T 2199/15 22-09-2021

I. Each of opponent 1, opponent 3 and the patent proprietor lodged an appeal against the interlocutory decision of the opposition division finding that European patent No. 1 820 632 as amended with auxiliary request 4 met the requirements of the European Patent Convention.

II. The oppositions were filed against the patent as a whole on the basis of Article 100(a) (lack of novelty, lack of inventive step) and Article 100(b) EPC 1973.

III. In the decision under appeal the opposition division found that the patent disclosed the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, but that the independent claims of the main request and of auxiliary requests 1 to 3 lacked an inventive step.

IV. On 20 November 2019 the parties were summoned to attend (first) oral proceedings to be held on 11 September 2020.

V. In a communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal in the 2020 version (RPBA 2020), issued on 16 April 2020, the parties were informed of the board's provisional opinion.

VI. First oral proceedings before the board were held on 11 September 2020. The duly summoned opponent 2 was not present as announced with letters dated 12 December 2019 and 12 March 2020. At the beginning of the oral proceedings opponent 3 requested postponement of the oral proceedings on account of the absence of one of their professional representatives due to travel restrictions introduced the day before the oral proceedings in view of the Covid-19 pandemic. It was argued that since opponent 3 had announced with letter of 27 July 2020 that they would be represented during oral proceedings by two professional representatives, holding the oral proceedings in the absence of one of them would constitute a violation of the party's right to be heard. The request was granted by the board.

VII. On 17 September 2020 the parties were summoned to attend (second) oral proceedings to be held on 15 December 2020.

VIII. In a letter dated 9 November 2020 the patent proprietor called attention to the ongoing restrictions caused by the Covid-19 pandemic, which affected travel to and from Italy. They requested that the oral proceedings scheduled for 15 December 2020 be postponed or held by videoconference.

IX. In a communication dated 20 November 2020 the board asked the parties for their consent with the oral proceedings scheduled for 15 December 2020 being held by videoconference on 18 December 2020.

X. With letter dated 4 December 2020 opponent 1 submitted that they did not agree to conduct the oral proceedings as a videoconference.

XI. Subsequently, the oral proceedings scheduled for 15 December 2020 were cancelled with notification of 11 December 2020.

XII. On 25 January 2021 the parties were summoned to attend (second) oral proceedings to be held on 22 September 2021.

XIII. The parties were notified on 2 September 2021 that the oral proceedings would be held by videoconference. None of the parties expressed an objection thereto.

XIV. Second oral proceedings before the board were held on 22 September 2021. The duly summoned opponent 2 was not present as announced with letters dated 3 March 2021 and 15 September 2021. At the end of the oral proceedings the patent proprietor withdrew their appeal.

XV. Both appellant I (hereinafter: opponent 1) and appellant II (hereinafter: opponent 3) requested that the decision under appeal be set aside and the European patent No. 1 820 632 be revoked.

The patent proprietor requested that the appeals of appellants I and II be dismissed; or, alternatively, that the decision under appeal be set aside and the patent be maintained according to one of the fifth to eleventh auxiliary requests, filed during opposition proceedings.

Opponent 2 did not file any requests.

XVI. The following documents were referred to during appeal proceedings:

E5(O1) |EP 0 885 809 A1; |

E6(O1) |DE 26 58 887 A1; |

E7(O1) |FR 2 843 911 A1; |

E16(O1)|US 4 759 741; |

E3(O2) |US 4 108 066; |

E4(O2) |US 3 598 042; |

E5(O2) |US 6 206 815 B1; |

E6(O2) |US 2 472 883; |

D5(O3) |"Braille on folding cartons", European Carton Makers Association, September 2005 edition.|

Document E3(O2) is a patent family member of document E6(O1), and document E5(O2) is a patent family member of document E5(O1).

XVII. Claims 1 and 9 according to auxiliary request 4, corresponding to the version underlying the decision under appeal, read as follows (the claim numbering placed in square brackets is adopted hereinafter by the board):

"[M0] A method of manufacturing a packaging unit with applied embossing of a Braille lettering for forming a closed packaging, comprising the following steps:

- [M1] to provide the packaging unit by punching or cutting of a packaging bulk to have the packaging unit punched-out therefrom, [M2] said packaging bulk being in the form of a roll or a sheet;

- [M3] to provide at least one of the side faces of the packaging unit after the punching or cutting thereof with at least one embossing [M3.1] of a Braille lettering [M4] by conveying the packaging unit between a first roller (11) and a second roller (12) configured for cooperating with each other, [M5] said first roller (11) and said second roller (12) being configured with complementary means for providing at least one embossing [M5.1] of a Braille lettering;

- [M6] folding and adhesive joining of the embossed packaging unit."

"[S0] A system (1) for manufacturing a packaging unit with applied embossing of a Braille lettering for forming a closed packaging, comprising:

- [S1] a shearing device for punching or cutting a packaging unit from a packaging bulk to have the packaging unit punched-out therefrom, [S2] said packaging bulk being in the form of a roll or a sheet;

- [S6] a folding and adhering apparatus;

- [S2'] a conveyor (21) such as an endless conveyor belt with a direction of conveyance (20) for conveying the packaging unit through the system to a discharge position, where the packaging units are discharged;

characterised in further comprising [S3] an embossing device [S4] comprising a first and a second roller (11, 12) configured for cooperating with each other, [S5] said first roller (11) and said second roller (12) being configured with complementary means for providing embossing [S5.1] of a Braille lettering on a packaging unit after the punching or cutting thereof."

