T 2254/08 11-02-2010

Reasons for the Decision

1. Documents open to file inspection

1.1 With its grounds of appeal appellant/opponent I filed D14 which is a document concerning a global offering of shares in Guala Closures S.p.A. The document is marked as confidential on its front page. Appellant/opponent I also gave the internet address of the website from which it obtained the document. The address given by appellant/opponent I turned out to have an error in it.

In its response to the appeal of appellant/opponent I the appellant/proprietor requested that D14 be removed from the proceedings, that it be excluded from file inspection, and that all references thereto be deleted from the file, since it considered that it was a confidential document that should not be made available to the public.

Appellant/opponent I thereupon corrected the internet address of the website and filed a confirmation from a public notary that he had accessed the website via the internet and was able to print out documents D14 and the full version of D15a which is in the Italian language and part of which corresponds essentially to D14.

The Board itself accessed the website at the corrected address and found that it could view the document D14 and print out a copy thereof.

The availability of D14 and D15a to an unrestricted public is not therefore in doubt. D15b is an excerpt from a document alleged by appellant/opponent I to be the English version of D15a. Proof of this allegation was not supplied by appellant/opponent I and it is not necessary to consider this document further in the present decision since its content is covered by D14 and D15a.

1.2 Article 128 EPC governs file inspection. Paragraph (4) of the article indicates that the inspection may be subject to restrictions laid down in the Implementing Regulations and Rule 144 EPC sets out these restrictions. The documents mentioned above do not fall under any of the categories set out in Rule 144 paragraphs (a) to (c) EPC so that it must be considered whether they could fall under paragraph (d) of this rule. Paragraph (d) indicates that the President of the European Patent Office may exclude from file inspection other documents which do not serve the purpose of informing the public about the European patent application or the European patent. Furthermore, in the Decision of the President of the European Patent Office dated 12 July 2007 (OJ 2007, Special edition 3, 125) regarding Rule 144(d) EPC it is stated in Article 1(2)(a) that a document shall be excluded from file inspection at the request of a party if the inspection could be prejudicial to the legitimate personal or economic interests of legal or natural persons.

1.3 It is established that the documents were accessible to the public irrespective of any confidentiality statement on the document itself. Since the documents have been available to the public by one means, i.e. the internet, the economic interest of the appellant/proprietor cannot be affected by its being available by another means, i.e. file inspection. The documents are also relevant to the proceedings since they constitute evidence related to an alleged public prior use of a possibly relevant device. The documents therefore do not fall into the category set out in paragraph (d) of Rule 144 EPC so that there is no reason to exclude them from file inspection.

1.4 In accordance with Article 1(3) of said Decision of the President a document covered by Article 1(2)(a) thereof shall be provisionally excluded from file inspection until a final decision on the request has been taken. The provisional exclusion had been effected in the present case. The Board has now come to the conclusion that there is no basis for the exclusion from file inspection so that it can now take a final decision lifting the exclusion.

1.5 Also, the request of the appellant/proprietor that the documents be removed from the proceedings and references thereto deleted is refused. As explained above the documents are in the public domain so that there is no reason for any such action, irrespective of whether or not the European Patent Convention would even allow such actions.

2. Prior use

2.1 The alleged prior use is based on D14, D15a and D15b as evidence that a closure assembly under the name "Alusnap" was launched or put on the market, i.e. at least offered for sale, before the priority date of the patent in suit. It is only necessary to discuss D14 as will become apparent below. D14 is a document dated November 2005 supporting an offer for the sale of shares in a company which has the name Guala Closures S.p.A.

In a table on page 71 of D14 a launch date of 2001 is indicated for a closure with the name "Alusnap". There is also a reference on this page to "Alusnap" being patent protected. The said table indicates the number of components in "Alusnap" as 6. On page 72 of the document there is a diagram of the closure.

In the patent in suit it is stated in column 2, lines 45 to 46 that "The Applicant has named the device of the invention "ALUSNAP" (Trade Mark)".

2.2 As part of the evaluation of the alleged prior use it must be considered what may have been prior used, i.e. what are the technical features of any prior used device. D14 has on page 72 a diagram of an "Alusnap closure". If this diagram is to be considered as evidence of the features of the prior used closure then it must be proven that the prior used closure is identical to that shown in this diagram.

