T 1005/08 27-01-2011

Reasons for the decision

1. Procedural aspects

1.1 Oral proceedings before the Board were held on 27 January 2011 without the duly summoned appellant (Rule 115(2) EPC and Article 15(3) RPBA) who had declared that it would not attend the oral proceedings (cf. point 3 above), who is therefore considered to rely on its case as presented in the written proceedings.

1.2 The requests for correction of the minutes of the oral proceedings before the opposition division and for reimbursement of the appeal fee have been dealt with in the annex to the summons in the following form:

"9. Concerning the allegation of the appellant (grounds of appeal, pages 1 - 3) according to which the first instance proceedings are tainted with a substantial procedural violation infringing its right to be heard, which justifies reimbursement of the appeal fee, for the Board it appears to be necessary to consider the following aspects.

9.1 The order in which the requests are dealt with appears to be immaterial in this respect.

9.2 The allegation according to which the claims (correctly: claim 1) according to the first auxiliary request have not been dealt with by the opposition division is, as acknowledged in the grounds of appeal, not supported by the minutes issued by the opposition division. The minutes, however, do mention that it has been indicated by the chairman that the finding of insufficiency of disclosure has, as relating to the patent as such, been considered as concerning not only the main request but also all auxiliary requests and as being irreparable (minutes, page 5, last paragraph). The minutes in this respect appear as being supported by the course of events referred to in the respondent's reply in appeal (cf. pages 18 - 20, paragraph "6 PROCEDURAL VIOLATION".

Concerning the request for correction of the minutes of the oral proceedings before the opposition division (grounds of appeal, page 2, paragraph 3) the Board can only indicate that according to the consistent jurisprudence of the boards of appeal it is in principle the department before which oral proceedings have been held (in the present case the opposition division) which is competent to correct its minutes of the oral proceedings.

At present the Board has no information that the opposition division has been requested to correct the minutes, nor that the minutes have been corrected by it.

9.3 Concerning the request for reimbursement of the appeal fee (Rule 103 EPC): for the reasons indicated above the facts available at present do not appear to allow the conclusion that the appellant did not have the opportunity to comment on the ground of appeal according to Article 100(b) EPC with respect to claim 1 according to the first auxiliary request (cf. also the paragraph bridging pages 19, 20 of the reply), i.e. do not appear to establish a substantial procedural violation by the opposition division."

No counter arguments having been produced by the appellant the Board sees no reason to depart from this. The requests for correction of the minutes and for reimbursement of the appeal fee are therefore rejected.

1.3 The requests referred to in the appellant's letter of 29 November 2010 can be read to its advantage as constituting two sets of requests. The first set comprises a main request (patent as granted), a first auxiliary request filed with letter dated 8 October 2007, a second and third auxiliary request filed with letter dated 20 December 2007 and fourth to seventh auxiliary requests filed with letter dated 29 November 2010. The second set of requests comprises in addition to each of the requests according to the first set of requests an amended page 2 of the description as filed with letter dated 30 March 2006.

1.4 The decision under appeal and the initial requests of the appellant all concerned claim sets including the above mentioned amended page 2. The Board as a consequence will have to compare the first set of requests with the original grounds of opposition

1.5 Concerning all requests of the above mentioned first set the Board considers that the original ground of opposition according to Article 100(c) EPC applies (cf. form 2300.2 section VI (c) and section 7 ADDED SUBJECT MATTER of the notice of opposition). The deletion of "/PE/EVA" from "PVAL/PE/EVA" in the original description resulting in only "PVAL" as the material used in the compound in the relevant passage of page 2 of the patent results in the disclosure of a new technical feature.

Thus irrespective of possible other obstacles against the requests of the first set of requests this entire set of requests fails in view of the original ground of opposition according to Article 100(c) EPC.

The Board considers this ground not as a new ground of opposition since it formed part of the original opposition and has become relevant again due to the change in the requests introduced with letter of 29 November 2010. In view of the result of the impugned decision (ground of opposition according to Article 100(b) EPC considered as being well founded) there was no need to also address in the impugned decision any of the other grounds of opposition present in the notice of opposition.

1.6 Consequently the following concerns only the requests according to the second set. The amended page 2 of the description as filed with letter dated 30 March 2006 which forms part of each one of these requests is considered as satisfying the requirement of Article 123(2) EPC and overcomes the original ground of opposition of Article 100(c) EPC. In view of the result of the present decision, namely that with respect to claims 1 according to all requests of the second set the ground of opposition according to Article 100(b) EPC is well founded, this point requires no further discussion.

