T 0511/24 26-06-2025

1. Claim 1 of the patent as granted (main request)- Inventive step in view of D2 (WO 2007/149760 A2), Articles 100(a) and 56 EPC

1.1 Distinguishing features

1.1.1 It is undisputed that document D2 anticipates features F1. and F1.1 to F1.4 of claim 1 of the main request.

1.1.2 The appellant argued that document D2 did not anticipate feature F1.5, namely that the outer face of the spray gun reservoir component comprised a retention feature. Indeed, a "face" in the context of present claim 1, and in the presence of so many other geometric features in said claim, should be understood as a flat surface forming part of the boundary of a solid object as shown by the Wikipedia article "Face (geometry)" (filed by the appellant with the statement of grounds as D21). The outer face of the reservoir component was therefore to be understood to be a generally flat surface that is part of the boundary of the lid. In the case that the ridge (254) with its undercut in D2 was to be considered to anticipate a retention feature according to claim 1 of the main request, this ridge with its undercut was not comprised in the outer face, but rather formed part of the locking tab protruding from the outer face. An outer face is to be understood differently from an outer surface.

1.1.3 The board disagrees. Firstly, the board considers the locking tab (250) with the ridge (254) and its undercut to anticipate a retention feature in the sense of the claim. Secondly, the board concurs with the opposition division in its finding on page 12 of the reasons for the decision under appeal that in D2 the protrusions ("interlocking tab assemblies", locking tab (250) and clamping tab (252)) of the lid 200 are to be considered as being part of the outer face since it cannot be concluded that any protrusion would be considered as not being part of an outer face. In this respect, the board rather follows the respondent's view that a "face" can comprise elevations, bevels, projections, or depressions and, hence, is not limited to "an essentially flat surface" as argued by the appellant (see for instance claim 4 of the patent in suit contradicting the appellant's own definition). As put forward by the respondent during the oral proceedings before the board, the locking tab (250), the clamping tab (252) and the lid are injection moulded as a single piece as shown in figure 4 of D2 and disclosed on page 6, lines 16 to 21. Thus, the locking tab (250) is seen as being part of the outer face of the lid 200 in D2. In fact, the only geometrical distinction that is required by the outer face in the patent in suit and also in claim 1 is that it extends away from the liquid outlet (feature F1.2), which is not at odds with the interpretation that a locking tab with its ridge and undercut can be considered as being part of the outer face. The board therefore concludes that feature F1.5 is anticipated by D2.

1.1.4 The appellant further argued that, in the case that the ridge (254) and its undercut was to be considered as a retention feature in the sense of the claim, this retention feature would not extend away from the centerline plane as required by feature F1.6. The alleged retention features extended rather parallel to the centerline plane drawn by the opposition division in the modified figure 2 of D2 on page 11 of the reasons for the decision under appeal.

1.1.5 The board is not persuaded by the appellant's arguments and rather concurs with the respondent that, according to claim 1 of the main request, the centerline plane is only required to include the longitudinal axis and to be perpendicular to the attachment plane (features F1.3 and F1.4). Since according to feature F1.4 the longitudinal axis is perpendicular to the attachment plane, then any plane including the longitudinal axis also meets the requirement of being perpendicular to the attachment plane. It follows that the centerline plane could have any possible orientation. In particular, the centerline plane in D2 could be perpendicular to the one identified by the opposition division on page 11 of the reasons for the decision under appeal. In that case, the ridges (254) with their undercut (retention features in the sense of the claim) extend away from the centerline plane, thereby anticipating feature F1.6.

1.1.6 With regard to the injection molding steps according to features F1.7 to F1.10, the respondent argued that claim 1 of the main request was not restricted to exactly two toolings. Although D2 was silent on the number of toolings employed, the claim did not exclude the possibility of employing more than two toolings, i.e. at least two toolings. Due to the geometry of the spray gun reservoir component of D2, the molding tooling clearly required more than two toolings (at least one tooling for the bottom and at least two for the top), thereby anticipating features F1.7 to F1.10.

1.1.7 The board is not persuaded by the respondent's arguments for the following reasons. While it agrees with the respondent that features F1.7, F1.8 and F1.10 do not limit the number of toolings to two toolings, feature F1.9 does imply a limitation at least for the number of toolings used for the top side of the spray gun reservoir component.

Indeed, feature F1.7 merely requires that the plastic injection molding tooling "includes" first and second tooling components, which leaves open the possibility of further tooling components collectively defining a cavity having a shape of the spray gun reservoir component, into which molten plastic is injected (feature F1.8). The step of manipulating the first and second tooling components along a slide tool path aligned with the retention feature according to feature F1.10 does also not rule out the possibility of further tooling components. However, with regard to feature F1.9 it was common ground of the parties, as it was confirmed during the oral proceedings before the board, that the term "release" in feature F1.9 was to be understood as making the molded component "accessible", for instance from the top, enabling thereby the component to be taken out of the mould. Therefore, the step of sliding the first and second tooling component relative to each other so as to "release" the spray gun reservoir component according to feature F1.9 can only be understood such that for the top part (or outer surface) of the spray gun reservoir component exactly two tooling components are specified in the method of claim 1 of the main request; otherwise any additional tooling components used for forming the entire outer surface would interfere the accessibility of the spray gun reservoir component and hence would impair it to be released.