Apart from the name "Alusnap" there is no link between the diagram on page 72 of D14 and the allegedly prior used closure. "Alusnap" is a trade mark (see column 2, lines 45 to 47 of the patent in suit). A trade mark is used to indicate the origin of goods or services and is not normally considered to be an indication of the technical features of a device with which it is associated. It is moreover normal for improvements to be made to a device without however changing its name or trade mark. In the present case both D1 (see page 3, lines 2 and 3) and the patent in suit (see above) indicate that the device disclosed therein is named "Alusnap", even though these documents disclose different devices. There is thus evidence that in the case of "Alusnap" the same name has been used for closures having differing technical features. It must therefore be concluded that this trade mark is not one which exceptionally could be considered to uniquely define the technical features of device with which it is associated.

In this respect the Board notes that the number of components of the device is given as six in the said table in D14 whereas the number of components in the devices according to the patent in suit and D1 could be considered to be different due to the first and second outer sleeves being separate in the device according to the patent in suit. Appellant/opponent I and respondent III gave differing answers concerning the number of components in the device according to D1. The Board concludes therefore that also this information given in D14 does not allow the device to be identified.

There is hence no evidence as to the technical features of the closure that is stated to have been launched in 2001. The closure could, for instance, have corresponded to the one disclosed in D4 which has the same applicant as for D1, or it could have been a still further closure having quite different features.

Not only is there no evidence that "Alusnap" is a unique name for a particular form of closure, there is evidence that it specifically is used for closures having varying technical features.

2.3 In this respect the Board also notes that it does not necessarily accept that the reference to a "launch date" in D14 or the other evidence relating to the circumstances and date of the alleged prior use is sufficient to prove that a prior use actually has taken place. The Board does not have to consider these matters since, as explained above, it does not consider that what might have been prior used has been proven.

2.4 The Board concludes therefore that the technical features of the allegedly prior used closure have not been proven.

Main request

3. Novelty

3.1 Appellant/opponent I and respondent III argued that D1 and D2 each took away the novelty of the subject-matter of claim 1.

3.2 Claim 1 of this request requires that that there is a second outer sleeve "separate from the first outer sleeve". D1 discloses first and second outer sleeve portions 10, 15. The first outer sleeve portion 10 is associated with the second outer sleeve portion 15 by means of a frangible portion 20 in the form of frangible links therebetween (see page 9, lines 24 to 26, and claim 1 of D1).

Appellant/opponent I argued that the skilled person would consider figure 4 of D1 as a stand-alone disclosure and conclude that the two portions 10, 15 must be separate since they are indicated with different reference numerals.

The Board cannot accept that the disclosure of the figures can be divorced from their description. In any case the separate indication of the portions does not have to mean that the portions are physically separate since the separate indication is consistent with the portions being connected by frangible links so that they will later become separate once these links are broken as is indicated in the description. The Board concludes therefore that the only disclosure in this respect in D1 is of two outer sleeve portions connected by frangible links.

Appellant/opponent I and respondent III both argued that the term "separate" as used in claim 1 of the request does not have to include physical separation. They argued that the breakable bridges of the device disclosed in D1 served to separate the two portions.

The Board cannot agree with appellant/opponent I and respondent III in this respect. The term "separate" normally means that the two portions are not connected, in particular not physically connected. This view is confirmed in the description of the patent, wherein in column 15, lines 51 to 58, it is stated that the term separate means that the portions are not connected together and in particular are not connected by a frangible break line. A frangible portion is one which connects two parts, but which is weaker than these parts such that the portion can be easily destroyed to separate the parts. Since the purpose of the frangible portion is to allow easy separation of the parts it cannot reasonably be argued that the parts were already separate even before the links were broken.

Therefore D1 does not disclose all the features of the assembly of claim 1 of this request.

3.3 With respect to D2 it was disputed by the appellant/proprietor that this document showed a first outer sleeve coaxially mounted over an inner sleeve that is provided with means for fixing it on the container and further that there is a second outer sleeve which is separate from the first outer sleeve and is a "substantially tight fit with a container closure member" as required by claim 1.

3.3.1 In D2 there is a band 32 which forms a first outer sleeve. This band is mounted over a tubular member 4 which has a portion thereof adjacent the band. This portion extends axially and thus forms a sleeve over which the band is mounted.

The claim further specifies that there are means for fixing the sleeve on the container. In the device disclosed in D2 the tubular member 4 is fixed on the container by this band 32 which also fixes the portion which forms a sleeve on the container so that there is a means for fixing the sleeve on the container.

3.3.2 It is not disclosed in D2 that the second outer sleeve is a "substantially tight fit" with the container closure member.

