T 0502/16 02-04-2020

Procedural aspects

1. The present decision is taken in written proceedings without holding oral proceedings in accordance with Article 12(8) RPBA 2020. The principle of the right to be heard pursuant to Article 113(1) EPC is observed since that provision only affords the opportunity to be heard. By explicitly declaring their intention not to attend the scheduled oral proceedings (see the respondent's letter dated 26 March 2020), to which both parties were duly summoned, the respondent gave up that opportunity, and said declaration is considered equivalent to a withdrawal of the request for oral proceedings under Article 116(1) EPC, whereby the respondent is to be treated as relying only on its written case (see Case Law of the Boards of Appeal, 9**(th) edition 2019, III.B.2.7.3 and III.C.4.3.2, in particular with reference to T 3/90, OJ EPO 1992, 737).

In view of the above declaration of the respondent and of the fact that the case is ready for decision on the basis of the extensive parties' written submissions and the decision under appeal, the Board, while cancelling the oral proceedings, issues the present decision in written proceedings in accordance with Article 12(8) RPBA and Article 15(3) RPBA 2020.

Review of the decision under appeal

2. Granted claim 13 - Novelty over D16

2.1 After reviewing the decision under appeal on the basis of the parties' submissions, the Board finds that the appellant convincingly demonstrated that the subject-matter of granted claim 13 is new over the disclosure of D16.

2.2 This finding is mainly based on the appellant's argument that the wrapping unit disclosed in document D16, being made to wrap confectionery items, was not at all suitable to wrap a plurality of cigarettes. Wrapping single objects was substantially different from wrapping a loose bundle of cigarettes not only in reason of the different dimensions, but also due to the fact that the constraint of holding the cigarettes together before they are wrapped was not present when dealing with a single object.

2.3 The Board agrees with the appellant. Having regard to the established jurisprudence (see the Case Law of the Boards of Appeal, supra, I.C.8.1.5), the formulation "wrapping unit for folding a sheet of wrapping material about a group of cigarettes" implies physical limitations on the claimed unit without which the wrapping unit could not be used for that purpose.

As a consequence of the above, only prior art apparatuses which, in addition to features expressly mentioned in the claim, also possess these implicit physical features and can thus reasonably be used for folding a sheet of wrapping material about a group of cigarettes can take away novelty of the claimed apparatus.

In the present case the Board considers that a skilled person would not be able to directly derive from D16 that the shape and size of the pocket (13) receiving the article (1) to be wrapped (see figure 4a) can hold, without modifications, a group of cigarettes, or that the input station of D16 (pusher 21) can feed, without modifications, a group of cigarettes and the sheet into the pocket.

The wrapping unit of D16 is therefore not suitable for folding a sheet of wrapping material about a group of cigarettes.

2.4 The Board therefore concludes that the subject-matter of claim 13 of the patent as granted is novel over the content of the disclosure of D16.

3. Granted claim 1 - Inventive step starting from D16

3.1 The only inventive step objection raised by the respondent corresponds with the only inventive step objection discussed in the appealed decision, namely that the subject-matter of claim 1 of the main request lacks inventive step over the combination of the teaching of document D16, taken as a starting point, with the knowledge of a skilled person.

Inventive step was denied (see the last paragraph at page 6 of the appealed decision) because the apparatus of D16 clearly was to be considered by a skilled person as a suitable device to be used for the wrapping of a group of cigarettes.

3.2 The review of the decision under appeal on the basis of the parties' submissions has led to Board to the finding that the appellant convincingly demonstrated that the above objection does not prejudice the maintenance of the patent as granted.

3.3 As already discussed (see point 2.3 above) the wrapping unit disclosed in D16 is not taught as being suitable for folding a sheet of wrapping material about a group of cigarettes.

Thus, D16 neither relates to the technical field of cigarette packaging, nor does it teach an apparatus that has the necessary technical features for such a purpose. Indeed, there is no disclosure whatsoever in D16 to suggest that it is either suitable for wrapping a group of cigarettes, or might usefully be modified for such use.

Therefore, the Board concurs with the appellant in considering that D16 is not a realistic starting point for the consideration of inventive step based upon the problem and solution approach and that accordingly it does not represent the closest prior art.

The reasoning on the basis of the only inventive step objection raised in the appealed decision therefore cannot be followed.

Further issues relied upon by the parties

4. Granted claim 1 - Novelty over D8

4.1 According to the appealed decision D8 was not novelty destroying because it did not mention a pocket of a wrapping conveyor.

4.2 The respondent argues that the subject-matter of claim 1 of the main request lacks novelty over the disclosure of D8 since the lack of disclosure in D8 of a structural feature (the pocket) cannot establish novelty for the method claim 1 of the patent as granted, mentioning said feature.

4.3 The Board does not agree with this argument. Method claims are technical processes, and as such they are not abstract, but are carried out with or on certain objects.

In the first step of claim 1 a group of cigarettes and a sheet of wrapping material are fed into a pocket.

As acknowledged by the respondent, no pocket is mentioned in D8, and, as a consequence of the above, D8 cannot disclose the claimed step of feeding the group of cigarettes and the sheet of wrapping material into a pocket of a wrapping conveyor.

4.4 The respondent also refers to figures 10-12 as well as to the passage at page 8, lines 7-25, of D8 and argues that a skilled reader would have understood that in this embodiment the shorter folding tab 23a initially rests on a lateral wall of the cigarette group, as in the first embodiment (figures 7-9), and are folded 90° with respect to the lateral wall only in a subsequent step.

4.5 The Board disagrees again. No information is given in D8 concerning the tab 23a being folded at 90° with respect to the adjacent portion of the wrapper, i.e. the portion which rests on the lateral wall of the group of cigarettes.

4.6 Hence, the Board finds against the respondent's novelty objection.

5. Further issues

The Board notes that no objections to the patent as granted other than those discussed above have been made either in the decision under appeal or by the respondent in their reply to the appellant's statement setting out the grounds of appeal, all forming the basis of the appeal proceedings pursuant to Article 12(1) and (2) RPBA 2020. The Board notes further that the appellant in their statement setting out the grounds of appeal submitted additional arguments in favour of inventive step with reference to further documents mentioned during opposition (D9-D15), which have not been contested by the respondent.

Against this background, there are no obvious and conclusive objections to the patentability of the patent as granted.

6. As a consequence, the appellant has demonstrated in a convincing manner the incorrectness of the decision under appeal in respect of the main request (patent as granted) and, while taking into account the respondent's submissions, that the patent could be maintained as granted.