In this decision the Board had to delve into interpretative questions.
Claim 1 of the main request on file read:
A hermetically sealed, molded thermoplastic dispensing container which comprises:a nozzle (16, 116, 216) unitary with the container (10, 110, 210) and defining a dispensing aperture (18);a removable closure unitary with the nozzle (16, 116, 216) and occluding the aperture (18);said nozzle (16, 116, 216) being adapted to receive the hub (36) of a dispensing assembly (34) in a mating relationship; the hub including an inner surface (38) defining a cavity (40);characterized by a resilient and compressible annular bead (26, 126, 226) extending outwardly about the periphery of the nozzle (16, 116, 216), unitary therewith and spaced from the aperture (18) and being sized such that the diameter thereof in the region of engagement is greater than the diameter of the cavity (40) defined in said hub (36) whereby said bead (26, 126, 226) is compressed when the hub (36) is received over said bead (26, 126, 226) and said bead (26, 126, 226) exerts a sealing force against the inner surface (38) of the hub (36) in the region of engagement between the hub (36) and the bead (26, 126, 226) to provide a liquid seal between the hub (36) and the nozzle (26, 126, 226) in the region of engagement.
The question arose whether the features of the hub were to be taken into account for the novelty assessment.
Subject-matter of claim 1
[2.1] According to [the opponent] claim 1 defines a dispensing container comprising a nozzle. The features relating to a hub are not to be considered as forming part of the subject-matter of this claim and thus have to be disregarded.
[2.2] [The patent proprietor] agreed to the Board’s opinion of the annex that claim 1 is related to a container and is supposed to describe features of this container.
Concerning the features of claim 1 relating to the hub which was referred to in this claim as a second entity it expressed the view, referring to decisions T 455/92 and T 194/99, that these features should also be taken into account since they contribute to the definition of the container itself.
[2.3] The Board does not find the arguments of [the patent proprietor] convincing and consequently does not see any reason to deviate from its opinion […].
Claim 1 is thus directed to a single entity, namely a dispensing container.
The features in this claim relating to the second entity […], namely the dispensing assembly comprising a hub, do not form part of the subject-matter defined by claim 1.
This assessment of the subject-matter of claim 1 is not in conflict with the decisions T 455/92 and T 194/99 cited by [the patent proprietor]. According to T 455/92 [2.2-3] the length and overall breadth of a covering for a pressed product has been considered sufficiently defined by its intended use and the size such pressed products normally have. According to T 194/99 it is, in principle, “possible in a claim for a first entity to define certain characteristics of that entity as a function of characteristics of a second entity employed when using the first entity …”. It is further indicated that “A prerequisite is, however, that the second entity and its relevant characteristics as such, not their exact values, are unambiguously identified in the claim” (reasons, point ).
In the present case neither the hub as second entity nor its cooperation with the container (first entity) are unambiguously defined since the feature of claim 1 relating to the relationship of the nozzle with the hub defines only that the nozzle is adapted to receive the hub in a mating relationship. This feature thus does not give a basis for certain characteristics of the container or its nozzle being defined as a function of the hub as second entity. The feature defining that the hub has a cavity does not help either since it likewise does not lead to the mating relationship between the nozzle and the hub being further defined.
[2.4] Since the features relating to the hub do not form part of the subject-matter of claim 1 either directly or indirectly, since they do not contribute to the definition of the container, the subject-matter of this claim concerns, as indicated in the annex
(i) a hermetically sealed, molded thermoplastic dispensing container which comprises
(ii) a nozzle unitary with the container and defining a dispensing aperture
(iii) a removable closure unitary with the nozzle occluding the aperture
(iv) a resilient and compressible annular bead which is provided extending outwardly about the periphery of the nozzle unitary therewith and spaced from the aperture.
The properties of the bead defined by feature (iv) appear to be the result of the material for / and the manufacturing process of the container as defined by feature (i).
Disclosure of document D4
[3.1] D4 discloses, as indicated in the annex […], with respect to the molded thermoplastic dispensing container of claim 1, a hermetically sealed, molded thermoplastic dispensing container 4 […] which comprises
a nozzle 12 unitary with the container and defining a dispensing aperture […],
a removable closure 6 unitary with the nozzle occluding the aperture […] and
an annular bead 10 which is provided extending outwardly about the periphery of the nozzle unitary therewith and spaced from the aperture […].
[3.2] [The patent proprietor] objects to the annular bead 10 being considered as resilient and compressible (feature (iv)). The argument based on “the conditions prevailing when the container is used together with a dispensing assembly” […] cannot be considered since, as indicated above, a dispensing assembly does not form part of the subject-matter of claim 1 and claim 1 furthermore is not directed to a use of such a combination.
The Board considers the argument that resiliency and compressibility concern two different requirements […] as holding true per se. Since, however, only these properties of the bead are referred to in claim 1 (feature (iv)) without further definition as to the resiliency on the one hand and the compressibility on the other, while also the shape and dimensions of the bead remain undefined, and its material is only referred to as thermoplastic, the material properties referred to by feature (iv) cannot be given any particular meaning.
Since the bead according to D4 is of – qualitatively similar shape and size and of the same material […] allowing its elastic radial deformation […] its material properties cannot be seen as different from the ones according to feature (iv).
[4.1] Based on the above understanding of the subject-matter of claim 1 and of the disclosure of D4, the finding of lack of novelty in the impugned decision […] with respect to D4, is […] correct.
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