A "tight fit" implies that the second outer sleeve must be elastically deformed such that it exerts a pressure on the closure member. This pressure then leads to friction between the two bodies which inhibits relative movement therebetween. The qualification of the tight fit by the term "substantially" implies that the fit is not necessarily such as to exclude all relative movement, e.g. when a substantial force is exerted so that the friction is overcome.

In the device disclosed in D2 the stopper cover 39 corresponds to the second outer sleeve specified in the claim and the stopper 18 corresponds to the closure member specified in the claim. The stopper cover 39 is retained axially on the stopper by snap-engagement of interacting annular projections 40 and 41 (see page 2, lines 38 to 42) and rotationally by interacting teeth 42 and 43 (see page 2, lines 43 to 49). When retention is effected by interacting projections or teeth this retention is based on their shape or form. There is no need for any frictional interaction and hence no need for a tight fit. There is in fact no indication in the document that there is a tight fit.

Respondent III argued that a tight fit is visible in figure 8 of the document. Figure 8 does show part of the stopper cover 39 in contact with the stopper 18. However, there is nothing to indicate that the contact shown in the figure is of the type which would form a substantially tight fit. Figure 8 is an enlarged view of a detail of figure 7 (see page 1, lines 70, 71). In figure 7 the corresponding parts are clearly shown to be separated and not to be in contact. Moreover, it is to be expected that they are separated since they are kept apart by the presence of annular projections 40 and 41 which are on the inside of the stopper cover 39 and the outside of the stopper 18 respectively. The Board cannot agree therefore that the stopper cover is disclosed in D2 to be a substantially tight fit on the stopper.

The Board concludes therefore that the feature of claim 1 that the second outer sleeve is a substantially tight fit with the container closure member is not disclosed in D2.

3.4 Therefore, the subject-matter of claim 1 of this request is novel in the sense of Article 54 EPC.

4. Inventive step

4.1 Appellant/opponent I and respondent III principally argue taking D4 as the closest prior art document.

Starting from this document the assembly of claim 1 is distinguished by the features that:

(a) the second outer sleeve is separate from the first outer sleeve, and

(b) means are provided for spacing apart the initially adjacent portions of the first and second outer sleeves upon reclosure of the assembly after an initial opening of the container.

This was the view of the appellant/proprietor.

The appellant/opponent I and respondent III also agreed that feature (b) is not disclosed in D4. They considered however that feature (a) is disclosed in D4 because the first and second outer sleeves are disclosed as being connected by a frangible portion which they considered implies that they are separate. The Board does not accept this argument for the same reasons as it did not accept it with respect to the disclosure of D1 in assessing novelty (see point 4.2 above).

4.2 The problem to be solved is to facilitate the opening of the closure assembly and to improve the visibility of the evidence that it has been already opened. The fact that the first and second outer sleeves are separate means that there is no frangible portion which needs to be broken so that opening is facilitated. The spacing apart of the sleeves after reclosure is more easily visible than broken frangible connections since underlying parts of the closure assembly that were hidden by the sleeves before opening will be visible after reclosing. With the frangible connections it could be reclosed such that the broken parts of the frangible connections are realigned. In this realigned position these parts could look as if they are still connected. This negative aspect of frangible connections is no longer present.

4.3 Appellant/opponent I and respondent III argued that the skilled person seeking solutions to these problems would find them in D2.

In the device according to D2 two forms of evidence of opening are provided. The first form comprises a frangible ring 49 which produces a noise on breaking. The second form comprises means for spacing apart the initially adjacent portions of the first and second outer sleeves upon reclosure of the assembly after an initial opening of the assembly. These means are in the form of the annular lip 35 of band 32 and the projection 26 of the skirt 20 of the stopper cap 18. The projection 26 lies radially inwardly of the lip before initial opening (see figure 8), but after the initial opening the opposing surfaces of the projection and lip abut axially (see figure 9) preventing them from returning to their initial overlapping positions. The stopper cover 39 is now held at a distance from the band 32, whereas before opening they were adjacent each other. The gap which is so formed is readily visible and is accentuated by a colour difference between the stopper, which is visible through the gap, and the stopper cover (see page 2, lines 33 to 37 and 126 to 130).

The skilled person is thus taught by D2 that a means for spacing apart the initially adjacent portions of the first and second outer sleeves upon reclosure of the assembly after an initial opening of the container gives a more visible evidence of tampering. It is clear from D2 that the two forms of evidence of tampering are provided independently since their constructions are independent of each other and the types of evidence are different, i.e. acoustic and visible. The skilled person would therefore realise that he could provide the visible form of evidence without necessarily also providing the acoustic form.

