T 0425/11 31-10-2014

1. Main request

1.1 In the annex to the summons for oral proceedings (see point 5.1.2) the Board raised an objection of lack of clarity against claim 1 of the main request in view of the following features:

- "the plane of the first opening extends"; and

- "the plane of said second opening extends".

These features, introduced in claim 1 during the opposition proceedings, imply that the first and second openings now lie in a plane (which is by definition flat).

However, since the cutting of the opening of the spray nozzle according to the invention is performed with a V-shaped or a curved cutting tool (see figures 8, 10, 11 and 13 and independent process claim 11 of the application as originally filed), i.e. not necessarily a tool which is straight over the width of the opening, the openings cannot be contained in a (single) plane and, a fortiori, the plane of each of the openings cannot extend "at an angle" (be it delta or lambda). The contour of an opening resulting from a V-shaped or a curved cutting tool, as it is done in the contested patent, is inevitably three-dimensional, which is contradictory to the above features of claim 1 (Article 84 EPC).

1.2 This was illustrated at the oral proceedings before the Board by a tennis ball brought by the appellant. The tennis ball representing a dome shape had been cut across as if by a V-shaped cutting tool. The contours of the corresponding opening had indeed a complex three-dimensional shape, which could not be comprised in a single plane.

1.3 The respondent admitted that the openings as defined in claim 1 are not comprised in a plane. It argued that the skilled person will, however, interpret the claim in a logical sense. He will use the description of the contested patent to understand the meaning of the planes under discussion as corresponding to a direction, more particularly the moving direction of the tool. Using his common general knowledge the skilled reader willing to understand the invention will then realise what falls within the claim and what not. The respondent, citing D7, column 5, lines 30-44, further alleged that the prior art also used the same terminology.

1.4 The Board could not share the respondent's view for the reasons also put forward by the appellant during the oral proceedings.

Should both first and second openings be respectively in a plane, as claimed, then the dome would have to be completely cut away. In that case there would be a contradiction within the claim since the second opening could not be more elongated than the first opening as claimed. As a matter of fact, the cutting of a hemispherical dome can only lead to an opening in circular form, whatever the angle followed by the cutting tool during the cutting operation.

In fact, as already discussed above, the openings according to the contested patent are obtained by shaped cutting tools (see figures 8, 10, 11 and 13), especially the second opening which is obtained by a forming tool with a cutting edge tapering to a sharp point (see independent process claim 11 of the application as originally filed and figure 13). Neither the first nor the second opening can therefore be in a plane, contrary to claim 1. The three-dimensional nature of the contours of the openings is further confirmed by the fact that, according to the contested patent, paragraph [0022], they can be obtained by "plunging" a cutting tool, i.e. not necessarily by cutting across the dome, so that even the moving direction of the tool during the cutting operation cannot help in defining a plane according to claim 1.

With respect to the prior art, it was pointed out during the oral proceedings that D7 does not disclose a plane for the opening but rather that the movement of the cutting tools is within a plane.

2. Auxiliary request 5 amended

2.1 In an attempt to overcome the lack of clarity objection, the respondent filed during the oral proceedings before the Board an amended auxiliary request 5 replacing the former auxiliary request 5.

Claim 1 of auxiliary request 5 amended comprises the feature that the first and second openings are "formed in a plane", to replace the feature that the plane of the first and second opening "extends".

2.2 In view of the late filing of auxiliary request 5 amended, its admission in the proceedings is subject to the discretionary power of the Board as defined in Article 13(1) RPBA.

2.3 The respondent argued that the amendments clarify that the openings are in the plane of the cutting operation. The skilled person will have no difficulty to understand, especially in view of the description of the contested patent, paragraphs [0023] and [0027], and claim 11 of the application as originally filed, that the tools are moving during the cutting operations along planes which form the openings, as now defined in claim 1.

