T 1262/12 () of 18.3.2016

Summary of Facts and Submissions

I. The appellant (opponent) lodged an appeal against the decision to maintain the European patent No. 1 464 408 in amended form, requesting that the decision under appeal be set aside and the patent be revoked, subsidiarily that oral proceedings be held.

The opposition was directed against the patent as a whole and based on the grounds of Article 100(a) EPC (lack of novelty and/or inventive step), Article 100(b) EPC (insufficiency of the disclosure) and Article 100(c) EPC (unallowable amendments).

The opposition division considered that the patent amended according to the main request filed with letter dated 3 January 2012 fulfilled the requirements of the EPC.

II. The patent proprietor (respondent) requested that the appeal be dismissed, subsidiarily that oral proceedings be held.

III. The following documents of the opposition proceedings are relevant for the present decision:

D2: EP-A-0 453 357

D3: US-B-6 253 941

D4: US-A-4 773 553

IV. The Board provided the parties with its preliminary non-binding opinion annexed to the summons for oral proceedings that the invention appeared sufficiently disclosed for it to be performed by a skilled person and that the patent as maintained appeared not to extend beyond the content of the application as originally filed. The subject-matters of claims 1 and 12 appeared to be novel. They were, however, considered as lacking inventive step starting from D2 as closest prior art, combined with the teaching of either D3 or D4.

V. With letter dated 17 February 2016, the respondent filed an auxiliary request.

The appellant announced with letter dated 24 February 2016 that it would not attend oral proceedings.

VI. Pursuant to Rule 115(2) EPC and Article 15(3) RPBA oral proceedings took place on 18 March 2016 in the absence of the appellant. It was discussed whether the subject-matters of claims 1 of the main and auxiliary requests meet the requirements pursuant to Article 56 EPC starting from the teaching of D2 as closest prior art in combination with the teaching of D3 or D4, possibly also taking account of the skilled person's common general knowledge.

The present decision was announced at the end of the oral proceedings.

VII. The appellant requests that the decision under appeal be set aside and that European patent No. 1 464 408 be revoked.

VIII. The respondent requests that the appeal be dismissed, or, alternatively, that the patent be maintained on the basis of the amended claims 1 to 14 according to the auxiliary request filed with letter dated 17 February 2016.

IX. Taking account of the printing errors and in view of the documents intended for grant which form the correct basis for the granted patent, the wording of claim 1 of the main request reads as follows (in bold the amendments with respect to claim 1 of the patent as per the "Druckexemplar"; emphasis added by the Board):

"An assembly for securing and sealing a dispenser to a container (12) having a flange (18) surrounding an opening (16) therein, characterized in that said assembly comprises:

a dispenser sub-assembly (26) comprising an outer body (28) having an outer surface adapted to engage an inner surface of the opening (16) in the container (12) when said dispenser sub-assembly (26) is inserted in the opening in the container so as to secure and seal said dispenser sub-assembly (26) within the opening in the container;

wherein the outer surface of the outer body (28) has a portion (30) with a diameter greater than a portion (32) of the inner surface of the opening (16) in the container (12) so as to secure and seal said dispenser sub-assembly (26) within the opening in the container by frictional engagement between the outer surface of the outer body (28) with the inner surface of the opening.

a retaining collet (46) positioned to surround the flange (18) in the container, said retaining collet having an outer surface having an outer diameter, and having a downwardly extending skirt (50) having a bottom portion thereof extending radially outwardly;

a decorative collar (44) having a sleeve (60) about its periphery, the sleeve (60) having an inner surface (62) having a diameter sized to encase the skirt (50) of said retaining collet, said decorative collar slideable through a path of movement over said retaining collet to an assembled position, the sleeve (60) of said decorative collar deforming the bottom portion of the skirt (50) of said retaining collet radially inwardly to a position under the flange (18) of the container as said decorative collar is slid to the assembled position, the sleeve (60) of said decorative collar maintaining said decorative collar in the assembled position on said retaining collet (46)

characterized in that said retaining collet (46) provides no sealing and securing functions other than to retain said decorative collar in place such that [deleted: said]the dispenser sub-assembly (26) is secured and sealed to the container solely by its cooperation with the opening in the container."