The tamper-evidence means disclosed in D4 is also of the visible type so that the skilled person would replace this with the more visible tamper-evidence means taught in D2. This would mean the replacement of the frangible portion of the device of D4 with an arrangement whereby the cap 280 of D4 is arranged to be positioned radially inwardly of the outer sleeve 310 under spring tension so that after initial opening the lower lip of the cap would abut the upper lip of the outer sleeve 310 ensuring that the cap 280 is spaced apart from outer sleeve 310. There is clearly no difficulty for the skilled person to do this. Also, when the frangible portion as evidence of tampering is replaced by other visible tamper-evidence means there will be no need to have an initial connection between the outer sleeve and the cap so that these elements may be provided separately. There is no prejudice against such a separate arrangement of the outer sleeve and cap as this is also provided in the device of D13, as pointed out by both appellant/opponent I and respondent III.

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

First, second, third and fourth auxiliary requests

5. Inventive step

5.1 Claim 13 of the first auxiliary request, claim 13 of the second auxiliary request, claim 1 of the third auxiliary request, and claim 1 of the fourth auxiliary request all have the same wording.

These claims specify a method of manufacturing a closure assembly having the same features as the closure assembly of claim 1 of the main request which has been found to be obvious (see point 4.4 above). It must therefore be considered whether the method steps specified for manufacturing the closure assembly are obvious for the skilled person in combination with the features of the device being manufactured.

5.2 Step (a) of the claimed method comprises providing an outer sleeve member. This feature is implicitly required for the closure assembly disclosed in D4 since that closure assembly has an outer sleeve member 310, 330. Since method step (a) is disclosed in D4 which has been taken as the nearest prior art document with respect to claim 1 of the main request it cannot contribute to the presence of an inventive step in the subject-matter of the claims under consideration.

5.3 Step (b) comprises providing a pouring outlet device and the sleeve adapted to be secured to a mouth and neck portion of a container for liquid and the container closure member releasably securable to the pouring outlet device and/or sleeve. In the assembly known from D4 the sleeve 20 includes a pouring device (see page 11, lines 25 to 26). The cap 280 of the device is releasably secured to the sleeve 20 (see page 15, lines 17 to 19). The constructional features of the closure assembly specified in this feature are thus known from D4 and do not therefore contribute to the presence of an inventive step. The method step of providing the pouring outlet device is also implicitly disclosed in the document since the pouring outlet device disclosed in the assembly of D4 must have been provided. Therefore, also this step cannot contribute to the presence of an inventive step in the subject-matter of the claims under consideration.

5.4 Step (c) comprises disposing the pouring outlet device, sleeve and container closure member at least partly within the outer sleeve member. In the assembly known from D4 the pouring outlet device 55, sleeve 20 and container closure member 280 are at least partly within the outer sleeve member 310, 320 and hence must have been disposed into this location. Therefore, also this step cannot contribute to the presence of an inventive step in the subject-matter of the claims under consideration.

5.5 Step (d) comprises forming the outer sleeve member into the first outer sleeve and the separate second outer sleeve, by providing a circumferentially cut line which extends 360º around the closure assembly.

This feature is not disclosed in any of the cited documents. However, as argued by appellant/opponent I and respondent III it is clear to the skilled person that for a pair of tubular components which are to be fitted close together one manner of making them is first to form a tube and then cut it to form the components. The appellant/proprietor did not indicate any unexpected advantage arising from providing this feature in the particular circumstances.

The appellant/proprietor argued that operations such as this could not be carried out with the device disclosed in D2 since its form could not result from a simple circumferential cut.

It overlooks, however, the fact that the skilled person would not take the whole construction of D2 and incorporate it in the assembly of D4. As already explained with respect to the main request (see point 4.3 above) when applying the teaching of D2 to the assembly as disclosed in D4 the skilled person would take the essential feature which leads to the greater evidence of tampering, i.e. the spacing apart of the two outer sleeves after initial opening, and incorporate this in the device disclosed in D4. The skilled person is then faced with the problem of providing the two parts 310 and 320 of D4 as separate entities since the frangible connection provided in the device of D4 is no longer necessary or desirable. There is nothing to suggest that first forming a suitable sleeve and then cutting it would not be an acceptable possibility to achieve this result.

