timer. A sensor is a standard means of effecting this, whereby the Board notes that this feature of the claim does not indicate what is being sensed or where it is sensed.

2.4.2 The features (i) and (k) may thus increase the reliability of the apparatus but nevertheless are obvious measures for the skilled person to achieve that goal. It is not apparent how these features can increase the processing speed of the apparatus.

2.5 Therefore, the subject-matter of claim 1 of the main request does not involve an inventive step in the sense of Article 56 EPC.

Second auxiliary request

3. Admissibility of the amendments

3.1 In accordance with a first amendment to claim 1 of this request the wording "downstream the feeding of the products" has been added to the definition of the position of the second adhesive element.

This feature may be derived from the drawings as originally filed and from the fact, as mentioned in column 3, lines 1 to 4, of the patent specification (which has a counterpart in the application as filed), that the adhesive material must be kept hot and hence will be applied shortly before the folding takes place, which is downstream of the feeding of the products.

3.2 According to a second amendment to claim 1 of this request the following wording has been added: "said first adhesive application element (22, 40) is provided down stream (sic) of said roll (18), upstream the feeding of the products (13) on the first conveyor (16)".

This feature is based on figures 2 and 4 and the description in column 3, lines 13 to 15, of the patent specification (which have counterparts in the application as filed). In this part of the description it is indicated that the sealing apparatus is positioned between the roll and the folding means. In the figures there are shown two embodiments of the application elements which are each positioned upstream of the feeding of the products onto the first conveyor. The skilled person would thus understand that the first application element should preferably be provided downstream of the roll and upstream of the feeding of the products onto the first conveyor.

3.3 According to a third amendment to claim 1 of this request the following wording has been added: "said first conveyor (16) and said second conveyor (14) move in the same direction, the delivery end of the conveyor (14) being frontally connected to the front end of the first conveyor (16)".

Figures 1 and 2 of the drawings clearly show a pusher-type second conveyor 14 delivering products frontally to the belt-type first conveyor 16 with the two conveyors moving in the same direction. This is indeed what the skilled person would expect since this is the normal way of linking conveyors and passing products therebetween.

3.4 The Board therefore concludes that the amendments to claim 1 of this request satisfy the requirements of Article 123(2) and (3) EPC.

4. Inventive step considering undisputed prior art

4.1 Compared to claim 1 of the main request the extra features of claim 1 of this request whereby the first adhesive application element is provided downstream of the roll and upstream of the feeding of the products on the first conveyor, and the first conveyor and the second conveyor move in the same direction with the delivery end of the second conveyor being frontally connected to the front end of the first conveyor, solve the problem of increasing the speed of the adhesive applying apparatus.

In D19 the products to be placed on the web had to be placed either from above or from the side. This meant that there was a change in the direction of movement of the products which, because of their inertia, would limit the speeds that could be achieved by the conveyor. By arranging the delivery of the products from a conveyor delivering frontally and moving in the same direction an increase in the speed of the conveyors can be achieved as there is no change in the direction of movement of the products and hence no problem with the inertia of the products.

This solution is not obvious to the person skilled in the art. In D19 the web is flat and the adhesive is applied first, transversely and longitudinally. This is followed by feeding the products between the strips of adhesive already applied. To provide a frontal feed would immediately produce a problem of how to apply the transverse adhesive lines such that the products can be placed between them. The skilled person would thus be prejudiced against this solution. The extra features of the claim not only mean that the products are fed frontally but also that the glue is applied before this point, i.e. below the first conveyor. There is nothing in the undisputed prior art to suggest this arrangement.

In the apparatus disclosed in D7 there is a frontal feed of products but that takes place with a plastics film. In this case the transverse seal is effected after folding together with the cutting step, wherein a hot sealing bar is applied to the cut ends of the plastics film. This document therefore gives no help to solving the problem for a paper web since its sealing method is different to that of the apparatus of D19 and it takes place at a different stage in the process.

4.2 The Board concludes therefore that the subject-matter of claim 1 of this request involves an inventive step in view of the undisputed prior art.

5. Request for remittal to the department of first instance

5.1 In the first opposition proceedings the opposition division did not hear the offered witnesses since it found that claim 1 of the then main request lacked both novelty and an inventive step in view of the prior art documents. On appeal, the previous Board ordered the remittal to the department of first instance since it considered that the prior art documents did not take away the novelty or inventive step of claim 1 of the main request before that Board, but that the alleged prior uses could be more relevant than the nearest prior art document which was then considered to be D7. During the continued opposition proceedings D19 was introduced into the proceedings and was considered by the opposition division to be more relevant than D7. In these continued proceedings the opposition division again did not hear the offered witnesses since it found that claim 1 of the then main request lacked an inventive step in view of the prior art documents, in particular taking account of D19.

