T 1788/21 22-03-2023

1. Auxiliary request 2 - Admittance, Article 12(4) RPBA 2020 and prohibition of reformatio in peius

1.1 During the oral proceedings before the opposition division, the respondent submitted a new auxiliary request 1, according to which the patent in suit was maintained. In this respect, the appellant argued in point V of the statement of grounds of appeal that the original auxiliary requests 1 to 8, and therefore also auxiliary request 2, were apparently not further pursued.

1.1.1 The Board disagrees. Contrary to the argument of the appellant, the Board fails to identify anything in the decision under appeal or in the minutes of the oral proceedings before the opposition division that could suggest that auxiliary requests 2 to 8, in particular auxiliary request 2, were not further pursued or not maintained in opposition proceedings.

1.1.2 Consequently, the re-filing of auxiliary request 2 in appeal is not considered an amendment in the sense of Article 12(4) RPBA 2020 and, therefore, is part of the appeal proceedings (see document CA/3/19, explanatory remarks on Article 12(4) RPBA 2020).

1.2 During the oral proceedings before the Board, the appellant argued that the subject-matter of claim 1 according to auxiliary request 2 was an aliud to the subject-matter of claim 2 of the patent as maintained by the opposition division. This would result in an improvement of the patent proprietor's position putting the opponent and sole appellant in a worse situation than if it had not appealed, contrary to the principle of prohibition of reformatio in peius (see G 9/92 and G 4/93).

1.2.1 In particular, the appellant indicated that by replacing the feature relating to the orientation unit of the apparatus of claim 2 of the maintained version

"..., where the inner wrapping (3) is oriented according to an input plane (A), releases the inner wrapping (3) to the second wrapping unit (15) in an out put station (S2), where the inner wrapping (3) is oriented ..."

by the feature in claim 1 of auxiliary request 2

"..., where the article (3) is oriented according to an input plane (A), releases the inner wrapping (3) to the second wrapping unit (15) in an out put station (S2), where the article (3) is oriented ..."

the orientation unit of auxiliary request 2 was not encompassed by the orientation unit as claimed in the maintained version. As a result, the subject-matter of auxiliary request 2 was now distinct from the subject-matter of the maintained version, and the respondent's position was improved without its having appealed the decision of the opposition division.

1.2.2 The Board is not persuaded by the appellant's arguments for the following reasons.

It cannot be agreed with the appellant that the subject-matter of claim 1 of auxiliary request 2 is aliud to the subject-matter of claim 2 of the maintained version. Indeed, both claims are directed to the same physical entity, namely a packing machine comprising a first and second wrapping unit and an orientation unit.

Furthermore, the Board is not convinced that, taking into consideration the claims as a whole, the combination of the replaced features and the newly-added features (such as the features relating to the second wrapping unit) in claim 1 of auxiliary request 2 clearly represents at least no worsening in the respondent's position with respect to the maintained version.

In this light, the Board concludes that the consideration of auxiliary request 2 is not contrary to the prohibition of reformatio in peius.

1.3 In view of the above, auxiliary request 2 is admitted into the appeal proceedings.

2. Auxiliary request 2 - Inventive step, Article 56 EPC

2.1 The following findings on inventive step of the subject-matter of claims 1 and 6 of auxiliary request 2 correspond substantially to the view of the Board which was communicated to the parties with the communication pursuant to Article 15(1) RPBA 2020 (see point 9 thereof). The parties neither reacted nor objected, orally or in writing, to the opinion expressed in that communication. After having reconsidered all relevant legal and factual aspects of the case, the Board does not see any reason to deviate from its preliminary opinion and confirms it as definitive for the present decision.

2.2 It is common ground that in auxiliary request 2 features from claim 8 according to the patent as granted have been added to independent claims 1 and 6 (see point V.2 of the statement of grounds of appeal and point 4.1 of the reply to the statement of grounds of appeal).

2.3 The appellant argued in point V.2 of the statement of grounds of appeal that since the added features of claim 8 as granted were already anticipated by any of documents D2, D3, D6 or D12, the subject-matter of claims 1 and 6 according to auxiliary request 2 did not involve an inventive step.

