What can be done during appeal proceedings when a claim of the opposed patent lacks novelty but novelty is not a ground for opposition, and the patent proprietor objects to it being introduced?
“in a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1), A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step”.
This decision presents us with such a case.
Claim 1 as granted (and maintained by the Opposition Division) read:
A sealed package (1) for pourable food products, having at least one removable portion (4), and a closable opening device (2) in turn comprising a frame (5) defining a pour opening (6) and fixed to said package (1) about said removable portion (4), a cap (7) fitted to said frame (5) to close said pour opening (6) and movable to free the pour opening (6), and pull-off opening means (8) housed in said frame (5) and comprising a rigid plate (9) attached to said removable portion (4) and extractable from the frame (5), by pulling action, together with at least part of said removable portion (4); characterized by also comprising a pull-tab (16) of sheet material interposed between said removable portion (4) and said plate (9) and attached to both.
[1.2.1] All figures of D1 show an opening device 1 applied on a packaging container 2 of the type which is manufactured from a continuous laminated web material, with a core of paper or paperboard to which thermoplastic layers and possibly aluminium are laminated […].
[1.2.2] In […] D1 it is further stated that
“[o]n the upper side of the packaging container 2, a hole 3 or a hole indication has been made. This hole 3 or hole indication is normally covered from beneath by a thermoplastic strip for purposes of realising a liquid-tight package. At the same time, the outer side of the package is provided with a corresponding outer strip 4. Normally, these work stages are already carried out on production of the packaging material and the packaging material is delivered ready to the filling machines, provided with the above described hole 3 with each respective covering strip”.
[1.2.3] The above-mentioned passage of D1 defines that when the packaging material is delivered to the filling machines the hole 3 is already provided with an inner thermoplastic strip covering said hole 3 from the inside and with an outer strip 4 covering said hole 3 from the outside. This means that the two strips have to be fixed to each other so that when pull is exerted on the outer strip 4 in order to unseal the hole 3 said outer strip 4 detaches from the outside of the packaging material removing at the same time the thermoplastic strip covering the hole 3 on the inside. Otherwise an additional tearing action for the lower thermoplastic strip would be needed for freeing the hole 3, which is nowhere described in D1 and would not make any sense.
[1.2.4] The outer strip 4 further has a free unsealed portion 5 which is attached to the surface area 11 of the heel 10, see column 3, lines 8 to 11 and column 4, lines 10 to 30. Through this attachment the inner thermoplastic strip covering the hole 3 on the inside is connected via the free unsealed portion 5 and the outer strip 4 to the surface area 11 of the heel 10. In the closed stage shown in figure 9 the surface area 11 of the heel 10 is positioned within the space defined by the pouring element/frame 7.
In the nearly complete opening stage shown in figures 11 and 12 the heel 10 is extracted from the element/frame 7 with the main portion of the strip 4, obviously together with the main portion of the inner thermoplastic strip attached to it.
[1.2.5] Accordingly, D1 discloses in its embodiment shown in figures 8 to 12 (using the terminology of claim 1 of the patent in suit) a sealed package (packaging container 2 and opening arrangement 1) for pourable food products, having at least one removable portion (the thermoplastic strip covering the hole 3 from the inside), and a closable opening device (1) in turn comprising a frame (7) defining a pour opening and fixed to said package about said removable portion, a cap (9) fitted to said frame to close said pour opening and movable to free the pour opening, and pull-off opening means (10) housed in said frame and comprising a rigid plate (11) attached to said removable portion and extractable from the frame by pulling action, together with at least part of said removable portion, and also comprising a pull-tab (4,5) of sheet material interposed between said removable portion and said plate and attached to both.
[1.2.6] The Board cannot follow the [patent proprietor’s] arguments, that since
a) in claim 1 of the main request the pull-off opening means is listed as an element of the opening device in addition to the frame and the cap,
b) the whole disclosure of the patent in suit only refers to solutions having the pull-off opening means separate from the cap, and
c) the description does not contain any information hinting that the cap and the rigid plate of the pull-off opening means could be incorporated into one single structural element,
the person skilled in the art would not understand the subject-matter of claim 1 of the main request to be also encompassing a solution having the rigid plate as an integral part of the cap, for the following reasons.
[1.2.7] Neither claim 1 of the main request nor the description of the patent in suit excludes the pull-off opening means being part of the cap. Moreover, the fact that in claim 1 the pull-off opening means, the frame and the cap are listed as three distinct elements does not exclude that these elements may be interconnected with each other or even that they may be integral with each other. Only the specific embodiment depicted in the figures shows specific pull-off opening means 8 being non-integral with the cap. This, however, cannot have a limiting effect as far as it concerns the pull-off opening means claimed in claim 1.
[1.2.8] Since according to point [1.2.5] above the sealed package according to the embodiment of D1 shown in its figures 8 to 12 discloses all the features of the sealed package of claim 1, the sealed package according to claim 1 cannot involve an inventive step.
[1.2.9] The Board has to take recourse to the above unusual formulation since the original opposition was only based on the ground of opposition of lack of inventive step based on D1 with application of the teaching of D2 being obvious. In application of decision G 7/95 [7.2], the Board had to decide the question whether D1 is disclosing or not all the features of claim 1 as a question of inventive step, since the [patent proprietor] did not give its consent to the introduction of the ground of lack of novelty, raised by the [opponent] for the first time on appeal.
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