In view of the present decision it is not necessary to recite the wording of independent method claim 12 of the main request.

The wording of claim 1 of the auxiliary request reads as follows (in bold the amendments with respect to claim 1 of the main request; emphasis added by the Board):

"An assembly for securing and sealing a dispenser to a container (12) having a flange (18) surrounding an opening (16) therein, characterized in that said assembly comprises:

a dispenser sub-assembly (26) comprising an outer body (28) having an outer surface adapted to engage an inner surface of the opening (16) in the container (12) when said dispenser sub-assembly (26) is inserted in the opening in the container so as to secure and seal said dispenser sub-assembly (26) within the opening in the container;

wherein the outer surface of the outer body (28) has a portion (30) with a diameter greater than a portion (32) of the inner surface of the opening (16) in the container (12) so as to secure and seal said dispenser sub-assembly (26) within the opening in the container by frictional engagement between the outer surface of the outer body (28) with the inner surface of the opening[deleted: .];

a retaining collet (46) positioned to surround the flange (18) in the container, said retaining collet having an outer surface having an outer diameter, and having a downwardly extending skirt (50) having a bottom portion thereof extending radially outwardly;

a decorative collar (44) having a sleeve (60) about its periphery, the sleeve (60) having an inner surface (62) having a diameter sized to encase the skirt (50) of said retaining collet, said decorative collar slideable through a path of movement over said retaining collet to an assembled position, the sleeve (60) of said decorative collar deforming the bottom portion of the skirt (50) of said retaining collet radially inwardly to a position under the flange (18) of the container as said decorative collar is slid to the assembled position, the sleeve (60) of said decorative collar maintaining said decorative collar in the assembled position on said retaining collet (46),

characterized in that said retaining collet (46) provides no sealing and securing functions other than to retain said decorative collar in place such that the dispenser sub-assembly (26) is secured and sealed to the container solely by its cooperation with the opening in the container;

and in that the assembly further comprises a plurality of annular retaining rings (68) formed on the inner surface (62) of the sleeve (60) of said decorative collar (44), the plurality of annular retaining rings positioned to engage the outer surface of said retaining collet when said decorative collar is in the assembled position, and dimensioned such that the plurality of annular retaining rings (68) cause the outer surface of said retaining collet to deform around the plurality of annular retaining rings when said decorative collar is in the assembled position to enhance the maintenance of said decorative collar in the assembled position on said retaining collet."

In view of the present decision it is not necessary to recite the wording of independent method claim 10 of the auxiliary request.

X. The appellant argued essentially as follows

Main request

The following features a) and b) of claim 1 are not disclosed by the closest prior art D2:

a) a retaining collet positioned to surround the flange in the container, said retaining collet having an outer surface having an outer diameter, and having a downwardly extending skirt having a bottom portion thereof extending radially outwardly;

a decorative collar having a sleeve about its periphery, the sleeve having an inner surface having a diameter sized to encase the skirt of said retaining collet, said decorative collar slideable through a path of movement over said retaining collet to an assembled position, the sleeve of said decorative collar deforming the bottom portion of the skirt of said retaining collet radially inwardly to a position under the flange of the container as said decorative collar is slid to the assembled position, the sleeve of said decorative collar maintaining said decorative collar in the assembled position on said retaining collet |b) |said retaining collet providing no sealing and securing functions other than to retain said decorative collar in place. | The technical effects of the following negative feature b1) of the feature b): b1) |the retaining collet provides no sealing and securing functions | | |

are unclear from the contested patent taken as a whole.

Since said other distinguishing features a) and b2) of the feature b):

b2) the retaining collet only retains the decorative collar in place.

are known from D3 in view of solving the problem of retaining a decorative collar in place, the combination of the teachings of D2 and D3 would lead to the claimed subject-matter as defined with positive features.

No inventive step should then be acknowledged for the subject-matter of claim 1 of the main request.

Auxiliary request

The appellant has not provided any specific arguments or objections against the auxiliary request, additionally to those provided against the main request.