XVIII. The parties' submissions may be summarised as follows:

Allowability of amendments

- Opponent 3

The amendment "after the punching or cutting thereof" in feature M3 of claim 1 according to auxiliary request 4 had no basis in the original application. The passage invoked in the decision under appeal referred to the explanation in the paragraphs [0013] and [0014] of the published application with respect to the steps immediately before and after the embossing step, without however specifying which of those steps were performed immediately before and which of those steps were performed immediately after the embossing step. The order of the method steps was not clearly described in the original application.

- Patent proprietor

The objection of added subject-matter pursuant to Article 123(2) EPC was raised for the first time only at a very late stage of the appeal proceedings and should therefore not be admitted.

Sufficiency of disclosure

- Opponent 3

The patent did not teach the skilled person how to convey the packaging unit through and between the various stations in order to perform the various steps of claim 1. The description in paragraphs [0014] and [0015] of the patent was very general and only hinted that there must be a certain direction of conveyance. Further, there was no disclosure in the patent on how to arrange the various stations relatively to one another or how to deal with different shapes of the processed packaging unit in order to allow for a proper conveyance. Therefore, the invention was not sufficiently disclosed.

Clarity

- Opponent 3

The term "after" was added to the second process step of claim 1 according to the auxiliary request 4. Inasmuch as the term should mean that the embossing and Braille lettering were effectuated "immediately after" the punching or cutting operation, it introduced a lack of clarity. Not only was the term "immediately" relative in that it failed to quantify the time passed, it was without standard meaning in the packaging industry and therefore unclear. It further raised the question whether it was excluded that another operation was performed in between the two steps.

- Patent proprietor

The objection against Article 84 EPC was raised for the first time only at a very late stage of the appeal proceedings and should therefore not be admitted.

Inventive step

- Opponents 1 and 3

The subject-matter of claims 1 and 9 did not involve an inventive step when starting from documents E5(O1), E6(O2) or E16(O1).

Starting from document E5(O1) the subject-matter of both claim 1 and claim 9 according to auxiliary request 4 had two distinguishing features: the embossing of a Braille lettering and the embossing being done after the punching or cutting. The objective technical problem associated with the first distinguishing feature was to provide a packaging unit with information for the visually impaired, which the skilled person would have solved in an obvious manner in view of the teaching of document E6(O1), document E7(O1) or document E4(O2). The second distinguishing feature did not have any technical effect. This was because changing the order of the punching or cutting step and the embossing step would not have improved the accuracy of the manufacturing system, it would have deteriorated it. In fact, punching or cutting the single continuous web 19 of document E5(O1) before embossing would require sensors and synchronising control in order to maintain the position of the mechanically less stable pre-cut blanks and to avoid their edges from lifting. Further, the opposition division erred in concluding that the progression disclosed in document E5(O1) would risk the Braille embossing getting damaged by the punching or cutting step. In practice, cutting was carried out remotely from any embossing pattern. Also the description of the patent in suit did not reveal any technical effect. In paragraph [0004] it merely mentioned the risk of mixing up different types of embossment matrices. This was solved, not by the order of the method steps, but by the identification codes that were only introduced in the dependent claims. In T 440/91 the board found that an alleged technical effect should not be taken into consideration unless it was at least hinted at in the patent. As a consequence, the second partial problem was to provide an alternative solution. There were only limited possibilities for arranging the cutting tool and the embossing tool: either the embossing step was carried out prior to the punching step as in document E5(O1), or the steps took place simultaneously as taught by document D5(O3), or the packaging unit was embossed after the punching step but before the folding/adhering step. Selecting one of these three possibilities did not require any inventive merit. In fact, in view of the passage in column 1, lines 19 to 32 of document E5(O2) - the English language family member of document E5(O1) - it would have been even more likely for the skilled person to consider the last alternative. Document E6(O2) also disclosed such a solution (cf. column 4, lines 40 to 44). The claimed subject-matter was therefore obvious when starting from document E5(O1).

