T 0005/81 (Production of hollow thermoplastic objects) 04-03-1982
A posteriori analysis
Decision subject to appeal
Inventive step - person skilled in the art
Inventive step - abstract approach
Reimbursement of appeal fee
Appeal fee - reimbursement
I. European patent application No. 78 200 324 filed on 30 November 1978 (publication No. 0 002 302) was refused by decision of the Examining Division dated 27 November 1980. Claim 1, on which that decision is based, is worded as follows: Process for producing hollow objects from thermoplastic performs having an open end with a neck moulded at least partially into its final shape, in which the object is blow-moulded by introducing an expansion fluid into the preform within a closed mould by means of a blow mandrel inserted into the preform from the open end, and in which, with the insertion of the blow mandrel, the premoulded neck opening of the preform is isolated from the portion of the preform to be expanded under blowing, characterised in that the region thus isolated is cooled by flushing with a cooling fluid prior to blowing. Claim 2 is set out as follows: Process according to Claim 1, characterised in that the preforms used are injection-moulded or blow-moulded. Dependent Claims 3-9 concern particular embodiments of the process as in Claim 1.
II. The ground for refusal was that although the subject-matter of the application is new, it does not involve an inventive step in relation to the following prior documents: (1) US-A- 3 048 889 (2) US-A- 3 717 429 (3) FR-A- 2 150 344, referred to hereafter as prior documents 1, 2 and 3 respectively.
III. The decision points out that the features in the preamble of Claim 1 are known from prior document 1 and that those in the characterising portion do not involve an inventive step, again by reference to prior document 1 and also to prior document 2.
IV. The Examining Division did not accept Claims 2 to 9 because they relate to the Claim 1 adjudged to be unallowable. As regards Claims 3,4 and 6-10, the Examining Division raised the further objection of there being no inventive step, referring in the case of Claims 3 and 4 to prior documents 3 and 2 respectively. As regards Claim 5, the Examining Division pointed out that its subject-matter might possibly, in combination with the features of Claims 1 and 2, form the basis for a new Claim 1. The applicant did not, however, make use of this possibility.
V. On 8 January 1981 the applicant lodged an appeal against that decision. The appeal fee was paid and the Statement of Grounds filed in due time. The appellant proposes amending Claim 1, if need be, and requests reimbursement of the appeal fee.
VI. The appellant argues that the problems and solutions relating to the processes according to prior documents 1 and 2 are different from the problem and solution indicated in the application. Even by combining the teaching of prior documents 1 and 2, a person skilled in the art would never manage to solve the problem pertaining to the invention, which had never been formulated previously. Thus, the invention as defined by the claims complies, he asserts, with the requirements of Article 56 EPC.
VII. Since the appellant considers that in refusing Claim 2 there was a failure to act in accordance with Articles 96(2) and 113(1) EPC, he is requesting that the appeal fee be reimbursed pursuant to Rule 67 EPC. As regards Claim 5, the appellant asserts that, in the only communication sent, the examiner failed to comment on that claim, an omission which is contrary to Article 96(2) and Rule 51(3) EPC and which also justifies reimbursement of the appeal fee.
VIII. At the invitation of the Board of Appeal, the appellant submitted in due time a new version of the claims and corresponding amendments to the description. The new Claim 1 is worded as follows: Two-stage process for producing hollow objects from thermoplastic preforms moulded in a preform mould in the first stage and having an open end with a neck at least part of which has been moulded into its final shape in the first stage, in which process the object is blow-moulded in the second stage by introducing an expansion fluid into the preforms inside the second-stage moulds by means of a blow mandrel inserted into the preforms from the open end and in which, with the insertion of the blow mandrel, the moulded neck of the preforms is isolated from the portions of the preforms to be expanded under blowing, characterised in that the preforms used are injection-moulded or blow-moulded and that, prior to final blowing, the region thus isolated is cooled by flushing with a cooling fluid introduced into the space between the blow mandrel and the inner wall. The new dependent Claims 2 to 8 contain only minor differences of detail in relation to the corresponding previous claims.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. Turning first to the alleged violation of formal steps, it is necessary to consider the Examining Division's procedure regarding Claim 1. In his communication the examiner raised sufficiently reasoned objections based on Article 56 EPC (in fact, Article 52 in conjunction with Article 56 EPC; lack of inventive step) and Article 84 EPC (claim not supported by the description). As a means of overcoming the second objection the examiner suggested introducing "a statement indicating that cooling takes place prior to blowing". This suggestion does not imply that the original Claim 1, if so amended, would be acceptable as regards Articles 52 and 56 EPC. On the contrary, in the same communication the examiner noted that Claim 7, containing a similar statement, did not have any inventive features and could not itself give rise to an acceptable claim either. The examiner's suggestion was made for two purposes, firstly so as to mention all the objections to the application and secondly so as to give some guidance for drafting an amended Claim 1, which, in the examiner's view, could be based on the features of Claim 6 (clearly in combination with the features of Claim 1. The new Claim 1 submitted in response to the communication does not contain the features of Claim 6; the only differences in relation to the original version of Claim 1 take the form of some amendments referring to the state of the art, and the statement suggested by the examiner. The question of whether or not it was possible to refuse the application without issuing a second communication has to be decided in the light of Article 113(1) EPC. The point at issue is whether the decision is deliverable on grounds on which the appellant has had an opportunity to present his comments. In the present case, the Examining Division's procedure met this requirement, since the lack of inventive step in relation to prior documents 1 and 2, on which the decision in respect of Claim 1 is based, had been previously brought to the attention of the applicant. Thus, the part of the decision concerning Claim 1 is not marred by a substantial procedural violation. The appellant himself seems to share this opinion, as the grounds of appeal do not contain any arguments to that effect.