XI. The respondent argued essentially as follows

Main request

Instead of D2, either D3 or D4 should be regarded as the closest prior art since they share more goals with the invention than D2 with claim 1.

For clarity reasons the features b) should not be split up but considered together for assessing inventive step.

In view of their technical effects, the technical problem associated with the distinguishing features b1) would be to decrease the risk of deforming the decorative collar when slid to its assembled position.

D2 teaches away from implementing a collet. Hence, should D2 be taken as the closest prior art, the skilled person would not consider to combine it with the teaching of D3 which relates to a collet.

Further, in case the skilled person would think of combining the teachings of D2 and D3 he would not arrive at the claimed subject-matter since the retaining collet of the resulting assembly would comprise the functions of sealing and securing assembly, contrary to the features b1).

Auxiliary request

The features introduced in claim 1 of the auxiliary request with respect to claim 1 of the main request and relating to the retaining rings are known from D3. However, the skilled person would not consider them when implementing the retaining collet and the decorative collar of D3 in the assembly of D2. The retaining rings would lead to further increase of the force onto the decorative collar when slid to its assembled position enhancing the risk of deforming it. Hence, faced with the technical problem of avoiding this, the skilled person would deliberately not implement the retaining rings of D3 in the assembly of D2.

Reasons for the Decision

1. Main request

1.1 Since the Board considers that the subject-matter of independent claim 1 of the main request lacks inventive step (see below), there is no need to discuss in this decision the other objections raised by the appellant against this request.

1.2 Inventive step (Articles 100(a) and 56 EPC)

The appellant contests the inventive step of the subject-matter of claim 1 starting from D2 and combined with the teaching of D3.

1.2.1 Closest prior art

Like the appellant the Board is of the opinion that D2 can be selected as the closest prior art for claim 1 of the main request. As a matter of fact, D2, like claim 1, concerns a dispenser sub-assembly ("pompe") secured and sealed onto the container ("récipient" 2) solely by its forced cooperation with the opening of the container ("emmanché à force"; claim 1).

As put forward at the oral proceedings, the respondent contests this view arguing that claim 1 comprises the three following goals:

- to secure the dispenser assembly onto the container;

- to seal the dispenser assembly onto the container; and

- to provide the assembly with a decorative collar via a retaining collet.

For the respondent D2 shares only the first two goals with claim 1 while D3 (see figure 1) and also D4 (see figure 13) each shares all three. Therefore, instead of D2, either D3 or D4 should be taken as the closest prior art for assessing the inventive step of the subject-matter of claim 1.

The Board does not deny that D3 or D4 could indeed be regarded as closest prior art. This, however, does not disqualify D2 as a plausible starting point as also appearing from the contested patent itself, paragraphs [7] to [9], which clearly establishes that possible starting points relate to disclosures similar to that of D2. Since the claimed subject-matter should involve inventive step from any plausible starting point (see T 967/97, not published, and the decisions citing it), it should also be examined if this would be the case starting from D2.

1.2.2 Disclosure of D2

D2 (column 3, lines 1-21; claim 1; figures) discloses an assembly for securing and sealing a dispenser ("système doseur") to a container ("récipient" 2) having a flange ("col" 7) surrounding an opening therein.

The assembly of D2 comprises:

a dispenser sub-assembly comprising an outer body ("corps" 3) having an outer surface adapted to engage an inner surface of the opening ("intérieur du col") in the container (2) when said dispenser sub-assembly is inserted in the opening in the container so as to secure and seal said dispenser sub-assembly within the opening in the container;

wherein the outer surface of the outer body (3) has a portion ("hauteur compatible à un bon maintien du corps") with a diameter greater than a portion of the inner surface of the opening in the container (2) so as to secure and seal said dispenser sub-assembly within the opening in the container by frictional engagement ("emmanché") between the outer surface of the outer body (3) with the inner surface of the opening,the dispenser sub-assembly being secured and sealed to the container solely by its cooperation with the opening in the container.

1.2.3 Because the sealing function using the inner diameter of the opening is considered in the present invention, as the most important, see paragraphs [6] and [7], and the aesthetic appearance with the collar is only of secondary importance, see paragraph [8], the Board considers D2 as a feasible starting point.

