T 0344/02 20-07-2004

1. Admissibility of the appeal of appellant I

Appellant I filed an appeal on 22 March 2002. However, a written statement setting out the grounds of appeal in accordance with Article 108 EPC was not filed. In accordance with Rule 65(1) EPC, the appeal is therefore rejected as being inadmissible. Appellant I nevertheless remains a party to the proceedings as of right in accordance with Article 107 EPC, second sentence.

2. Abandonment of subject-matter

In the decision under appeal, a main request in which claim 1 specified the feature of printing on the surface of the first layer facing the metallic foil "via a non-thermal printing process" was held not to be allowable in view of the provisions of Article 123(2) EPC. According to the auxiliary request of appellant II, which was upheld by the Opposition Division, this feature was replaced by a reference to "conventional lithography" in order to overcome the objection under Article 123(2) EPC. Thus, both requests considered by the Opposition Division limit in some way the method used for printing on the surface of the first layer facing the metallic foil.

However, claim 3 of the patent in suit as granted did not specify in any way the method used for printing on the surface of the first layer facing the metallic foil. It was argued on behalf of appellant I that, having abandoned a claim in which the method used for printing on the surface of the first layer facing the metallic foil was not specified, it was not possible to revert to such a claim. This objection applies to all the requests of appellant II.

This argument cannot, however, be accepted. The omitted feature of claim 1 of the former main request was held by the Opposition Division in their decision as not being allowable in view of the provisions of Article 123(2) EPC. The omission of this feature is thus regarded as being appropriate in order to overcome this objection and the Board finds it appropriate to exercise its discretion under Article 114(1) EPC and admit the requests of appellant II.

3. Main request and first to third auxiliary requests

3.1. Rule 57a EPC

The claims of the patent in suit as granted included three independent claims: claim 1, directed to a method of printing on opposite surfaces of a layer comprising a plastic film material; claim 3, directed to a composite laminated foil covering and printed label structure for a package; and claim 9, directed to a method of producing multi-layered foil laminate coverings for a packaging.

Claim 10 of each of the main request and first to third auxiliary requests of appellant II is directed to a method of producing lidstock. It was argued on behalf of appellant II that the claim should be allowable under Article 123(3) EPC as being based on claim 3 as granted, but having undergone a change of category.

However, Rule 57a EPC requires that amendments of a European patent must be occasioned by grounds of opposition. This is not the case for claim 10 of the main request and first to third auxiliary requests of appellant II. The amendments which result in claim 10 of these requests involve reformulations and editorial amendments as compared with the independent claims as granted which, whilst they may well be allowable under the provisions of Article 123(2) and (3) EPC, go beyond what is necessary to overcome a ground of opposition specified in Article 100 EPC.

The main request and first to third auxiliary requests accordingly involve amendments which do not comply with the requirements of Rule 57a EPC and these requests are not allowable.

4. Admissibility of the fourth and fifth auxiliary requests

These requests were filed by appellant II at the oral proceedings before the Board in response to objections under Rule 57a EPC which were raised for the first time at the oral proceedings. In addition, these requests merely involve combinations of claims which were filed in previous requests with claims of the patent in suit as maintained by the Opposition Division in the decision under appeal. The late filing of these requests thus does not amount to an abuse of the procedure and does not introduce any issues into the proceedings for which appellant I was not prepared. The Board therefore concludes that it is an appropriate exercise of its discretion to admit the fourth and fifth auxiliary requests into the proceedings.

5. Admissibility of arguments relating to novelty and inventive step

The prohibition of reformatio in peius cannot be extended so as to apply separately to each point decided by the Opposition Division. It was argued on behalf of appellant II that a finding of the Board that the subject-matter of the claims of the requests was not novel or did not involve an inventive step would constitute an implicit finding in respect of the claims of the patent in suit as maintained by the Opposition Division in the decision under appeal. The Board is, however, of the opinion that, in the case of a patentee who is the sole appealing party, the prohibition of reformatio in peius applies only to amendments which would have the effect of placing the patentee in a worse situation by virtue of an amendment having a limiting effect on the scope of protection offered by the claims of the patent in suit as maintained by the Opposition Division in the decision under appeal.

The Board is accordingly of the opinion that arguments relating to novelty and inventive step should be admitted.

6. Fourth auxiliary request

6.1. Amendments

Claim 3 as granted relates to a "composite laminated foil covering and printed label structure for a package". Claim 1 of the fourth auxiliary request of appellant II relates to "printed, laminated lidstock for contact lens blister packages". The wording of the claim makes it clear that the claim is directed to a composite foil material, and the use of the term "lidstock" indicates that the claimed material is intended for use as a covering for a package. Finally, the amended claim 1 refers to the printed indicia forming "a printed label". Claim 1 as amended is thus restricted as compared with claim 3 as granted, so that the claim satisfies the requirements of Article 123(3) EPC and Rule 57a EPC.