2. Subject-matter of claim 1 according to the main request

2.1 Claim 1 according to the main request is directed to a process for the production of plastic blister packs (feature (a)) for containing liquid perfumes to be used as progressive-release deodorants (feature (b)).

According to feature (c) polyvinyl alcohol (PVAL) is used for the top part of the blister pack. According to features (d) - (g) this polyvinyl alcohol (PVAL) is subjected to a thermal treatment.

2.2 The Board follows the view expressed by the respondent at the oral proceedings that feature (b) needs to be considered as a functional feature.

Claim 1 thus defines a process for the production of plastic blister packs (feature (a) which must fulfil or enable the function that liquid perfumes contained therein can be used as progressive-release deodorants. This function concerns, as indicated by the respondent, the type of liquid perfumes as well as - more importantly - the top part of the blister pack (feature (c)); cf. point 3.2 below.

2.3 The Board is aware that in view of the effect of solving the problem of delamination, which in the impugned decision has been considered as an important aspect with respect to the conclusion of lack of sufficiency of disclosure, it gave its provisional opinion in the annex to the summons that no such effect or corresponding functional feature is mentioned in claim 1 (cf. annex, points 5.1 - 5.4).

Neither in the impugned decision, nor the grounds of appeal nor the response to the latter the function defined by feature (b) was given any direct consideration relating to the ground of opposition according to Article 100(b) EPC.

For these reasons and considering furthermore the required impartiality of the Boards of Appeal in inter partes appeal proceedings there was thus no need for the Board to address functional feature (b) in the annex to the summons.

2.4 Considering the fact that in the grounds of appeal the appellant considered feature (b) as being important for the interpretation of claim 1 (grounds of appeal of 28 July 2008, page 4, last paragraph; page 5, first paragraph; pages 6 - 9 including the paragraphs bridging pages 5 and 6 and 9 and 10) it can but be concluded that the appellant was well aware of the fact that claim 1 comprises by virtue of this feature (b) a functional feature.

2.5 Considering the importance given to the functional feature concerning the problem of delamination with respect to sufficiency of disclosure in the annex (cf. points 5.2 - 5.4) as well as in the impugned decision (reasons, point 3) the appellant must have been aware of the importance of functional features concerning the question of sufficiency of disclosure. In this respect the annex to the summons (cf. points 5.4 and 5.6) clearly indicated that it is the process as defined in claim 1 and the manner in which this process is to be understood which is important in this respect.

2.6 With letter of 9 December 2010 the respondent made it clear that it could not accept the Board's proposal to remit. It indicated that in its opinion the opposition division was right to revoke the patent for lack of sufficiency and that it intended to attend the oral proceedings to convince the Board of its position on this matter.

For the appellant it thus must have been clear that the question of functional features, in connection with sufficiency of disclosure, was likely to be addressed at the oral proceedings. Despite this the appellant decided to not attend the oral proceedings, as communicated with letter of 10 January 2011.

By virtue of Article 15(3) RPBA a Board, once oral proceedings have been appointed, shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned, who may then be treated as relying only on its written case. the explanatory notes to this Article (see CA/133/02 of 12 November 2002) state: "This provision does not contradict the principle of the right to be heard pursuant to Article 113(1) EPC since that Article only affords the opportunity to be heard and, by absenting itself from the oral proceedings, a party gives up that opportunity".

At the oral proceedings the Board therefore could hear the respondent's case with respect to functional feature (b), in connection with sufficiency of disclosure, and decide on the issue at those oral proceedings.

3. Sufficiency of disclosure – claim 1 according to the main request

3.1 The ground of opposition according to Article 100(b) EPC applies in case the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

According to the case law of the Boards of Appeal the invention referred to in Article 100(b) EPC is the one defined by the claims.

3.2 The invention as defined by claim 1

3.2.1 Concerning the invention as defined by claim 1 it needs to be taken into account that, as indicated above (cf. point 2.2), claim 1 according to the main request (and indeed according to all requests) comprises with feature (b) a functional feature defining that the plastic blister packs of claim 1 are for containing liquid perfumes to be used as progressive-release deodorants.

3.2.2 As referred to in the grounds of appeal (cf. e.g. the paragraph bridging pages 5 and 6), it is the top part of the blister pack which, cooperating with the liquid perfume to be used as progressive-release deodorant, needs to be such that the function defined by feature (b) is achieved.