1.2.4 As agreed with by the parties, D2 is silent on the following features a) and b) of claim 1 (see also impugned decision, page 8, antepenultimate paragraph):

a) a retaining collet positioned to surround the flange in the container, said retaining collet having an outer surface having an outer diameter, and having a downwardly extending skirt having a bottom portion thereof extending radially outwardly;

a decorative collar having a sleeve about its periphery, the sleeve having an inner surface having a diameter sized to encase the skirt of said retaining collet, said decorative collar slideable through a path of movement over said retaining collet to an assembled position, the sleeve of said decorative collar deforming the bottom portion of the skirt of said retaining collet radially inwardly to a position under the flange of the container as said decorative collar is slid to the assembled position, the sleeve of said decorative collar maintaining said decorative collar in the assembled position on said retaining collet

b) said retaining collet providing no sealing and securing functions other than to retain said decorative collar in place. |

1.2.5 The Board considers that in view of the technical effects of the distinguishing features the latter feature b) is to be split up as follows:

b1) the retaining collet provides no sealing and securing functions; and

b2) the retaining collet only retains the decorative collar in place.

As a matter of fact, there is no synergy between the technical effects of the features b1) and b2) for the reasons given below.

1.2.6 As argued at the oral proceedings the respondent considers that the technical effects of the functional features b1) would be defined by their wording, i.e. the (negative) functions themselves, more specifically to simplify the retaining collet ("sealing collet" 26) of D3 while at the same time decrease the force required for sliding the decorative collar to its assembled position.

Simplification would be achieved by giving up the frustoconical portion (48) of the retaining collet (26) of D3, which provides the not required (and therefore disclaimed) sealing function (column 5, lines 31-39). By doing this it would further be avoided to create high radial forces on the decorative collar ("retaining collar" 28) when it is slid to its assembled position, as a result of the material compression of the retaining collet at the location of the frustoconical portion (48).

The Board notes that these alleged technical effects are not described in the contested patent. Nor are they defined with respect to the prior art D2, as would be required for a proper application of the problem-solution approach, but rather with respect to prior art document D3. Although disputable, the Board takes up these alleged technical effects to the advantage of the respondent in the following discussion on inventive step.

Uncontested by the respondent, the distinguishing features a) and b2) have the synergetic technical effect to retain a decorative collar in place by frictional engagement with the retaining collet (contested patent, paragraph [32]).

Therefore, it is clear to the Board that distinguishing feature b1), on the one hand, and distinguishing features a) and b2), on the other hand, do not have synergetic effects. They can hence be dealt with separately for assessing inventive step of the subject-matter of claim 1.

1.2.7 The Board does not share the respondent's view that for clarity reasons features b1) and b2) should be considered together for assessing inventive step. As a matter of fact, the criteria for deciding to split up or not two (or more) distinguishing features when assessing inventive step of a claimed subject-matter consists in whether there exists a synergy between their respective technical effects. As discussed above no synergy can be presently found.

1.2.8 As argued by the respondent at the oral proceedings, the first partial technical problem solved by the distinguishing feature b1) can be regarded as to decrease the risk of deforming the decorative collar when slid to its assembled position.

The second partial technical problem solved by the distinguishing features a) and b2) can be regarded as to provide the assembly of D2 with a decorative collar that stays on the container (contested patent, paragraphs [8]-[14]).

1.2.9 The Board considers that the skilled person looking for solutions to the above partial technical problems will come across document D3 since it is in the same technical field as that of D2 of securing and sealing a dispenser onto a container (D3, column 1, lines 10-15).

1.2.10 The respondent argues that the teaching of D2, column 1, line 31 onwards, where its prior art is discussed, would lead the skilled person away from implementing a collet ("bague à sertir"). (Re)introducing a collet in the assembly of D2 would mean going against its explicit teaching and goal to avoid such collet. The skilled person would hence not consider to combine the teaching of D3, which relates to a collet, with that of D2.

1.2.11 The Board cannot share this view. The functions of the collet which are referred to in the prior art discussion of D2 relate exclusively to securing and sealing the pump assembly onto the container (column 1, lines 14-37). In this respect, it is true that the skilled person will not think of implementing a collet in the assembly of D2 in view of providing these functions.

