T 0523/89 01-08-1990

1. The appeal is admissible.

2. Document D1 relates to containers having a generally frustoconical form and is particularly concerned with the problem that when such containers are stacked together they may be difficult to separate from each other, which is particularly disadvantageous in automatic machinery for filling the containers with product.

In a reference to the prior art it is stated that known cups or containers of this form are provided at their open upper end with a folded-over collar, the bottom edge of which engages the upper end of the next lower container in the stack and thereby prevents the frustoconical walls of the containers from coming into close contact. This solution is not however suitable for container materials, such as paper, where the collar cannot be given sufficient rigidity.

To solve this problem it is proposed to close and seal the narrower bottom end of the tubular body of the container by flattening it and adhesively securing together the flattened sides. When stacked together these flattened bottom parts due to their form are effective to prevent significant contact between the frustoconical walls of adjacent containers.

It is already apparent from the introductory description, not least the mention therein of cups, that D1 is concerned in general terms with the same basic type of container to which the contested patent relates, that is a container which is intended to be held in the hand and out of which a liquid or pasty product may be consumed. The Appellants do not dispute this in any way. In fact they have specifically stated in the opposition proceedings that in their opinion the container shown in D1 is of the type available in the USA as throw-away cups at water dispensing machines. This opinion may be questionable having regard to the mention in D1 of automatic filling machinery but nevertheless confirms the view expressed above of the basic nature of the container of D1.

This being the case it is also apparent that the flattened bottom part constitutes a stiffened part that may be gripped in the hand of the user of the container, it being stiffer than the tubular body of the container by virtue of its double thickness. The stiffened grip part of the container according to the contested patent is formed in identical fashion.

D1 states (paragraph 3, page 2 of the English translation) that the containers disclosed therein "can be made from any film- or sheet-like materials which are adherable by heat-sealing, pressing or other means, such as paper, plastics, glass etc." There has been much dispute as to whether this reference to glass is a translation error. Although the Board indeed feels it unlikely that the form of container shown in D1 is suitable for being made of conventional glass, it does not consider this question as being in any way decisive. The fact that one of the materials mentioned in D1 would lead to an essentially stiff container does not alter the fact that the other materials mentioned, paper and plastics foil or sheet, are "relatively flexible and relatively stiff" within the terms of Claim 1 of the contested patent. The relative stiffness of these materials is confirmed by the fact that the containers are self-supporting, the relative flexibility by the fact, see above, that the prior art technique of preventing jamming in the stack is considered inappropriate. By the very nature of these materials it is evident that the containers of D1 are squeezable within any conventional meaning of this term.

Finally, and this has not been disputed by the Appellants, it is clear from the drawings of D1 that a stiffening hem is formed at the open end of the container.

Summing up, it is therefore clear that D1 discloses a squeezable container comprising a tubular frustoconical body of a relatively flexible and relatively stiff material, the larger open end of the container having a stiffening hem formed therearound and the smaller bottom end of the container being flattened and sealed, whereby this flattened bottom portion forms a stiffened grip part for the container. In other words, D1 discloses a container having all the structural features of the container defined in Claim 1 of the contested patent.

Hence, the only outstanding issue is the fact that D1 nowhere indicates that the container disclosed therein is intended to be used for ice-cream.

The question of anticipation of a claim to an article for a particular use is dealt with in the Guidelines C-III, 4.8 and C-IV, 7.6 from which it is clear that, with the exception of medical uses of known substances, the indication of intended use is only to be seen as limiting to the extent that the article has to be suitable for this use. In other words, the disclosure of an equivalent article without an indication of the particular use claimed but which is nevertheless suitable therefor will destroy the novelty of a claim to the article for that particular use. The present Board sees no reason to disagree with this general principle of interpretation as stated in the Guidelines, which to its best knowledge has not been put into contention in any previous cases before the Boards of Appeal. Indeed, the Appellants themselves have not put forward any grounds as to why this principle of interpretation should be called into question, they seem much more to be operating under the misapprehension that a statement of corresponding intended use in the prior art is a prerequisite for anticipation.

In the particular circumstances of the present case suitability for use as a container for ice-cream imposes the requirements that the container be of a size in or from which ice-cream is normally delivered or consumed and that the walls of the container be substantially resistant to the penetration of the ice-cream, particularly as it melts. As explained in detail above, the container of D1 in view of its basic nature and the materials from which it may be made meets these requirements.

Even if, having regard to the totality of the disclosure of the contested patent, the characteristics of squeezability and suitability for ice-cream are linked so that Claim 1 is interpreted as being directed to a container for ice-cream, the container being squeezable such that the ice-cream may be squeezed up from the container for consumption, then this would not lead to a different conclusion, since the container of D1 is also suitable for use in this way, as can be seen from the above explanations of its structure. This method of consuming ice-cream has long been known, as witnessed by the documents cited in the introductory part of the description of the contested patent.

3. Having regard to the above, the Board comes to the conclusion that, in agreement with the essential aspects of the impugned decision, the subject-matter of Claim 1 of the granted patent lacks novelty with respect to D1 and that therefore Claim 1 does not meet the requirements of Articles 52(1) and 54 EPC.

4. Since the Board is bound by the single request of the Appellants it is unnecessary to consider the merits of dependent Claims 2 and 3. These claims must fall with Claim 1.

5. The Board interprets the request of the second Respondents for a refund of their opposition costs as having two aspects. Firstly, it is a request for reconsideration by the Board of the refusal by the Opposition Division to apportion the costs of the opposition proceedings in favour of said Respondents. Secondly, it is a request for apportionment of costs of the appeal proceedings.

The request for apportionment of costs before the Opposition Division was based on the assertion by said Respondents that an allegedly novelty-destroying document cited by them (not D1) was previously known to the Appellants through a nullity action against the corresponding Italian Utility Model. The Opposition Division based its negative decision on this request on the facts that the circumstances surrounding the assertion of said Respondents had not been substantiated and that in any case the revocation decision was based on a different prior art document. The Board can find no fault with the decision of the Opposition Division in this respect.

As for the appeal proceedings, there have been no oral proceedings or taking of evidence which could justify an apportionment of costs (Article 104(1) EPC in connection with Rule 66(1) EPC). In fact, the only new evidence introduced in the appeal proceedings was presented by the second Respondents themselves and plays no role in the substantive decision reached above.

6. Oral proceedings according to the auxiliary request of the first Respondents were not necessary since their main request has been fully met.