2.4 The Board could not share the respondent's view for the reason put forward by the appellant, namely that the wording "formed in a plane" still implies that the openings lie in a single plane, i.e. are two-dimensional, which is actually not the case as discussed under point 1 above (Article 84 EPC).

2.5 As a consequence, auxiliary request 5 amended was not admitted in the proceedings since it did not overcome prima facie the outstanding objection of lack of clarity (Article 13(1) RPBA).

3. Auxiliary request 10

3.1 During the oral proceedings it was concluded that none of the objections raised pursuant to Articles 83, 84 and 123(2) EPC in respect of the previously discussed requests would hold against auxiliary request 10. In particular, the further qualification of the angles to be "acute" is derivable from figures 7 and 12, showing also the cutting direction.

3.2 It was also noted that, as a result of the deletion of the features: "the plane of the [first/second] opening extends" (see point 1.1 above), the scope of claim 1 of auxiliary request 10 would appear broader than that of the corresponding process claim 10 of the patent as maintained by the Opposition Division. As a matter of fact, the openings in claim 1 of auxiliary request 10 would not be required to be in a plane any longer, so that the amendments would seem to be contrary to the principle of prohibition of reformatio in peius.

However, these features had been introduced in claim 1 of the patent as granted during the opposition proceedings and considered allowable by the Opposition Division. As they were considered in appeal to contravene the requirements of Article 84 EPC (see point 1 above), the respondent replaced them in the process claim 10 by the planes of the cutting operations. The Board found that these amendments allowed the respondent to overcome the lack of clarity objections and further did not contravene the requirements of Article 123(3) EPC. This was not contested by the appellant.

In the light of the discussion at the oral proceedings, it further appeared that these were the only possible amendments for solving the clarity issue, so that they could be regarded as falling within the second type of admissible amendments as an exception to the prohibition of reformatio in peius as established in decision G 1/99 (OJ EPO 2001, 381). This was again not contested by the appellant.

3.3 Novelty of the subject-matter of claim 1 of auxiliary request 10 was also not contested by the appellant. It contested inventive step of the subject-matter of claim 1 in the light of the teaching of document D10 and the skilled person's common general knowledge.

3.4 The Board agreed with the parties to select D10 as the closest prior art for the subject-matter of claim 1 of auxiliary request 10 since it relates to the same technical field, namely spray nozzles for use in container coating operations, and aims at the same goal of producing an asymmetrical distribution of the fluid discharge (contested patent, [0001]; D10, column 3, lines 5-29).

3.5 Disclosure of D10

3.5.1 Document D10 (column 3, line 5 to column 7, line 17; column 8, line 19 to column 9, line 55; figures 1-8, 11-16) discloses a process for producing a spray nozzle which has an asymmetrically distributed fluid discharge pattern (H, L in figures 8 and 16) wherein the location of the maximum fluid discharge (point 10 in figures 8 and 16) is offset from the center of the fluid discharge pattern comprising the steps:

- forming a nozzle blank (B) with an internal fluid flow passageway having a longitudinal axis (a-a) and which terminates in a substantially hemispherical dome shaped end wall (D),

- forming a discharge orifice (O) in the end wall (D) of the nozzle by forming in overlying relation a first relatively rounder opening (O") and a second relatively more elongated opening (O'), said first opening (O") being formed by a cutting operation centred on and performed in a first plane (61) relative to the longitudinal axis (a-a) of said fluid flow passageway and said second opening (O') being formed by a cutting operation centred on and performed in a second plane (37) at an angle relative to the first plane such that the fluid discharge pattern thereby produced by the discharge orifice (O) has a continuous non-linear taper in the amount of fluid discharged from the location of maximum discharge (point 10) to at least a point of minimum flow at one end of the discharge pattern (see figures 8 and 16).

In D10, the plane (37) of the cutting operation of said second opening (O') extends at an anticlockwise angle lambda relative to a plane (36) extending perpendicular to the longitudinal axis (a-a) (see figures 1a and 2) and the plane (61) of the cutting operation of the first opening (O") extends in the same direction at an anticlockwise angle delta relative to the perpendicular plane (36) (see figures 1b and 2a) such that the angle lambda of the cutting operation of the second opening is larger than the angle delta of the cutting operation of the first opening.