However, the above partial technical problems are related to the assembling and the retaining of a decorative collar which are functions of a retaining collet different from those of securing and sealing. The skilled person will not find any "teaching away" in D2 for these former functions. Therefore, he will certainly consider the teaching of D3 in view of finding a solution to the above defined partial technical problems and consider the combination of the teachings of D2 and D3 in this respect.

1.2.12 D3 discloses (column 4, line 30 to column 5, line 54; figure 1):

a retaining collet ("sealing collet" 26) positioned to surround the flange (18) in the container (12), said retaining collet (26) having an outer surface having an outer diameter, and having a downwardly extending skirt (34) having a bottom portion ("protruding member" 44) thereof extending radially outwardly;

a decorative collar ("retaining collar" 28) having a sleeve (56) about its periphery, the sleeve having an inner surface having a diameter sized to encase the skirt (34) of said retaining collet (26), said decorative collar (28) slidable through a path of movement over said retaining collet (26) to an assembled position, the sleeve (56) of said decorative collar (28) deforming the bottom portion (44) of the skirt (34) of said retaining collet (26) radially inwardly to a position under the flange (18) of the container as said decorative collar (28) is slid to the assembled position, the sleeve (56) of said decorative collar (28) maintaining said decorative collar (28) in the assembled position on said retaining collet (26), said retaining collet (26) retaining said decorative collar (28) in place.

1.2.13 Consequently, D3 discloses the distinguishing features a) and b2). The skilled person faced with the above mentioned second partial technical problem and considering D3 will immediately think of implementing its disclosure into the assembly of D2. He will have no technical difficulty to do so. Therefore, distinguishing features a) and b2) cannot justify inventive step.

1.2.14 Further, faced with the above mentioned first partial technical problem the skilled person will realise that he does not need to take up all the features of the retaining collet (26) of D3. He will indeed retain from said disclosed collet (26) only the features necessary for providing the functions of assembling and retaining the decorative collar (28).

As already mentioned under point 1.2.11 above, the skilled person will consider the teaching of D3 in view of finding a solution to the above defined partial technical problems which relate to assembling and retaining the decorative collar. He will immediately realise that the features relating to other functions - such as securing and sealing - of the retaining collet (26) of D3 can be given up. Hence, feature b1) cannot justify inventive step.

1.2.15 In view of the above, the subject-matter of claim 1 lacks inventive step (Article 56 EPC).

1.2.16 The respondent considers, as argued at the oral proceedings, that the skilled person would take up the complete teaching of D3, i.e. all the features of the retaining collet (26), when combining it with the assembly of D2 so that he would come up with an assembly comprising a retaining collet with the functions of sealing and securing, i.e. falling outside claim 1 (see also impugned decision, page 8, last paragraph). Consequently, he would not arrive at the claimed subject-matter since the (negative) feature b1) would not be there.

1.2.17 The Board cannot share this view. As a matter of fact, the functions of the retaining collet (26) of sealing and securing, on the one hand, and those of assembling and retaining the decorative collar (28), on the other hand, are described separately in D3, i.e. realised by different structural features of the retaining collet (26). Therefore, the skilled person faced with the above defined partial technical problems will be in the position, taking also account of his common general knowledge, to select the appropriate features of the disclosed collet in accordance with the technical effect(s) sought, without including unnecessary other features. By doing so he will without doubt come up with the feature b1).

2. Auxiliary request

2.1 With respect to claim 1 of the main request, claim 1 of the auxiliary request comprises the following additional features c) originating from claim 7 of the patent as granted (see also claim 10 of the application as originally filed; point IX above):

c) the assembly further comprises a plurality of annular retaining rings (68) formed on the inner surface (62) of the sleeve (60) of said decorative collar (44), the plurality of annular retaining rings positioned to engage the outer surface of said retaining collet when said decorative collar is in the assembled position, and dimensioned such that the plurality of annular retaining rings (68) cause the outer surface of said retaining collet to deform around the plurality of annular retaining rings when said decorative collar is in the assembled position to enhance the maintenance of said decorative collar in the assembled position on said retaining collet.