In the course of the continued proceedings the respondent arranged for the witnesses to be heard by a Dutch court and filed the transcripts of this hearing. As part of its response to the appeal the respondent has requested that the case be remitted to the department of first instance to hear the witnesses. The request was reiterated in the oral proceedings before the Board after claim 1 of the second auxiliary request was found by the Board to involve an inventive step based on the undisputed prior art documents.

5.2 Before the Board remits a case, however, it must be satisfied that the alleged prior uses are more relevant than the prior art documents already in the proceedings since otherwise the remittal will simply waste time without changing the outcome of the proceedings. There are two particular matters which could affect the relevancy question in the present case. The first matter is whether or not the prior use is to be considered as confidential. The second matter is whether the content of the prior use is more relevant than the undisputed prior art documents.

In the view of the Board, even if the prior use were considered not to be confidential it still would not be more relevant.

5.3 It appears that during 1991 and before the priority date of the patent in suit, which is 5 August 1991, there was a desire expressed to the respondent for a packaging machine which could form paper packages for magazine mailings instead of the then standard plastics film packages. Attempts were therefore made by the respondent to modify its existing machine to work with a paper web.

The first witness heard by the Dutch District Court was Mr O. Bruinsma who was managing director of a company which was a customer of the respondent. Mr Bruinsma could remember little of the technical details of the discussions held at the time. Also, in his testimony (cf. D20a) there are parts which are nothing more than his views on what was needed to be done to modify the machine. Such considerations, however, do not form part of the actual object of the alleged prior use.

The next witness was Mr W. Otten (cf. D20a) who was an employee of Walcom which was a company which manufactured adhesive applicators. He mentions a meeting on 18 July 1991 with employees of the respondent at the premises of the respondent. According to him there was a discussion regarding the type and placing of the adhesive applicator. He referred also to a subsequent meeting with employees of the respondent on 1 August 1991 at the premises of his employer. He could not remember details of this meeting.

The next witness is Mr Endeveld (cf. D21a) who was an employee of a customer of the respondent. However, he could remember no technical details of tests at which he was present.

The last witness is Mr R. Tuijn (cf. D21a) who was an employee of the respondent. He was only able to remember a demonstration at Walcom on the morning of 1 August 1991. The demonstration was that of unwinding and winding paper and applying a glue pattern between these actions. The demonstration was a success. He indicated that a provisional construction was made but without indicating a date for this, and that the first prototype was shown in the autumn. He considered that the discussions were confidential.

5.4 In the view of the Board the witness testimonies show that even if the prior use was considered not to be confidential it still would not be relevant in view of its content. The witnesses did not indicate a specific apparatus which was constructed before the priority date and for which they could give constructional details. The Board concludes that the alleged prior uses would not therefore be more relevant than the other documents on file.

5.5 The Board therefore decided not to remit the case to the department of first instance.

6. Inventive step taking account of all prior art in the proceedings

6.1 Although the Board decided not to remit the case to the department of first instance for the reasons explained above there exist in the proceedings documents, beyond the undisputed documents already dealt with above (see point 4), relating to the alleged prior uses, as well as brochures and the testimonies of the witnesses before the Dutch District Court. These documents and testimonies are in the proceedings and hence are available to the respondent to use in its argumentation. It must therefore be considered as to whether on the basis of all the documents and testimonies in the proceedings the subject-matter of claim 1 of this request involves an inventive step.

6.2 The respondent has particularly relied on D22 and D23 as well as the testimonies of the witnesses in D20a and D21a. The appellant disputes the public availability of D22 and D23. The availability to the public of these documents would have to be considered further if it were concluded that their content would affect the decision on inventive step.

6.3 Two particular demonstrations of apparatus have been discussed in the statements and testimonies of the witnesses. These, however, are imprecise regarding the exact nature of the apparatus that were allegedly used. In this respect the witness testimonies/statements contain not only information about the actual apparatus but also information about how the witness thought that the apparatus should be.