As admitted and argued by the parties, the disclosed spray nozzle shown in figures 1, 2, 2a comprises the following anticlockwise angles:

angle lambda = 7,5° (figure 2);

angle delta = 150° (figure 2a)

so that: delta > lambda , contrary to claim 1.

Viewing the very same disclosed spray nozzle from the other side of the sheet of paper on which said figures are printed, which is a symmetry plane (i.e. looking through the paper held against the light), leads to the following anticlockwise angles:

angle lambda' = 172,5° (figure 2);

angle delta' = 30° (figure 2a)

so that: lambda' > delta' , fulfilling the conditions set in claim 1. The Board considers that the disclosure in these figures, as they are, leads to the skilled person also being informed about the above mentioned "rear-view" of the nozzle, since the latter can be observed from both sides.

However, in the thus disclosed spray nozzle, at least one of the angles is obtuse.

The same applies to the embodiments shown in figures 11, 12 and 13 for which anticlockwise e.g. in figure 12:

angle lambda = 0°;

angle delta = 16,5°

so that: delta > lambda , contrary to claim 1.

Viewing the very same disclosed spray nozzle of figure 12 from the other side of the sheet of paper, which is a symmetry plane, leads to the following anticlockwise angles:

angle lambda' = 180°; and

angle delta' = 164,5°

in other words: lambda' > delta', fulfilling the conditions set in claim 1.

However, in the thus disclosed spray nozzle, both angles are obtuse.

Consequently, D10 does not disclose that both angles are acute angles when the relation lambda > delta is satisfied, so that the subject-matter of claim 1 is novel over D10 (Article 54(1) EPC).

3.5.2 The respondent contested that the fluid discharge pattern in D10 has a non-linear taper in the amount of fluid discharged from the location of maximum discharge to at least a point of minimum flow at one end of the discharge pattern.

It considered that the disclosure of D10 as a whole should be taken into account. In particular, figures 8 and 16 of D10 should not be interpreted in isolation but in the light of the description. There, column 4, lines 37-46, makes explicitly clear that the fluid discharge pattern shown in figure 8 tapers "substantially linearly". The term "substantially" is used in order to include the tolerance of ±5% in variation at producing a linear distribution as described in column 4, lines 41-42. Since the aim in D10 is unambiguously to produce a linear fluid discharge pattern, the skilled reader will thus immediately understand that the fluid discharge pattern of the nozzles in D10, even those shown in figures 8 and 16, is linear. Consequently, the feature of claim 1 related to the non-linearity of the fluid discharge pattern should be considered as a distinguishing feature over D10.

3.5.3 The Board could not share the respondent's view for the reasons also put forward by the appellant during the oral proceedings.

Firstly, the fluid discharge patterns shown in figures 8 and 16 of D10 are clearly non-linear on both sides of the maximum discharge point. Secondly, the mentioned passage of D10, column 4, lines 37-51, makes a distinction between the "linear" fluid discharge pattern in figure 10 according to the prior art of D10 and the "substantially linear" fluid discharge pattern according to the invention of D10 as appearing in figures 8 and 16. Should the author of D10 have regarded the distribution according to the invention "linear", he would have used the same terminology as for its prior art, namely "linear". Since he chose to use the expression "substantially linear", he clearly wished to distinguish the fluid discharge pattern of his invention from that of the cited prior art, i.e. to render it for the skilled reader directly and unambiguously non-linear on both sides of the maximum discharge point.

It is further emphasized that the expression "considerable non-linear taper" used by the respondent in its written submissions in order to describe the fluid discharge pattern according to the contested patent is not in claim 1. In any case, this expression is vague and has a relative meaning (see also impugned decision, point 8.4.4). The same applies to the suggestion that the invention clearly achieves a concave curve in the fluid discharge pattern, which is not claimed either.

