T 1008/18 07-04-2022

I. The patent proprietor and opponents 3 and 4 lodged an appeal against the interlocutory decision of the opposition division finding that European patent No. 2 089 234 as amended according to auxiliary request 4, filed during the oral proceedings on 8 February 2018, meets the requirements of the EPC. The opposed patent is based on an international application published as WO 2008/064248 A2.

II. The oppositions were filed against the patent as a whole on the basis of the grounds for opposition under Article 100(a) together with Articles 54 and 56 EPC (lack of novelty and lack of inventive step), Article 100(b) EPC and Article 100(c) EPC.

III. The opposition division concluded that the subject-matter of claim 1 of the patent as granted extended beyond the content of the application as originally filed, that the claims of auxiliary request 1 as filed during the oral proceedings were not clear and that the subject-matter of claim 1 of auxiliary request 2 as filed during the oral proceedings did not involve an inventive step. Auxiliary request 3 was not admitted. Auxiliary request 4 was found to meet the requirements of the EPC.

IV. By letter dated 28 August 2020 opponent 3 withdrew its appeal.

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, see OJ EPO 2021, A35), issued on 10 March 2022, the parties were informed of the board's provisional opinion.

VI. Oral proceedings before the board were held on 7 April 2022 by mixed mode in the absence of duly summoned opponents 1, 3 and 6.

VII. Requests

Appellant I (patent proprietor) requested as main request that the board decide only on added subject-matter (Article 123(2) EPC) with regard to the claims of the main request as filed with its statement of grounds of appeal and remit the case to the first-instance department for the discussion on novelty and inventive step. Alternatively, it requested that the decision under appeal be set aside and that the European patent be maintained as amended on the basis of the claims of the main request as filed with its statement of grounds of appeal (auxiliary request 0) or on the basis of the claims of one of auxiliary requests 1B, 11 and 12, all filed with its statement of grounds of appeal.

Appellant II (opponent 4), respondent II (opponent 2) and respondent III (opponent 3) requested that the decision under appeal be set aside and that the European patent be revoked.

Respondent I (opponent 1) filed no requests in the appeal proceedings.

Respondent IV (opponent 6) requested that the patent proprietor's appeal be dismissed.

VIII. Claims 1 and 12 of the main request as filed with the patent proprietor's statement of grounds of appeal correspond to claims 1 and 12 as granted with the amendment in claim 12 that the "base coat (90) is digitally printed on the container". These claims have the following wording:

"1. A plastic container comprising a container (10) having a non-planar external surface (20) characterized in that the container includes a base coat, which is a digitally printed base coat and wherein a digital image is printed on at least a portion of the base coat, the digital image being printed thereon by droplets of ink (30), wherein the ink droplets (30), which form the digital image, vary in diameter from 10 to 200 microns and wherein the droplets of ink (30) range from 200 to 1200 drops per inch."

"12. A method (40) for printing digital images on plastic containers (10), comprising: providing a hollow plastic container (10) having a non-planar external surface (20); moving the container (10) along a track past a digital printing location (50) having a plurality of movable print heads (60) that provide droplets of ink (30), characterized by including the step of applying a base coat (90) on the container (10) prior to printing the digital image, wherein the digital image is provided on at least a portion of the base coat (90), wherein the base coat (90) is digitally printed on the container (10), wherein the droplets of ink (30), which form the digital image, have a diameter from 10 to 200 microns and the droplets of ink ranging from 200 to 1200 drops per inch; and printing a digital image on the non-planar container surface (20) by applying the droplets of ink (30) to the base coat (90) on the container surface (20)."

IX. In comparison with the main request, in claim 1 of auxiliary request 1B, the feature "is printed on at least a portion of the base coat" is amended to "is printed entirely on the base coat", and the respective feature of the method claim 11 "the digital image is provided on at least a portion of the base coat" is amended to "the digital image is provided entirely on the base coat". Claim 1 of auxiliary request 1B corresponds to claim 1 of auxiliary request 1 as filed during the first-instance oral proceedings. Method claim 11 of auxiliary request 1B corresponds to claim 1 of auxiliary request 4 on which the decision under appeal was based.

X. Claim 1 of auxiliary request 11 corresponds to method claim 12 of the main request as filed with the patent proprietor's statement of grounds of appeal.

XI. Claim 1 of auxiliary request 12 corresponds to claim 1 of auxiliary request 4 on which the decision under appeal was based and to method claim 11 of auxiliary request 1B.

