T 1659/08 () of 14.9.2011

Summary of Facts and Submissions

I. The appellant (patent proprietor) lodged an appeal against the interlocutory decision of the Opposition Division, posted on 9 July 2008, by which European patent No. 1 173 336 was maintained in amended form.

The Opposition Division held that claim 1 of the main request filed on 19 April 2004 was not novel and that claim 14 of said request did not involve an inventive step.

The Opposition Division further held that the grounds of opposition under Article 100(a) EPC (lack of novelty, Article 54 EPC, and lack of inventive step, Article 56 EPC) did not prejudice the maintenance of the patent on the basis of claims 1 to 20 filed as the first auxiliary request on 6 February 2007.

II. The appellant requested that the decision under appeal be set aside, and that the patent in suit be maintained on the basis of the sets of claims filed as the main request on 19 April 2004.

The respondent (opponent) did not file any request or submission in the appeal proceedings.

III. Claim 1 of the main request reads as follows:

"1. Method for printing objects, the method at least consisting in, on the one hand, applying printing ink (29) on a carrier (2) consisting of a flexible layer-shaped material and, on the other hand, transferring the printing ink (29) to the object (5) to be printed, by bringing said carrier (2) and the object (5) in mutual contact and by pressing-on said carrier, by means of supplementary pressing means (6) making use of fluid pressure, more particular air pressure, at least partially around the object to be printed, characterized in that the fluid pressure is exerted upon the side (17) of the carrier (2) which is opposite the side (18) which is brought into contact with the object (5) to be printed."

IV. The following document was referred to in the appeal proceedings:

D1 US-A 4,098,184

V. The arguments of the appellant can be summarized as follows:

In the decision under appeal the Opposition Division took the view that claim 1 of the main request lacked novelty over document D1, thereby referring to a first passage in column 2, lines 8 to 29, and a second passage in column 3, line 59, to column 4, line 2, of said document. By doing so, the Opposition Division combined two distinct embodiments of document D1. However, for the purpose of novelty, different embodiments in a document may not be combined.

In the first passage a method for printing a convex object was disclosed in which a fluid pressure acting on an image carrying flexible medium caused said flexible medium to bulge out towards the object onto which the image was to be printed. As a next step, the image carried on the flexible medium was transferred onto the convex surface of the object to be printed by causing the convex surface to intimately contact with the bulged surface of the flexible medium along its peripheral surface. However, it was not disclosed in said passage that the flexible medium was "pressed-on ... at least partially around the object to be printed" as required by claim 1 of the main request.

In the second passage a multi-step method was disclosed in which a fluid pressure was exerted on a flexible membrane, which in turn exerted a pressure on the flexible medium. Hence fluid pressure was not exerted on the flexible medium as required by claim 1 of the main request.

The subject-matter of claim 1 of the main request was therefore new vis-à-vis document D1, Article 54 EPC.

Reasons for the Decision

Objection of lack of novelty, Article 54 EPC

Document D1 relates to a method and an apparatus for printing any desired images on an object having a convex or raised surface (see column 1, lines 6 to 13).

In the section "Summary of the invention" (see column 2, lines 8 to 29) the following is stated:

"According to the present invention, in one aspect thereof, there is provided a method for printing an image on a convex surface of an object to be printed, which comprises steps of arranging an image to be transferred, the image being carried on a flexible medium, and an object having a convex surface, on which surface the image is to be printed, in a mutually opposed relationship with a certain definite space interval provided between them; causing the flexible medium carrying thereon the image to be transferred to expand or bulge out toward the convex surface of the object, onto which the image is to be printed, by causing a fluid pressure to act on the flexible medium from one side thereof opposite to that where the image is carried, while controlling the degree of expansion of the flexible medium within a predetermined restrictive zone; and transferring the image carried on the flexible medium onto the convex surface of the object to be printed by causing the convex surface to initimately [sic] contact with the bulged surface of the flexible medium along its peripheral surface."

The appellant submitted that the last feature of the preamble of claim 1 of the main request, viz [transferring the printing ink (29) to the object (5) to be printed] ... by pressing-on said carrier, by means of supplementary pressing means (6) making use of fluid pressure, more particular air pressure, at least partially around the object to be printed, was not disclosed in document D1 (emphasis added by the Board).

In the judgment of the Board, the inevitable result of the steps (i) arranging an image ... being carried on a flexible medium, and an object having a convex surface, on which surface the image is to be printed, in a mutually opposed relationship with a certain definite space interval provided between them, (ii) causing the flexible medium ... to expand or bulge out toward the convex surface of the object" and (iii) causing the convex surface to intimately contact with the bulged surface of the flexible medium along its peripheral surface" is that the bulged out flexible medium deforms in such a way that it partially surrounds the convex surface of the object - a prerequisite for the step of "transferring the image carried on the flexible medium onto the convex surface of the object to be printed".

It follows that the last feature of the preamble of claim 1 of the main request is also disclosed in document D1.

The subject-matter of claim 1 of the main request is therefore not new vis-à-vis document D1.

ORDER

For these reasons it is decided that:

The appeal is dismissed.