3.5.4 In D10 the second opening is obtained first (first cut of figures 1a and 2) and the first opening thereafter (second cut of figures 1b and 2a). This cannot lead, however, to a distinguishing feature of the claimed process over D10, since the sequence of steps - which of the openings is performed first - is not specified in claim 1 of auxiliary request 10. This appears clearly from claims 10 and 11 of auxiliary request 10 (respectively claims 21 and 22 of the patent as granted).

3.6 Distinguishing features

As a result of the above, the only distinguishing features of claim 1 of auxiliary request 10 over D10 are those of the characterising portion:

a plane of the cutting operation of said second opening extends at an acute anticlockwise angle lambda relative to a plane extending perpendicular to the longitudinal axis and a plane of the cutting operation of the first opening extends in the same direction at an acute anticlockwise angle delta relative to the perpendicular plane such that the angle lambda of the cutting operation of the second opening is larger than the angle delta of cutting operation of the first opening.

3.7 Technical effect

3.7.1 The technical effect of the above distinguishing features is to enable the application of a thin, even coat on all of the interior surfaces of a container (contested patent, [0006]; [0008]; column 5, line 53 to column 6, line 5).

3.8 Problem to be solved

3.8.1 This technical effect is, however, as discussed during the oral proceedings, the same as that achieved by the spray nozzle of D10 (column 3, lines 5-29; column 4, lines 25-36; figures 8 and 16; see also the impugned decision, points 8.4.3 and 8.4.4; appellant's letter dated 16 December 2011, paragraph bridging pages 2 and 3).

Consequently, the problem to be solved by the distinguishing features can only be regarded as to provide an alternative spray nozzle to that of D10 for producing the same result, namely a thin, even coat on the interior surfaces of containers.

3.8.2 The respondent argued that the problem to be solved should be regarded as to provide a spray nozzle allowing to produce an improved fluid discharge pattern as claimed, i.e. an asymmetric, continuous and non-linear one (contested patent, [0018]).

The Board could not share this view since, as discussed above, the fluid discharge pattern of D10 is also asymmetric, continuous and non-linear.

3.9 Obviousness

3.9.1 The Board concurs with the appellant that the skilled person knows that a rounder/wider opening will provide more fluid than a more elongated/narrower opening at a given location. Consequently, depending on the form of the internal surface of the container to be coated, the skilled person will immediately consider to vary the relative orientations of the two superposed openings with respect to each other, in order to obtain the desired amount of coating where it is needed, i.e. a fluid discharge pattern adapted to said internal surface. D10 itself teaches for that purpose to change the inclination of any cut through the dome, including to tip the bottom line (60) of the cut, so as to diminish the size effect of O" in relation to O' in the orifice O (column 7, lines 11-17). Therefore, after a process of simple trial and error for producing the desired fluid discharge pattern, the skilled person will inevitably arrive at the claimed solution of acute angles delta and lambda with lambda larger than delta. As a consequence, the subject-matter of claim 1 of auxiliary request 10 does not involve an inventive step (Article 56 EPC).

3.9.2 The respondent argued that there is no pointer in the cited prior art toward this solution, so that inventive step has to be acknowledged. Further, the claimed solution is even contrary to an established prejudice in the technical field as illustrated by D7, D10 and D9, of having at least one of the angles obtuse when lambda is larger than delta.

3.9.3 Contrary to the respondent's view, the Board considers that there is no need in the present case for a pointer to the solution in the available prior art since the solution resides in the skilled person merely applying his common general knowledge when faced with the less ambitious objective technical problem of finding an alternative nozzle as set out under point 3.8.1 above.

Further, for the patent documents D7, D9 and D10 to be evidence of a technical prejudice against having both angles acute in the same anticlockwise direction, it would have required them to be more explicit in that respect. To the Board, they are supporting evidence of the skilled person's trial-and-error approach to the design of spray nozzles.