In addition, the application as filed (referring to the printed version) refers to the foil as being suitable for use as a lidstock for contact lens blister packages at column 1, lines 34 to 55. The approach suggested by appellant I, involving comparing claim 1 of the fourth auxiliary request with claim 1 as maintained by the Opposition Division in the decision under appeal, and then looking for a disclosure in the application as filed to the effect that the omitted features are not essential, cannot be followed. Article 123(2) EPC requires that the subject-matter of a claim does not extend beyond the disclosure of the application as filed. This thus merely requires a comparison of the amended claim with the disclosure of the application as filed. Such a comparison leads to the conclusion that the omitted features referred to by appellant I are not disclosed in the application as filed as being essential.

The amended claim 1 of the fourth auxiliary request thus complies with the requirements of Article 123(2) EPC.

6.2. Novelty of claim 1

None of the prior art documents disclose a lidstock for contact lens blister packages on which indicia are imprinted via thermal transfer printing.

The subject-matter of claim 1 is thus novel and satisfies the requirements of Article 54 EPC.

6.3. Inventive step of claim 1

6.3.1. Closest prior art

Document D2 represents the closest prior art. In particular, it is disclosed at page 7, lines 9 to 11, of this document that "the surface and/or reverse surface of this polyester film can be printed on with ink, as required". This document is thus more relevant than documents D8 and D14, insofar as printing on both sides of the polyester film is suggested. The subject- matter of claim 1 is distinguished over the disclosure of document D2 by the use of thermal transfer printing to print on the surface of the film remote from the foil.

6.3.2. Problem to be solved

In the submissions of appellant II, the problem to be solved is to provide a printed foil laminate for contact lens blister packages in which the quality of the printed image is not adversely affected by sterilisation, and which is suitable for sealing to the blister package. This cannot, however, be accepted, since this problem is not solved by the use of an unspecified method of printing on the surface of the plastic film facing the metallic foil and the use of thermal transfer printing on the surface of the film remote from the foil. In particular, thermal transfer printing involves the use of a fusible ink, so that the use of thermal transfer printing in general is not sufficient to ensure that the printed image is not adversely affected by sterilisation. Indeed, in order for the printed image not to be adversely affected by sterilisation, it is necessary to use an ink which is not adversely affected by the temperatures encountered during sterilisation on both sides of the plastic film.

The problem to be solved must accordingly be more generally formulated as being to provide an appropriate printing method for printing on the outside surface of the film.

6.3.3. Solution

Document D7 relates to a wrapping foil and notes that thermal transfer printing has advantages when it is desired to print variable indicia (column 1, lines 35 to 39).

As indicated in the patent in suit at column 1, lines 25 to 35, it is often desirable to print variable indicia, such as expiration dates, lot numbers and other data on blister packages. The disclosure in document D7 of the advantages of thermal transfer printing for such a purpose thus makes thermal transfer printing an obvious candidate for printing variable indicia on the outside surface of the lidstock. Whilst document D7 does not suggest that thermal transfer printing can withstand sterilisation, as stated under point 6.3.2 above, the use of thermal transfer printing does not in itself solve this problem, which is only solved by the selection of a suitable ink and not by the use of thermal transfer printing.

The subject-matter of claim 1 according to the fourth auxiliary request thus does not involve an inventive step.

7. Fifth auxiliary request

7.1. Amendments

The additional features included in claim 1 of the fifth auxiliary request as compared with claim 1 of the fourth auxiliary request have the effect of further limiting the scope of protection and are disclosed in the application as filed.

Referring to the reasoning as set out under point 6.1 above in respect of the fourth auxiliary request, the amended claim 1 of the fifth auxiliary request also complies with the requirements of Article 123(2) EPC.

7.2. Novelty of claim 1

For the reasons in respect of claim 1 of the fourth auxiliary request under point 6.2 above, the subject- matter of claim 1 is novel and satisfies the requirements of Article 54 EPC.

7.3. Inventive step of claim 1

As compared with claim 1 of the fourth auxiliary request, claim 1 of the fifth auxiliary request includes the additional features that a ceramic printing head is used for the thermal transfer printing and that "said lidstock is free from indentations, which may adversely affect its mechanical sealing properties to a surface of a contact lens blister package".

The reference to a ceramic printing head being used for the thermal transfer printing does not restrict the scope of the claim, which is drawn to a lidstock per se.

It is obvious to the person skilled in that art that the presence of indentations in the lidstock would adversely affect the ability of a lid formed from the lidstock to seal and adhere to a surface of a blister package, and that the presence of indentations should accordingly be avoided regardless of the printing methods adopted.

The additional features thus do not alter the conclusions drawn in respect of the fourth auxiliary request as set out under point 6.3 above. The subject- matter of claim 1 according to the fifth auxiliary request thus does not involve an inventive step.