First of all Mr Bruinsma explains that the machine called the Enveloper was a development of the Polywrap machine using a paper web and gluing, in place of a plastics film. In his explanation of the positioning of the gluing he makes references to the positioning of the glue applicators in a manner in which it is not clear if he is describing an actual apparatus. He uses in his testimony terminology such as "it was clear to me …"; "I cannot recall if that was clear to Huub Endeveld at the time."; "On the top of the machine there was, to my mind, too little space."; "Timing in the Enveloper, I believe, …". These statements, which are made on page 4 of D20a, third full paragraph, concern the situation before 5 August 1991, which is the priority date of the patent in suit. There is thus a clear doubt as to what exactly were the technical features of any apparatus then constructed.

In his testimony Mr Otten from Walcom states that in his agenda he can only locate tests held on 12 August 1991, but allows himself to be corrected to 1 August 1991 by Mr Hendriks, (see D20a, page 6, first five lines). He then states that the Walcom machines were presumably attached to the Buhrs machines in the weeks which followed. This would mean that there was no Buhrs machine, e.g. a Polywrap machine, having a Walcom glue applicator, before the priority date of the patent in suit.

Mr Endeveld can only remember seeing a machine running at Buhrs in the summer of 1991. He did not know any relevant technical details (cf. D21a page 3, first full paragraph). There was a demonstration at Walcom on the morning of 1 August 1991, just four days before the priority date of the patent in suit. This was apparently simply a gluing demonstration using a Walcom glue applicator (cf. D21a, testimony of Mr Tuijn, page 6 and D27, point 8).

According to the testimony of Mr Tuijn, in June 1991 there had been a test on a Polywrap machine with a paper web which had functioned giving rise to a need to investigate various problems including gluing. Mr Tuijn spoke to glue equipment manufacturers in July 1991. The first prototype of the "Enveloper" was shown at a fair in the autumn, i.e. after the priority date of the patent in suit. There is thus no indication of the constructional details of any apparatus which included glue applicators and which was constructed before the priority date of the patent in suite.

In the case of the later statement of Mr Tuijn dated 21 September 2006 (D27) the statement includes an indication by Mr Tuijn as to whether the features of claims of the main and auxiliary requests were present in a particular machine. Such a manner of making a statement is similar to putting inadmissible leading questions to a witness. Moreover, such a statement amounts to an interpretation of the scope of the claims by the witness making the statement. The purpose of a witness however, is to help to establish the facts not to interpret the claims. This manner of setting out the statement leaves it uncertain as to what are the facts being witnessed and what are interpretations of the claim. The statement therefore has little value with regard to establishing the facts.

6.4 The respondent has also relied upon D13 and D14. These documents are invoices which are intended to show that a Polywrap mailing system was sold along with a side sealing kit including a hot melt glue unit. However, there is no indication of the constructional details of the finally installed apparatus. Only side sealing is mentioned and the positioning of this kit in the constructed apparatus is not indicated in the invoices. As argued by the appellant, the gluing kit could have been employed outside of the Polywrap apparatus. These documents cannot therefore prove the actual constructional features of the apparatus as finally constructed.

6.5 The respondent further argued that when adapting the Polywrap machine shown in D23 for use with paper it would be obvious to arrange for a glue applicator to apply the glue transversely to the paper web before the products are placed thereupon. There is, however, no support for this assertion. The skilled person knows that to adapt the Polywrap machine to a paper web it is necessary to apply glue. The skilled person does not, however, have any indication to apply the glue as specified in claim 1 of the request under discussion.

6.6 The Board concludes therefore that the subject-matter of claim 1 of this request involves an inventive step also in view of all the prior art and testimonies in the proceedings.

7. Request to show a slide presentation (PowerPoint®)

7.1 During the oral proceeding before the opposition division there had been a slide presentation. Copies of the slides shown in that presentation were filed by the appellant with its response to the appeal dated 25 April 2005. One day before the oral proceedings before the Board the respondent requested that a screen be present in the hearing room for a slide presentation, without indicating the content of the intended presentation.

Upon questioning by the Board at the beginning of the oral proceedings the respondent indicated that the presentation was more extensive than that already shown during the oral proceedings before the opposition division, including thirty four new slides containing argumentation.

7.2 In the view of the Board the showing of the new slides would give the respondent an unwarranted advantage since it would have available a visualisation of its arguments which was not available to the appellant. The Board therefore did not allow the presentation of these slides.

The slides (D28) shown before the opposition division and filed with the response to the appeal consist mainly of illustrating the wording of the claim by positioning it at the side of the relevant parts of the drawings of the nearest documentary prior art D19. The Board saw no objection to this content which indeed facilitates the discussion also for the appellant. The Board therefore allowed the showing of these slides, particularly taking account of the fact that they had been filed beforehand so that the appellant was not taken by surprise with their content.