XII. The parties' submissions may be summarised as set out below.

Main request as filed with the patent proprietor's statement of grounds of appeal, auxiliary requests 1B and 11: Admittance

- Patent proprietor

All requests should be admitted into the proceedings as they were filed within the time limit under Article 12(1) RPBA 2007. Some requests were filed in response to the decision of the opposition division not to allow the claims directed to a container, and other requests were filed in response to the appeals of the other appellants.

Claim 1 of auxiliary request 1B corresponded to claim 1 of auxiliary request 1 as filed during the first-instance oral proceedings and apart from that contained only minor amendments. Thus, it should be admitted under Article 12(4) RPBA 2007.

- Opponent 3

The main request and all auxiliary requests should not be admitted into the proceedings since they could and should have been filed during the opposition proceedings. The patent proprietor had several opportunities to file new requests. By filing amended requests, the principle of an appeal primarily serving the parties' right to a judicial review of the first-instance decision was violated (see decisions G 9/91 and G 10/91 (OJ EPO 1993, 408 and 420)). Furthermore, the auxiliary requests were not convergent, and the patent proprietor did not provide arguments for filing the amendments.

- Opponents 2 and 4

Auxiliary requests 1B and 11 should not be admitted into the proceedings as they could and should have been filed in the opposition proceedings. For admittance, it was not relevant whether there were only minor amendments. Furthermore, as the subject-matter of claim 1 of auxiliary request 11 was broader than the subject-matter of claim 1 of auxiliary request 12, auxiliary request 11 was not convergent and, hence, should not be admitted. No new arguments or documents were raised during the first-instance oral proceedings which could justify the late-filing.

Main request as filed with the patent proprietor's statement of grounds of appeal: Allowability of amendments under Article 123(2) EPC

- Patent proprietor

Claims 14 to 16 as originally filed provided a literal basis for the features "base coat", "a digitally printed base coat" and "the digital image is printed on at least a portion of the base coat", respectively. Due to their dependencies, there was clear and unambiguous disclosure of claims 1, 14 and 15 in combination and of claims 1, 14 and 16 in combination.

The person skilled in the art was not a patent attorney but a technician who considered the disclosed technology. The person skilled in the art could directly and unambiguously derive, using common general knowledge, from the application as a whole that the base coat of a container specified by the combination of claims 1, 14 and 16 might be a digitally printed base coat. Also, the reverse argument was possible to demonstrate direct and unambiguous disclosure. By applying common general knowledge, the person skilled in the art would print the digital image on a digitally printed base coat as specified by the combination of claims 1, 14 and 15. Even opponent 4 admitted that it was illogical not to print the digital image on a base coat (see opponent 4's letter dated 28 December 2018, page 29).

Moreover, the person skilled in the art could directly and unambiguously derive, using common general knowledge, from the published application (WO 2008/064248 A2) as a whole, especially from page 6, lines 16 to 19, that the base coat of a container specified by the combination of claims 1, 14 and 15 was printed on at least a portion of the digitally printed base coat. Since claim 1 as originally filed disclosed the ink droplet diameter and resolution ranges for a digital image on an external surface of the container, these ranges were also disclosed for a digital image printed on the base coat (see claim 17 as originally filed). It was the same image irrespective of whether it was printed on a base coat or a digitally printed base coat. The digital image necessarily had the same dot size and resolution. These parameters applied for all cases, for direct printing on the surface of the container and for printing on a base coat or a digitally printed base coat.

Furthermore, the ink droplet diameter and resolution ranges were disclosed in the paragraph titled "Summary" on page 1 of the published application. This paragraph indicated the core of the invention, including the preferred embodiments, i.e. the ink droplet diameter and resolution ranges for a digital image on the container surface or a base coat. These ranges were consequently also disclosed for a digitally printed base coat as disclosed on page 6, lines 16 to 18 of the published application. The third paragraph on page 3 of the published application described the ink droplet diameter and resolution of the digital image, thus also for a digital image provided on the base coat. A further indication that the ink droplet diameter and resolution ranges also applied for a digitally printed base coat was the "droplet application system 40" (see Figure 3 and the fourth paragraph of page 3 of the published application). The person skilled in the art derived from this passage that the "droplet application system 40" was made for applying ink droplets in the claimed ranges. The same system was also used for printing an image on a digitally printed base coat (see page 6, lines 8 to 23 of the published application). According to the patent proprietor, the person skilled in the art would read the description as originally filed such that printing the base coat digitally or not was an additional degree of freedom independent of how the image was printed. Therefore, the digital printing of the base coat was a general option. Reference was made to page 6, lines 8 to 23 and Figure 6 of the published application where a base coat was disclosed and "if desired" all or a portion of the base coat might be digitally printed (see claim 15 as originally filed). Lines 18 to 19 of this passage on page 6 explained that "one or more digital images are printed entirely on the base coat" (see claim 17 of the published application). "Further, for some applications, a portion of the base coat and/or a portion of the surface of the container may form a portion of the digital image" (see published application, page 6, lines 19 to 20). In contrast, in response to the opponents' allegation, these were not non-conflicting embodiments but were clearly related embodiments.