Concerning the top part of the blister pack claim 1 defines that polyvinyl alcohol is used for it (feature (c)).

Concerning this top part claim 1 further defines that it is subjected to a thermal treatment as defined by features (d) to (g).

3.2.3 Beyond that claim 1 does not contain a further definition relating to the structure or properties of the top part of the blister pack or to the type or properties of the liquid perfume. In particular there is also no information given on how, considering its thermal treatment, this affects the polyvinyl alcohol (PVAL) used for the top part in achieving the function according to feature (b).

The grounds of appeal (cf. the paragraph bridging pages 5 and 6) explain the reason for the thermal treatment as lying in the prevention of delamination of the PVAL from the permeable plastic material forming the top part together with the PVAL. Be that as it may, its influence on the function defined by feature (b) is nowhere discussed in the patent in suit. That it will have such an influence is evident, as it affects the PVAL and its connection to the permeable plastic material, which needs to be freed to allow the progressive release.

3.2.4 The remainder of the patent in suit likewise does not give information concerning the structure and properties of the top part and of the liquid perfumes to be used as progressive-release deodorants such that the function according to feature (b) is achieved.

3.3 Sufficiency of disclosure

3.3.1 Due to the lack of information concerning the manner in which the function defined by feature (b) can be obtained the Board considers the assumption of the respondent as being correct, according to which the person skilled in the art is not given enough information to enable a blister pack as defined by claim 1 to be produced.

3.3.2 The Board wishes to emphasise in this connection that this lack of information has already been referred to in the annex to the summons (cf. point 6.2), at that time with respect to the examination of inventive step.

It is important to note that the patent in suit does not disclose any example concerning the blister pack and the liquid perfume to be contained in it, nor any information concerning the structure and material properties of the top part of the blister pack beyond the general reference to the large group of chemical compositions referred to as polyvinyl alcohol (PVAL). It furthermore does not provide any information concerning the thermal treatment of the top part going beyond the very broad range concerning the temperature to be applied and the duration of this treatment (features (f) and (g)).

For completeness sake: the above mentioned lack of information exists irrespective of whether the top part is considered as being made of a single PVAL film or of a compound consisting of laminated films (cf. the paragraph bridging pages 5 and 6 of the grounds of appeal, referring to the delamination of the PVAL from an other film).

3.3.3 As a result the Board does not see the conclusion of the respondent being at fault, according to which, due to the lack of information as indicated above, it amounts to a research program having to be performed by the skilled person to execute the process as defined by claim 1, including the resulting function of feature (b).

More precisely, for the parameters concerning e.g. the structure and material properties of the top part, of the liquid perfume and of the thermal treatment the top part is subjected to, neither starting values nor a direction in which these parameters should be varied in order to achieve the function defined by feature (b) (e.g. by conducting routine experiments) are given. Thus any attempt to perform the claimed process goes beyond routine experimentation and thus amounts to an undue burden for the skilled person.

3.3.4 The invention as defined by claim 1 according to the main request is thus not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC.

4. Claims 1 according to the first to seventh auxiliary request

The claims 1 according to the first to seventh auxiliary requests are amended as indicated in point IV above.

The amendments neither concern the function defined by feature (b) since this feature remains unamended in these claims nor do they result in a further definition of the polyvinyl alcohol (PVAL) used for the top part according to feature (c) so that more information is not given on how the function according to feature (b) can be achieved. As a consequence the deficiency due to missing information as referred to above with respect to claim 1 according to the main request (cf. points 3.3.1 - 3.3.3) is not remedied by the amendments of the claims 1 according to the auxiliary requests. The further disclosure of the patent in suit (cf. point 3.2.4 above) cannot help here either.

Consequently the lack of sufficient disclosure referred to above with respect to claim 1 according to the main request exists in corresponding manner with respect to the inventions as defined by the claims 1 according to the first to seventh auxiliary requests.

Due to the nature of the missing information which is required for the execution of the invention (cf. points 3.3.1 - 3.3.3 above) this applies irrespective of whether these claims concern method claims (main request, first, fourth and fifth auxiliary requests) or product claims (second, third, sixth and seventh auxiliary requests).

Consequently the inventions as defined by claims 1 according to the first to seventh auxiliary requests are not disclosed in a manner sufficiently clear and complete for them to be carried out by a person skilled in the art (Article 100(b) EPC.