T 0032/93 21-09-1995

1. The appeal is admissible.

2. Requirements of Article 123(2) and (3) EPC

Claim 1 maintained according to the appealed decision is directed to an apparatus ("container housing mounted slides ... "). It has been reworded as use claim ("use of a container ... as container housing mounted slides ... ") containing all features of said apparatus claim. In view of decision G 0002/88 of the Enlarged Board of Appeal, such a claim is not open to objection under Article 123(3) EPC. Corresponding considerations apply to claims 2 to 5.

As to the requirements of Article 123(3) of claims 6 to 11, the Board is satisfied that said claims comply with said article, too.

The same applies to all claims with respect to Article 123(2) EPC.

3. Novelty

None of the available documents discloses insertion of a plurality of mounted slides into one of a plurality of transverse elongated pockets of the well-known folded containers destinated for inserting film strips. Therefore, the claimed subject-matter is novel. Since novelty is not in dispute, it is not necessary to give detailed reasons for this finding.

4. Inventive step of claim 1

4.1. Use of foldable containers consisting of a continuous strip of transparent material and comprising individual pockets as containers housing mounted slides, wherein each pocket is adapted to contain one mounted slide and wherein each pocket is constructed such that one slide is inserted into a single pocket through its open end, represents the nearest prior art and is for example described in D11.

With respect to the use as defined by claim 1, said prior art has particularly the drawback that automatical packaging of mounted slides in photographic laboratories is relatively slow.

4.2. The problem underlying the subject-matter of claim 1 is, therefore, to allow accelerated automatic packaging of mounted slides.

4.3. It is undisputed that containers for film strips or sections having the characteristics of claim 1 were already existing before the priority date of the patent-in-suit and that such containers could be used, if of convenient size, also for mounted slides. Since there were numerous sizes of films on the one hand and of mounted slides on the other hand, there did exist containers provided for housing film sections also appropriate to contain a predetermined plural number of mounted slides of a certain format and to insert such slides into the pocket through its open end whereby the insertion of a slide moves a previously inserted slide forward into the pocket. Containers with the essential features of the container described in claim 1 of the attacked patent are disclosed in D10.

However, it is the opinion of the Board of Appeal that the skilled person would not have tried to use such containers for inserting and housing mounted slides. In view of the considerably different mechanical characteristics of pieces of film in comparison with mounted slides, the skilled person would not have thought that the prior art relating to film packaging could be used in solving any problems concerned with the packaging of mounted slides. Furthermore, the kind of packaging of mounted slides known up to the priority date of the contested patent is so different from the kind of packaging of film sections into the container as defined in claim 1 (see e.g. D11) that any change which is leading to such a use would be obvious only in hindsight.

4.4. The Appellant alleges that the skilled person, when seeking for a better method for inserting mounted slides into pockets, would find D27 from which he would learn to insert a (further) film strip into an elongated pocket by moving a previously inserted strip forward. Only simple tests would be necessary to adapt the container of D27 in such a manner that it is suitable for mounted slides.

The container of D27 (jacket J) is adapted to insert and house very thin microfilm strips and comprises two relatively stiff rectangular panels (10, 11) with adhesively applied longitudinal ribbons (13 to 17) defining rectangular longitudinal pockets (channel-like chambers A through E) having substantially the same thickness as the microfilm (see e.g. column 5 lines 21 to 23). The mutual position between pocket and trackway along which the continuous film strip is advanced during insertion must be extremely accurate, as any slight displacement of the container from its proper position makes the insertion difficult (see column 5 lines 34 to 36); for this reason, the engagement between pins (19A, 20A) of a platform of a carriage and locating holes (19, 20) of the container (J) is necessary. The presence of said pins does not allow the container to be formed from a continuous strip. The container cannot be produced by simply welding two sheets of transparent material, and this because said ribbons have to be applied. Due to the fact that the channel-like pockets have to be substantially as narrow as the microfilm to avoid overlapping of the preceding film section by the following one, entrance slots (10A to 10E) in the upper panel (10) of the container are necessary, because the open ends of the pockets are too tight to insert the film (see column 3 lines 1 to 3 and 16 to 18). The film sections are thus advanced along a way at an angle. Further means (e.g. pressure roller 46, jacket clamp 34, inclination of the platform for the container J with respect to the film trackway) are necessary to allow correct insertion of the film sections.

Therefore, a container of this type and the operating machine for inserting the microfilm sections into such a container according to D27 are unsuitable for mounted slides, which are rigid and cannot advance along a curve. As a consequence, the skilled person when trying to solve the above-cited problem, namely to improve the speed of packaging mounted slides, would not take into account any teaching from D27.

But even if he did, he would not arrive at a subject-matter with the features of claim 1. Since the operating machine is unsuitable for the containers of the type described in claim 1 of the patent in suit, he would not take into consideration use of such containers, but rather adapt the dimensions of the container of D27 to the dimensions of the mounted slides and omit said entrance slots. The result would be a rectangular, relatively stiff container with ribbons and locating holes.

4.5. The Board has also considered the remaining documents on file and found them non-prejudicial to claim 1. Therefore, said claim involves an inventive step within the meaning of Article 56 EPC and consequently said claim is allowable under Article 52(1) EPC.

5. Since the independent method claim 6 contains all features corresponding to the features of claim 1, a corresponding reasoning leading to the same result is valid for claim 6, too.

6. The dependent claims concern particular embodiments of the subject-matters of claims 1 or 6. Therefore, they are likewise allowable under Article 52(1) EPC.

7. However, the description has to be brought into conformity with these claims and the relevant prior art to be cited and disclosed in the introductory part of the description (Rule 27(1) EPC).