T 0991/10 11-10-2011

I. This appeal is against the decision of the opposition division posted 1 April 2010 revoking European patent No. 1 700 548.

II. Granted claims 1 and 9 read as follows:

"1. A capsule for containing beverage ingredients, the capsule (1) being designed for insertion in a beverage production device (2) in which a liquid under pressure enters the capsule (1) in order to interact with the ingredients (3) in the capsule (1) and to drain a beverage from the capsule (1), the capsule (1) comprising a cup-like base body (4) and a closing foil member (5), or the capsule having a lenticular form with two essentially matching and opposing walls, comprising a hollow sealing member (26) on the outer surface of the capsule (1) for achieving a sealing effect between an enclosing member (9) of the beverage production device (2) and a capsule holder (13)."

"9. A beverage production system comprising a capsule (1) according to any one of the preceding claims and a beverage production device (2) having a enclosing member (9) adapted to be selectively in sealing engagement with the sealing member (26) of the capsule (1)."

III. The opposition division held, inter alia, that granted claim 1 of the main request did not meet the requirements of Article 123(2) EPC, because the sealing effect between the enclosing member 9 of the beverage production device 2 and the capsule holder 13 was not directly and unambiguously disclosed in the application. Although claim 1 of auxiliary request I complied with this requirement, it would not meet the requirements of Article 123(3) EPC, because its amendments extended the scope of granted claim 9. It defined not any more an absolute sealing effect between the enclosing member and the capsule holder but only a sealing effect for water entering the interstice between the exterior of the capsule and the enclosing member.

IV. The patent proprietor lodged the appeal on 3 May 2010 and paid the prescribed fee simultaneously. The statement of grounds of appeal was received on 10 August 2010.

V. With the summons to the requested oral proceedings, the board informed the parties that claim 1 of auxiliary request I, in contrast to the one of the main request, appeared to meet the requirements of Article 123(2) EPC, but not those of Article 123(3) EPC. Some inconsistencies in claim 1 were spotted.

In response, the appellant submitted an amended auxiliary request I in which these inconsistencies were addressed.

The requested oral proceedings took place on 11 October 2011 in which the appellant withdrew its main request.

VI. Claim 1 of revised auxiliary request I reads as follows:

"1. A beverage production system comprising a beverage production device (2) and a capsule (1),the beverage production device (2) having an enclosing member (9) adapted to be selectively in sealing engagement with a sealing member (26) of the capsule (1), and

the capsule (1) containing beverage ingredients and being inserted in the beverage production device (2) in which water under pressure enters the capsule (1) in order to interact with the ingredients (3) in the capsule (1) and to drain a beverage from the capsule (1), the capsule (1) comprising a cup-like base body (4) and a closing foil member (5), the sealing member (26) of the capsule (1) being a hollow sealing member (26) on the outer surface of the capsule (1), said sealing engagement of the enclosing member (9) with the sealing member (26) achieving a sealing effect between the enclosing member (9) of the beverage production device (2) and a capsule holder (13) for water entering the interstice between the exterior of the capsule (1) and the enclosing member (9) from a water injector of the beverage production device (2), the hollow sealing member (26) having the shape of a step, i.e. a sudden increase of the diameter of the side wall of the capsule (1)."

VII. The appellant (patent proprietor) requested that the decision under appeal be set aside and that the patent be maintained on the basis of the auxiliary request I filed with the letter of 31 August 2011, in the alternative on the basis of any of the auxiliary requests II to VI filed with the grounds of appeal.

The respondent (opponent) requested that the appeal be dismissed.

VIII. The appellant argued essentially that claim 1 of auxiliary request I meets the requirements of Article 123(2) and (3) EPC, because the amendments in claim 1 have a clear basis in the disclosure of the third embodiment of the application as filed originally and clearly limit the extent of protection in comparison with granted claim 9.

This claim defines that the sealing engagement of the enclosing member 9 with the sealing member 26 of the capsule achieves a sealing effect between the enclosing member 9 and the capsule holder 13 for water entering the interstice between the capsule exterior and the enclosing member from the water injector of the beverage production device. Such sealing engagement only applies to the water in the interstice and was never mentioned with regard to the drained beverage. Therefore the interpretation for an "absolute" sealing effect does not make technical sense for the skilled person and, consequently, was not described in the patent or application.

IX. In contrast, the respondent argued that claim 1 of auxiliary request I does not meet the requirements of Article 123(2) and (3) EPC.

Since claim 1 is limited to a hollow sealing member having the shape of a step it is supported solely by the description and Figures 10-12 of the third embodiment for which a sealing engagement is disclosed between the enclosing member and the hollow sealing member.

However, from "the perspective of water coming from the water injector, this sealing engagement may be considered as giving rise to a sealing effect, but there is no basis in the application as originally filed for defining that sealing effect as being between the enclosing member and specifically the capsule holder as opposed to any part of the beverage production system which is beyond the sealing engagement. Whether that specific sealing effect is disclosed depends on what structure exists beyond the sealing engagement. As noted by the Opposition Division in item 4 of the decision under appeal, since the third embodiment is only shown in cross-section, it is not possible to ascertain what sealing exists beyond the sealing engagement since it is not directly and unambiguously derivable whether there is a contact between the flange-like rim of the capsule and the capsule holder along the whole circumference of the capsule holder."

"Claim 9 of the granted patent claims the sealing effect between the enclosing member and the capsule holder per se, i.e. without any limitation to any particular perspective, or an "absolute sealing effect" in the Opposition Divisions phrase. By specifying in claim 1 of the auxiliary request I that the sealing effect exists from the perspective of water coming from the injector, the patentee lessens the requirements of the sealing effect. The requirements of claim 1 of auxiliary request I are met as long as the water from the injector is prevented from passing the sealing engagement between the capsule and the enclosing member, irrespective of what exists beyond that sealing engagement. Thus, by making it irrelevant what structure exists beyond the sealing engagement between the capsule and the enclosing member, claim 1 of auxiliary request I would necessarily cover possible solutions that are not covered by claim 9 of the granted patent."

Moreover it was argued that the term "sealing effect" in claim 1 was unclear.

With respect to the request that the case be remitted to the opposition division, preference was indicated that the board of appeal decided on patentability.