Thus, there was a clear basis for the combined subject-matter of claims 1, 14, 15 and 17. Claim 16 as originally filed ("the digital image is printed on at least a portion of the base coat") was a broader version of claim 17 as originally filed ("the entire digital image is printed on the base coat"). As claim 17 as originally filed depended on claim 16 as originally filed, the combination of claims 1, 14 to 17 as originally filed was disclosed. Especially from the teaching on page 6, lines 16 to 20 of the published application, the person skilled in the art would directly and unambiguously derive that the base coat could be a digitally printed base coat in which a digital image was printed on at least a portion of the base coat.

- Opponent 3

In contrast to the opposition division's conclusion (see Reasons point 2.2.2 of the decision under appeal), claims 1, 14 to 16 as originally filed did not form a basis for the combination of a digitally printed base coat (claim 15 as originally filed) in combination with the ink droplet diameter and resolution ranges. Claims 15 and 16 as originally filed depended on claim 14 as originally filed, which in turn depended on claim 1 as originally filed. However, claim 16 as originally filed did not depend on claim 15 as originally filed with the result that a combination of a digital image having the claimed ink droplet diameter and resolution ranges and being printed on a digitally printed base coat was not supported by the claims as originally filed. Contrary to the opinion of the opposition division, there was also no basis in the description or the figures. In the summary of the invention in the published application, the diameter and resolution ranges were given as optional: "may vary" and "may range" (see page 1, last paragraph of the published application). Therefore, these ranges were not directly and unambiguously valid for all embodiments. Figures 1 and 2 of the published application did not comprise a base coat and could not be used as a basis for this amendment. Figure 6 and the ink droplet application system 40 of the published application also did not disclose the combination of a digitally printed base coat and the ranges for the ink droplets. The ink droplet application was disclosed as an embodiment in the fourth paragraph on page 3 of the published application. It was not related to the preceding paragraph, which disclosed the ranges for the ink droplets. The claimed combination of features was a mixture of features of different embodiments not disclosed as such. There was no clear and unambiguous disclosure that the ink droplets had the same ranges whether a digitally printed base coat was used or whether the surface of the container was directly printed on. On the contrary, the person skilled in the art knew that the kind of substrate had an influence on the diameter of the ink droplets on the surface. Thus, the requirements of Article 123(2) EPC were not met.

The description as originally filed only disclosed that one or more digital images were printed entirely on a base coat (see page 6, lines 16 to 19 of the published application). No embodiment was mentioned where the digital image was partly printed on the base coat. The latter did not make sense for the person skilled in the art.

- Opponent 6

It was not disclosed that a digital image was printed on at least a portion of a digitally printed base coat. Claims 14 to 16 as originally filed did not provide a basis for this feature due to their dependencies, as brought forward by opponent 3. Page 6, lines 16 to 20 of the published application also did not disclose this feature because it was clear from page 6, lines 3 to 7 and line 8 that a pre-treatment was necessary. The pre-treatment, however, was not claimed.

- Opponents 2 and 4

There was no direct and unambiguous disclosure for a digital image printed on a digitally printed base coat having the claimed diameter and resolution ranges. A combination of claims 1, 14 to 16 might be a non-conflicting option, which, however, was not disclosed as such. The embodiments disclosed on page 6, lines 15 to 20 of the published application were different non-linked embodiments. The embodiment "all or a portion of the base coat may be digitally printed" did not mention a digital image. The next embodiment, "one or more digital images are printed entirely on a base coat", did not disclose a digitally printed base coat. These different embodiments, even if non-conflicting, did not directly and unambiguously disclose the disputed subject-matter.

On page 6, lines 15 to 16 of the published application, the base coat was stated to improve the application of ink droplets. E.g. an improved wettability of the surface meant that a drop of a particular volume had a lower contact angle and a different size on the surface. Therefore, diameter ranges only hold for the container surface but not for a digitally printed base coat. Page 6, lines 8 to 12 of the published application disclosed a system 40 for the application of a base coat. The allegation that the system was the same as the system 40 on page 3, lines 22 to 30 of the published application did not prove that it was a digitally printed base coat since later on page 6, lines 16 to 18 it was disclosed that all or a portion of the base coat might be digitally printed.