2.4 The Board identifies the following attacks against claims 1 and 6 according to auxiliary request 2 from the appellant's statement of grounds of appeal:

- D6 as closest prior art in combination with the teachings of any of D3, D4 or D5 (point IV.2.1. of the statement of grounds of appeal) in further combination with the teachings of any of D2, D3, D6 or D12 (point V.2 of the statement of grounds of appeal);

- D15 as closest prior art in combination with the teachings of any of D1, D3, D4, D5 or D10 (point IV.2.2 of the statement of grounds of appeal) in further combination with the teachings of any of D2, D3, D6 or D12 (point V.2 of the statement of grounds of appeal); and

- a general reference to earlier submissions in opposition proceedings (point IV.3. of the statement of grounds of appeal).

2.5 With regard to the lines of attack based on the teaching of D5, the Board notes that these objections were not raised and/or maintained against claims 2 and 9 as maintained by the opposition division which could have applied to claims 1 and 6 according to auxiliary request 2. Therefore, the opposition division could not decide on this matter.

2.5.1 Considering that the primary object of the appeal proceedings is that of reviewing the decisions of the administrative departments of the EPO (cf. Article 12(2) RPBA 2020), and that in accordance with Article 12(6), second sentence, RPBA 2020 the Board shall not admit objections which should have been submitted, or which were no longer maintained in opposition proceedings, the lines of attack based at least partly on the combinations of D6 with D5 and D15 with D5 are not admitted into appeal proceedings under Article 12(6), second sentence, RPBA 2020.

2.6 It is uncontested that the subject-matter of claims 1 and 6 according to auxiliary request 2 differs from the known packing machines and wrapping methods of either document D6 or D15 at least in that the rotation axis of the orientation drum is oblique i.e. neither parallel nor perpendicular, relative to the input plane and to the outlet plane and/or the rotation axis of the orientation drum is oblique, i.e. neither parallel nor perpendicular, relative to the walls of the pocket supported by the drum.

2.6.1 According to the appellant, starting from either document D6 or D15 as closest prior art, the skilled person is faced with the task of simplifying or replacing the complex orienting wheel 57 of D6 or simplifying the complex rotating mechanism 10 of D15. For this purpose, the skilled person would take from documents D3 or D4 (and also from D5) the technical teaching that the reorientation of articles, also of cigarette packs or of cigarette packaging, can be greatly simplified by means of a rotary turret-like rotating unit whose axis of rotation is inclined with respect to the input and output planes. In addition, it is clear for the skilled person from figure 2 of D10 that revolving turret-type reorientation units with an inclined axis of rotation can be used for cuboid packaging, so that the skilled person would be motivated to incorporate the teaching of D10 in the known packing machine and wrapping method of D15.

2.6.2 The Board is not persuaded by the arguments of the appellant and concurs with the findings of the opposition division in points 5.1.2 and 5.1.4 of the reasons for the decision under appeal, that the skilled person would be discouraged from combining the teachings of any of documents D1, D3, D4 or D10 with the known packing machines of either D6 or D15, since this would involve a complete redesign and major structural changes to those machines. Contrary to the allegation of the appellant (see page 15, second paragraph of the statement of grounds of appeal), the Board is convinced that such a reorientation of the drum axis has implications that extend beyond the customary measures that a skilled person could take without exercising an inventive skill. In sum, the introduction of the teachings of any of D1, D3, D4 or D10 (and even of D5 if this teaching could be taken into account) in the known apparatus of either D6 or D15 can only be the result of an ex post facto analysis.

2.6.3 It follows that even if the features introduced from claim 8 as granted were considered to be rendered obvious by the teachings of any of D2, D3, D6 or D12, the skilled person would still not arrive at the subject-matter of claims 1 and 6 of auxiliary request 2 in an obvious manner starting from either of D6 or D15 as closest prior art.

2.7 As for the general reference to earlier submissions in opposition proceedings made by the appellant in point IV.3. of the statement of grounds of appeal, the Board considers such a reference to submissions before the opposition division unsubstantiated in the sense of Article 12(3) RPBA 2020. Hence, the Board decided not to admit these into the appeal proceedings pursuant to Article 12(5) RPBA 2020.

2.8 It follows that the appellant has not submitted admissible and convincing objections under Article 56 EPC that could prejudice the maintenance of the patent based on the claims of auxiliary request 2.

3. Amended description

The respondent submitted during the oral proceedings before the Board an amended description adapted to the claims of auxiliary request 2, to which the appellant did not raise further objections.