In document E6(O2) the embossing step and the punching or cutting step were already carried out in the claimed order. The only difference lied in the embossment of Braille lettering. The objective technical problem was how to provide a packaging unit with information for the visually impaired. It would have been obvious for the skilled person to replace at least one pair of the embossing rollers shown in Figure 2 of document E6(O2) with the printing roller and the counterpressure roller disclosed in E3(O2), an English language family member of E6(O1). Also from documents D5(O3), E7(O1) and E4(O2) the skilled person would have been aware of rotary Braille embossing; they would have been motivated to apply Braille markings to various types of goods. According to the embodiment shown in Figures 4 and 5 of the starting point E6(O2), the embossment was confined to narrow bands on the central walls leaving not only the areas between the bands and the edges, but also the bottom and top flaps free of any embossment (column 3, lines 55 to 57; column 4, lines 68 to 71). The passage in column 5, lines 20 to 22 of document E6(O2) already suggested that the bottom flap should not contain any cushioning. It was therefore possible to foresee information for the visually impaired in the unembossed areas. In order to do that, the skilled person would have removed one of the roller pairs shown in Figure 2 of document E6(O2) by means of the adjusting screw 37 and replaced it with Braille embossing rollers. A pointer to that effect was disclosed by document E6(O1) (page 7, line 4: "Auswechseln der genannten Gegenwalze"). The skilled person would have been aware that the diameter and/or the material of the rollers had to be adapted to provide the different pressures required for embossing the Braille lettering and for embossing the cushioning. Alternatively, the skilled person would have placed a matrix mat with Braille embossing features on one of the available rollers similarly to the arrangement shown in Figure 1 of document E4(O2). In that case, the skilled person would have foreseen a negative roller below the blank of Figure 2 of document E6(O2) in order to ensure that the Braille lettering remained visible despite the cushioning embossings. Also the cut-away portion 56 illustrated by Figure 4 of document E6(O2) would be suitable for holding the Braille matrix mat. A further alternative solution would put the Braille embossing rollers on a separate shaft placed after the first embossing shaft. Hence, it would have been obvious to solve the objective technical problem in the manner of claim 1 or claim 9.

Document E16(O1) concerned the manufacture of a packaging unit according to which a packaging blank was cut ("die cutting section 22") prior to undergoing a slotting step ("slotting section 24"). It differed from the method of claim 1 and the system of claim 9 in that no embossing was carried out. However, the definition of "to slot" included the meaning "to cut a groove", which could be understood as to mean embossing. There was further no mention of any Braille lettering in document E16(O1). Faced with the objective technical problem to describe a method for manufacturing packaging units containing Braille lettering, the skilled person would have turned to either document E6(O1) or document E7(O1) and replaced the rollers of the slotting section 24 of document E16(O1) with a set of rollers that embossed Braille lettering on the packaging unit. In view of the passage in column 5, lines 6 to 22, only those functional units were deployed which were required for the manufacture of the package unit. As a result, the subject-matter of claims 1 and 9 was obvious when starting from document E16(O1).

- Patent proprietor

The subject-matter of claims 1 and 9 according to auxiliary request 4 involved an inventive step, for the following reasons.

Document E5(O1) was not an appropriate starting point. It failed to include a reference to Braille lettering, but concerned the manufacture of cigarette packages. The opposition division's formulation of the first objective technical problem contained pointers to the solution of the claims resulting in an ex post facto analysis. The second distinguishing feature was not a mere alternative solution. Embossing after punching or cutting provided many advantages. First, the Braille lettering did not risk getting damaged by a subsequent punching or cutting step bound to put the paper fibres under tension. Further, it allowed positioning the Braille lettering closer to the edges of the packaging unit, hereby making better use of the wall surface of the packaging unit. The second objective technical problem was therefore to improve the quality of the Braille lettering on the packaging unit by avoiding damage and making optimal use of the surface. No issues with accuracy or damage avoidance were obvious from document E5(O1); the emblems embossed on the prior art cigarette package merely served the purpose of merchandising. From column 1, lines 19 to 33 of its patent family member E5(O2) it was clear that the main concern of document E5(O1) was to improve the supply. There was therefore no reason for altering the order of the embossing step and the punching or cutting step in document E5(O1) in order to solve the second objective technical problem, so that the solution of claim 1 was not obvious.

The embodiment shown in Figure 1 of document E6(O2) was incompatible with the claimed solution, because it did not leave any area available to emboss Braille lettering. The embodiment shown in Figure 5 did not serve for Braille embossing either. Neither the glue flap 43 nor the top or bottom flaps 44 to 51 could be used, see also column 5, lines 20 to 24. But the skilled person would have also not considered embossing Braille lettering in the very small areas left aside the centrally embossed bands. Apart therefrom, it was important to realise that blind people would have considerable difficulties reading Braille lettering provided on a heavily corrugated package as shown in Figure 7 of document E6(O2). Further, it was difficult to emboss thin and precise Braille lettering on a very thick cardboard. Even if the skilled person would have opted to do so, there were still three possibilities: i) before the cushioning step, in which case the Braille lettering risked being destroyed, ii) at the same time as the cushioning step, requiring an inventive solution for dealing with the different pressures the cushioning and the Braille rollers arranged on the same shaft were designed to exert on the blank, iii) after the cushioning step, which made it difficult to apply the Braille lettering on an already distorted support surface. It was further worth considering that the replacement of one of the rollers illustrated in Figure 2 of document E6(O2) would result in the undesired situation that the package manufactured to protect fragile products had a wall without any cushioning. The claimed solution was therefore not obvious having regard to document E6(O2).

Document E16(O1) related to corrugated boxes, see column 1, lines 6 to 9 and the substrate 106 in Figure 4. It would have been technically impossible to emboss such a substrate. Furthermore, only slotting was disclosed, no embossing. These terms did not have the same meaning. The subject-matter of claims 1 and 9 was not obvious when starting from document E16(O1).