1.1.8 The respondent argued that in the case that the claimed method required exactly two tooling components for the top surface, the particular geometry of the outer surface of the component of D2, including the clamping tabs and the locking tabs, did not exclude the possibility of using exactly two tooling components without any further tooling component, thereby anticipating feature F1.9. The asymmetry of the locking tabs (256) can be overcome by adapting the shape of the two tooling components in that area, taking into account the sliding direction of the tooling components.

1.1.9 The board disagrees. Although it is concurred that the possibility of using exactly two toolings for the outer surface is possible for the spray gun reservoir component of D2, this document is completely silent about the molding method. It follows that D2 fails to provide a direct and unambiguous disclosure of a sliding of a first and second tooling component relative to one another to separate those and release the spray gun reservoir component in accordance to feature F1.9.

1.1.10 In view of the above considerations, the board concludes that subject-matter of claim 1 of the main request is novel over D2 and differs from the known method of D2 solely in feature F1.9.

1.1.11 At the oral proceedings before the board the respondent clarified that all the arguments brought forward in view of the public prior use D16 (images of a cup lid) related to an independent objection of lack of novelty and, hence, were not to be taken into account when assessing the lack of novelty objection in view of D2.

1.2 Technical effect and problem to be solved

It is common ground that starting from D2, the distinguishing feature F1.9 provided the technical effect of reducing the number of toolings for the manufacturing method. The problem to be solved is seen by the parties as providing a simpler and faster injection molding method for manufacturing a spray gun reservoir component, to which the board agrees.

1.3 Obviousness

1.3.1 The appellant argued that D2 gave no indication of scoring lines of any kind, so that the skilled person would have no hint starting from D2 as to how to design the molding tools for the injection molding process, let alone to select a first and second tooling component such that sliding of these tool components release the spray gun reservoir component.

1.3.2 In addition, the appellant argued that for certain parts of the spray gun reservoir component of D2 (such as the spout, the clamping tabs (252) and the locking tabs (250) a certain degree of precision is needed, e.g. a good surface quality. In view of this need for precision, the skilled person would be rather motivated to design the molding process with dedicated tooling components for the parts needing an enhanced precision, thereby arriving at more than two tooling components and therefore not at the subject-matter of claim 1 of the main request.

1.3.3 The board is not persuaded by the appellant's arguments and rather concurs with the respondent that starting from the method of D2, the skilled person would consider as a first attempt to use as few tooling components as possible, namely for the sake of simplicity and speed of the injection molding process. The common general knowledge of the skilled person, depicted by figure 3-46 of document D14 ("The Complete Part Design Handbook", Hanser 2006), already gives an indication on how an injection molding tooling for a concave part would look like. As it has been concluded in points 1.1.8 and 1.1.9 above, the geometry of the spray gun reservoir component of D2 allows an injection molding method using exactly two top tooling components, or "slides" as identified in figure 3-46 of D14, contrary to the appellant's unfounded allegations. In this respect, the board is convinced that by applying undercuts where needed as taught in D14 (see figures 3-46 and 3-47) the skilled person would be able to obtain the retention features of the lid of D2, including the holes in each clamping tab (252) by using exactly two top tooling components. For instance, where the holes in the clamping tabs (252) are to be formed, the two top tooling components may come locally in contact with each other in view of the schematic form of the clamping tabs (252) shown in figure 2, such that they can slide along a slide tool path that is aligned with the retention features to form the retention features including the holes and release the lid.

1.3.4 With regard to the alleged need of special toolings for particular parts of the spray gun reservoir component of D2, the board notes that D2 is completely silent on this alleged need of an enhanced quality for any part of the component. The appellant's arguments in this respect can only be considered as a mere allegation.

1.3.5 It follows that starting from D2 as closest prior art and in view of the technical problem, the skilled person would be motivated to implement a first and second tooling components which after their sliding and separating release the spray gun reservoir component, thereby arriving at subject-matter of claim 1 of the main request in an obvious manner.

2. Auxiliary requests 1A to 1D, 3 to 11, 11A to 11D, 12, 12A to 12D, 13, 13A to 13D and 14 to 16 - Admittance, Articles 12(2) and (4) RPBA

2.1 The decision under appeal is based solely on the main request and on auxiliary requests 1, 2 and the maintained version. These auxiliary requests were filed in opposition proceedings as auxiliary requests 9, 13 and 8b, respectively. Auxiliary request 1 (auxiliary request 9 in opposition proceedings) was withdrawn during the oral proceedings before the board.