5.6 Therefore, the subject-matter of each of claim 13 of the first auxiliary request, claim 13 of the second auxiliary request, claim 1 of the third auxiliary request, and claim 1 of the fourth auxiliary request, does not involve an inventive step in the sense of Article 56 EPC.

5.7 As a consequence none of these requests is allowable and the appeal of the appellant/proprietor must therefore be dismissed.

Fifth auxiliary request (claims as maintained with the impugned decision)

6. Inventive step

6.1 The only independent claim of this request is claim 1 which includes, in comparison to claim 1 of the main request, the additional features whereby the container closure member includes a circumferential groove which further provides a circumferential lip portion located below and adjacent to the circumferential groove, in which the initially adjacent portions comprise adjacent respective circumferential edges of the first and second outer sleeves, wherein the first and second circumferential edges are, prior to initial opening, located in the circumferential groove substantially adjacent one another.

6.2 According to the appellant/proprietor the problem to be solved by these additional features is to provide a support for the adjacent circumferential edges of the first and second outer sleeves when they are being formed by cutting an initially unitary outer sleeve into two separate parts.

The Board agrees that this is the problem to be solved and that it actually is solved by these features. It is evident that as a cutting edge of a cutting implement presses radially inwardly on the initially unitary outer sleeve in the act of forming the first and second outer sleeves it will deform the sleeve inwardly so that the sleeve is supported by the respective sidewalls of the groove. This support will enable a straighter and cleaner edge to be formed since it will naturally follow the groove. The argument of the appellant/opponent I that there is no effect from the features is therefore not correct.

6.3 Appellant/opponent I argued that the skilled person would take into consideration D5 in this respect. In the device known from D5 the circumferential lips of sleeve 11 and outer cap 4, i.e. the first and second outer sleeves, are located adjacent one another. The inner cap 5 has a collar 30 (see figure 2) formed by a thickening on the outside of the lip of the cap. Appellant/opponent I argues that the transition area from this collar to the rest of the inner cap forms a recess and that a recess is a form of groove.

The Board cannot agree with the arguments of appellant/opponent I in this respect. Whether or not the collar 30 forms a recess is not relevant just as it is not relevant whether a recess can be termed a groove. What is relevant is whether D5 discloses a groove, in particular whether the transitional area from the collar 30 to the rest of the inner cap can be considered to form a groove. Taking into consideration both its form and function the transitional area cannot be considered to constitute a groove.

A groove is normally an elongate depression in a surface which thereby forms two sidewalls. The collar 30 could be considered to form one sidewall. There is, however, no second sidewall so that from its form it cannot be considered to be that of a groove.

It also cannot function as a groove. The two sidewalls of a groove allow an object or objects to be located and kept within the groove, e.g. the circumferential edges of the first and second sleeves, which is not the case if there is only one sidewall. This locating possibility also means that there is a functional effect since the location between the sidewalls allows the sidewalls to interact with the circumferential edges. In the case of the device disclosed in D5 the collar 30 is not intended to provide the function of a groove, but rather it is provided so that it can interact with a recess 31 formed in the sleeve 11. Thus, the transition area adjacent the collar 30 of the device known D5 also cannot functionally be considered to act as a groove. It would also not supply the effects of the second sidewall which can support the edge of the sleeve during a cutting operation.

6.4 Respondent III argued that this feature is disclosed in D2. In particular, it argued that a groove is present in the device of the embodiment of figures 7 to 10 in the space formed between the skirt 20 of stopper cap 18 and the lower circumferential edge and the bevel 44 of the stopper cover 39. Respondent III further argued that the circumferential edge 37 of the first sleeve, i.e. band 32, is located in the groove, as is shown in particular in figure 8 and that the circumferential edge of the second sleeve, i.e. stopper cover 39, is located in the groove because it forms part of the groove and thus by definition is located in the groove. Respondent III furthermore pointed out that these circumferential edges are located adjacent one another.

The Board cannot agree with this argument. The circumferential edge of the stopper cover cannot simultaneously form approximately half of the groove and at the same time be considered to be located in the thus formed groove. A location in a groove implies being within the sidewalls of the groove. A sidewall cannot itself be within the sidewalls.

6.5 Therefore, the subject-matter of claim 1 of the fifth auxiliary request, i.e. the patent as maintained in accordance with the decision of the opposition division, involves an inventive step in the sense of Article 56 EPC.

6.6 The fifth auxiliary request is therefore allowable so that the appeal of the appellant/opponent I must be dismissed.