3. Therefore, the question raised by the appellant of whether there was a procedural violation regarding Claims 2 and 5 is immaterial. Under Article 97(1) EPC, a European patent application which fails to meet one of the requirements of the Convention has to be refused in its entirety, without it being necessary to consider whether the application as a whole, e.g. a dependent claim, might contain material indicative of an inventive step.
4. Accordingly, the arguments concerning Claims 2 to 9 cannot constitute the ratio decidendi of the decision. An alleged violation affecting the part of the decision cannot be a substantial violation within the meaning of Rule 67 EPC. Nevertheless, the Board of Appeal feels obliged to examine the procedural objections raised by the appellant regarding Claims 2 and 5.
5. In his Statement of Grounds the appellant expresses surprise that Claim 2 was refused merely because it relates to Claim 1 and without being commented on by the examiner. As already mentioned in point 3 above, the refusal of the application correctly met the formal requirements, Claim 1 having been disallowed, and the mere fact that a completely new Claim 2 was submitted to the Examining Division does not affect the question of whether or not Claim 1 is allowable. Since the Examining Division considers and decides upon the application only in the text submitted to it or agreed by the applicant (Art. 113(2) EPC), there was no obligation under these circumstances to invite the applicant to make a further amendment of the claims.
6. In the case at hand, the scope of the present analysis does not extend to assessing the Examining Division's decision in terms of the procedure's fairness and economy. Nevertheless, it has to be noted that in submitting the new Claim 2 the applicant did not explain its inventive character. Such explanations were provided for the first time in the Statement of Grounds of the appeal. Thus, the applicant did not indicate that he had submitted the new Claim 2 as a reserve claim with a view to possible limitation of Claim 1, a possibility not even envisaged in the grounds of appeal.
7. As regards Claim 5, in his Statement of Grounds the appellant submits that the examiner failed to act in accordance with Article 96(2) and Rule 51(3) EPC by not commenting on that claim. But an appeal may relate only to a decision subject to appeal within the meaning of Article 106(1) EPC and not to preparatory measures. Article 96(2) and Rule 51(3) EPC apply exclusively to that preparatory procedure. A failure to comply with these requirements could not be taken into consideration unless it had some influence on the decision to refuse, as in the case of a breach of Article 113(1) EPC. The appellant's objection is unfounded not only for this reason but also because, as already mentioned in point 2 above, the examiner did comment on the content of Claim 5 by drawing attention to the possibility of formulating an independent claim based thereon. Claim 5, as comprised in the claims on which the decision to refuse was based, corresponds to Claim 6 in the original text on which the examiner commented in his communication. Since the appellant did not make use of that possibility, the Examining Division was not obliged to discuss it when refusing the application on the ground that Claim 1 was not acceptable. The allusion thereto in the reasons for the Decision does not form part of the ratio decidendi and was intended solely to demonstrate that the Examining Division was aware of the fact that the application might contain patentable subject-matter. A refusal under these circumstances is not open to challenge, as already explained in point 3 above.
8. To sum up, since the decision is not marred by a substantial procedural violation, the request for reimbursement of the appeal fee pursuant to Rule 67 EPC cannot be granted.
9. The wording of the claims and of the description as submitted in the course of the appeal procedure cannot be faulted as to form, because it is adequately based on the original documents.
10. The invention as defined by Claim 1 satisfies the requirements of novelty and inventive step, for the following reasons: ...
11. Of course, "the prevention of deformation" can certainly be considered as a problem common to prior document 1 and the application, but the actual problem explicitly indicated in prior document 1 (the prevention of "necking down" under the preform's own weight in the process of its formation during the first stage) does not correspond to the problem proper of the application (the prevention of deformation in a portion already moulded during the first stage) and does not suggest it either. Thus, it cannot be said that the invention resides only in replacing an indirect neck-cooling process (as in prior document 1) with a direct cooling process (by flushing, known per se, cf. prior document 2). Such a conclusion would merely be the result of a posteriori analysis, i.e. an interpretation of the prior documents as influenced by the problem solved by the invention, while the problem was neither mentioned or suggested by the authors of those documents nor known to the ordinary reader, that is to say the person skilled in the art. The comparison of a problem indicated in or deriving from a prior document with that indicated in the application must avoid an excessively abstract approach; as the degree of abstraction increases so does the likelihood of discovering points of similarity, but at the same time the approach becomes further removed from the thinking of the person skilled in the art, which, being oriented towards practicalities, means that the points suggested to him by a prior document remain relatively limited in scope. Therefore, the teaching of a document may have narrower implications for a person skilled in the art and broader implications for a potential inventor who first recognises the problem on which his future invention is to be based. The assessment of inventive step must consider solely the limited teaching for the person skilled in the art. .....
15. Claims 2 to 8 are also allowable, because they cannot be faulted either on formal or substantive grounds.
For these reasons, it is decided that:
1. The decision of the Examining Division of the European Patent Office dated 27 November 1980 is set aside.
2. The case is remitted to the first instance with the order to grant a European patent on the basis of the following documents:...
3. The request for reimbursement of the appeal fee pursuant to Rule 67 EPC is refused.