Furthermore, page 6 of the published application did not mention the ink droplet diameter and resolution ranges. These were only mentioned on pages 1 and 3 of the published application.

The summary of the invention on page 1, lines 19 to 23 of the published application did not disclose a sufficient condition, and the passage on page 3, lines 14 to 21 of the published application disclosed the ink droplet diameter and resolution ranges only for a digital image printed directly on the container surface.

The statement on page 29 of opponent 4's letter dated 28 December 2018 that it was illogical not to print the digital image on a base coat was made in the context of inventive step and did not contribute to the discussion of the disclosure of the patent application.

By making a drawing of the different possibilities of the base coat and the digital image on the surface of the container according to page 6, lines 16 to 23 of the published application, it was demonstrated that there was no disclosure of a digital image printed partly on a digitally printed base coat. The system 40 shown in Figure 3 of the published application was used for the application of ink and not for the base coat.

Auxiliary request 1B: Allowability of amendments under Article 123(2) EPC

- Patent proprietor

Claim 1 of auxiliary request 1B disclosed the diameter and resolution ranges for the digital image. As the person skilled in the art would always print the image on the base coat, which was explicitly disclosed in dependent claim 17, the ink droplet diameter and resolution ranges for a digital image printed on a digitally printed base coat were directly and unambiguously disclosed. This could also be seen from Figure 6 as originally filed.

- Opponents

Opponent 3, in its written submissions, referred to the objections raised for the main request (see its letter dated 13 December 2018, point 7.2). According to opponents 2 and 4, claim 17 as originally filed depended on claim 16, which in turn depended on claim 14 but not on claim 15. Therefore, the arguments remained the same as for the main request. Figure 6 of the published application did not show the whole digital image but a transverse section. Also the disclosure on page 6, lines 8 to 23 of the published application could not provide a direct an unambiguous basis for the amendments of claim 1 of auxiliary request 1B.

Auxiliary request 11: Admittance of the objection under Article 123(2) EPC for the method claim

- Patent proprietor

The objection under Article 123(2) EPC concerning the combination of claims 1, 14, 15 and 16 as originally filed was only raised for the claim relating to the container but not for the method claim. Opponent 3's general reference in point 4.2 of its reply to the statement of grounds of appeal dated 13 December 2018 to the method claim was an unsubstantiated statement. Moreover, this objection had not been raised in the first-instance proceedings for claim 1 of auxiliary request 4, which corresponded to claim 1 of auxiliary request 12 in appeal proceedings. Therefore, it should not be admitted under Article 12(4) RPBA 2007 or taken into account in view of Article 12(4) and (2) RPBA 2007.

- Opponents 2 and 4

In the first-instance proceedings, the objection under Article 123(2) EPC concerning the combination of claims 1, 14, 15 and 16 as originally filed was discussed for claim 1 as granted (see decision under appeal, Reasons, point 2.2). As the corresponding features were the same for the container claim and the method claim, this objection did not constitute a fresh case.

Concerning the substantiation of this objection, the opponents referred to point 4.2 of opponent 3's reply to the statement of grounds of appeal dated 13 December 2018, where this combination of features was discussed for claim 1 of the main request as filed with the patent proprietor's statement of grounds of appeal. In the last paragraph of this point, opponent 3 mentioned that this objection was also valid for method claim 12 of the main request. Point 7.12 of opponent 3's reply explicitly stated that all objections raised for independent claim 12 of the main request were also valid for auxiliary request 11. It was not necessary to exactly repeat the same arguments.

Thus, this objection had been substantiated and should be admitted.

Auxiliary request 11: Allowability of amendments under Article 123(2) EPC

The parties had no further comments on the objection under Article 123(2) EPC against claim 1 of auxiliary request 11. Reference was made to corresponding objections against claim 1 of the main request as filed with the patent proprietor's statement of grounds of appeal.

Auxiliary request 12: Admittance of the objection under Article 123(2) EPC and allowability of amendments under Article 123(2) EPC

The parties had no further comments on the admittance of the objection under Article 123(2) EPC against claim 1 of auxiliary request 12 and the allowability of this request. Reference was made to the corresponding objections against claim 1 of the main request as filed with the patent proprietor's statement of grounds of appeal.