2.2 Since the decision is not based on auxiliary requests 1A to 1D, 3 to 11, 11A to 11D, 12, 12A to 12D, 13, 13A to 13D and 14 to 16 (in the following: "the rest of the auxiliary requests"), the re-ordering of these requests in appeal proceedings before auxiliary request 8b, i.e. the maintained version, is regarded as an amendment to the appellant's case, the admittance of which being subject to the board's discretion under Article 12(4) RPBA.

It is noted that "the rest of the auxiliary requests" have been re-numbered in the appeal proceedings compared with the opposition proceedings and none of "the rest of the auxiliary requests" corresponds to auxiliary request 2 in the appeal proceedings (named auxiliary request 13 in opposition proceedings). The latter, to which no objection regarding admittance has been raised, is discussed below under point 3.

2.3 The appellant argued that "the rest of the auxiliary requests" were admissibly raised and maintained during opposition proceedings, so that they could not be regarded as amendment. Furthermore, the appellant argued that these requests could contain patentable subject-matter. The reason for downgrading these requests during opposition proceedings was the need for procedural economy and an attempt to maintain the patent in some kind of form. In the meantime however, reasons for the decision under appeal and the preliminary opinion of the board were known, so that a consideration of "the rest of the auxiliary requests" was justified.

2.4 The board disagrees for the following reasons. As correctly indicated by the respondent, it is established case law of the Boards of Appeal that auxiliary requests only form the basis of the decision under appeal if the deciding body has also dealt with and decided on these requests (see for example T 1135/22, reasons 4.3). According to the minutes of the oral proceedings before the opposition division, the appellant downgraded "the rest of auxiliary requests" compared to auxiliary request 8b, which ultimately became the version held by the opposition division to meet the requirements of the EPC. With its course of action, the appellant prevented the opposition division to decide on "the rest of the auxiliary requests" submitted with the statement setting out the grounds of appeal. As a consequence, although "the rest of the auxiliary requests" may have been admissibly raised, these requests have not been "maintained in the proceedings leading to the decision under appeal" as requested by Article 12(4) RPBA due their downgrading in opposition proceedings. Thus, the board cannot agree with the appellant that "the rest of the auxiliary requests", now upgraded before the maintained version, is not an amendment in the sense of Article 12(4) RPBA.

2.5 The board, considering that the main aim of appeal proceedings is that of reviewing the decisions of the administrative departments of the EPO (Article 12(2) RPBA), does not consider it appropriate that the appellant starts a completely fresh case on appeal, thereby avoiding a first decision from the competent first instance department of the EPO. As a matter of fact, the upgrading of these requests in appeal proceedings is contrary to procedural economy as it would compel the board either to give a first ruling on the requests or to remit the case to the opposition division. With respect to the decision under appeal and the preliminary opinion of the board, the appellant failed to identify any specific part that could have justified the admittance of upgrading "the rest of auxiliary requests". The fact that the "landscape has changed", as argued by the appellant at the oral proceedings before the board, due to the issuance of the decision under appeal and of the preliminary opinion of the board, cannot justify the re-ordering of the requests.

2.6 In view of the above considerations, the board exercises its discretion pursuant to Article 12(4) RPBA to not admit "the rest of the auxiliary requests" (auxiliary requests 1A to 1D, 3 to 11, 11A to 11D, 12, 12A to 12D, 13, 13A to 13D and 14 to 16) into the appeal proceedings.

3. Auxiliary request 2 - Inventive step in view of D2, Article 56 EPC

3.1 The appellant argued that document D2 did not anticipate a retention feature recessed within the outer face as now required by feature F1.6' of claim 1 of auxiliary request 2. In particular, if the ridge with its undercut in D2 was to be considered the retention feature, this ridge would neither be comprised by the outer face and nor be recessed within the outer face. In contrast, the retention feature of D2 rather protrudes from the outer face.

3.2 The board disagrees. As already concluded for the main request in point 1.1.3 above, the board considers that in D2 the protrusions of the lid (200) in general and the locking tab (250) with its ridge (254) and undercut in particular are to be considered as being part of the outer face. With this understanding of the outer face the undercut is considered to be recessed within the outer face, thereby anticipating feature F1.6' of claim 1 of auxiliary request 2. With regard to new feature F1.' it was not disputed by the appellant that document D2 discloses a component in the form of a lid.

3.3 Since the amended features in claim 1 of auxiliary request 2 are anticipated by D2, the only distinguishing feature remains to be F1.9. Consequently, the subject-matter of claim 1 of auxiliary request 2 lacks inventive step for the same reasons as those provided above for the main request.

4. Conclusions

From the above considerations, the board concludes that the appellant has not convincingly demonstrated that the main request and auxiliary request 2 meet the requirements of Article 56 EPC, while the rest of the auxiliary requests are not admitted into the appeal proceedings. In consequence, the appeal is to be dismissed.