2.2 Since the Board considers that the subject-matter of independent claim 1 of the auxiliary request lacks inventive step (see below), there is no need to discuss in this decision whether this auxiliary request fulfills the other requirements of the EPC.

2.3 Inventive step (Articles 100(a) and 56 EPC)

2.3.1 The features c) are, additionally to the features a) and b), further distinguishing features of claim 1 over D2 which can still be regarded as plausible closest prior art for the same reasons as those given under point 1.2.1 above (see also point 1.2.3). As stated in the contested patent, paragraphs [19] and [37], the features c) have the technical effects of enhancing the maintenance of the decorative collar on the retaining collet, possibly inhibiting the removal of the decorative collar. These effects are in synergy with those of the above distinguishing features a) and b2) (see point 1.2.6 above).

2.3.2 Therefore, the above mentioned second partial technical problem to provide the assembly of D2 with a decorative collar that stays on the container (see point 1.2.8 above) remains the problem to be solved by the further distinguishing features c), together with the distinguishing features a) and b2).

2.3.3 However, the features c) are disclosed in D3 for the very same purpose.

As a matter of fact, D3 discloses a plurality of annular retaining rings (64) formed on the inner surface of the sleeve (56) of said decorative collar (28), the plurality of annular retaining rings (64) positioned to engage the outer surface (66) of said retaining collet (26) when said decorative collar (28) is in the assembled position, and dimensioned such that the plurality of annular retaining rings (64) cause the outer surface (66) of said retaining collet (26) to deform around the plurality of annular retaining rings (64) when said decorative collar (28) is in the assembled position to enhance the maintenance of said decorative collar (28) in the assembled position on said retaining collet (26) (see column 8, lines 1-6: "...enhanced by material on the outer surface 66 of the skirt 34 deforming around retaining rings 64, thereby inhibiting the removal of retaining collar 28 from the sealing collet 26"; figures).

Consequently, the skilled person faced with the above mentioned second partial technical problem will immediately consider, when combining the teaching of D3 with that of D2, to implement all the features of the retaining collet and decorative collar disclosed in combination in D3 for the purpose of retaining the decorative collar, i.e. including the disclosed retaining rings (64). Hence, the distinguishing features c) cannot justify inventive step for the same reasons as those given above in view of the features a) and b2) with respect to the main request.

2.3.4 Thus, the subject-matter of claim 1 of the auxiliary request lacks inventive step (Article 56 EPC).

2.3.5 The respondent, admitting at the oral proceedings that the features c) are known from D3, argues that the skilled person would not consider the retaining rings when implementing the retaining collet and the decorative collar of D3 in the assembly of D2. For the respondent, the skilled person would realise that the retaining rings would further increase the force applied onto the decorative collar when slid to its assembled position, due to the frutoconical portion (48) of the retaining collet of D3 as already pointed out with respect to the main request (see point 1.2.6 above). The retaining rings would then have the technical effect to further increase the radial force onto the decorative collar when slid to its assembled position. This would enhance the risk of deforming the decorative collar, i.e. the above mentioned first partial technical problem. Hence, faced with the first partial technical problem of avoiding this, the skilled person would deliberately not implement the retaining rings of D3 in the assembly of D2.

2.3.6 The Board cannot share this view already for the reasons given above that the skilled person will consider implementing all the features of the retaining collet (26) and the decorative collar (28) of D3 which, disclosed in combination, solve the above mentioned second partial technical problem. Further, there is no teaching in D3 which would suggest to the skilled person to give up the retaining rings (64). The risk of damaging the decorative collar is not mentioned in D3. On the contrary, the advantage of having the retaining rings (64) is explicitly described, namely to inhibit the removal of the decorative collar (28) from the retaining collet (26) (column 8, lines 5-6).

Finally, since the skilled person will not envisage to implement the securing and sealing functions of the retaining collet of D3 in the assembly of D2 for the reasons already given above for the main request (see points 1.2.11, 1.2.14 and 1.2.17 above), the alleged risk of deforming the decorative collar due to the radial forces resulting from the frustoconical portion (48) will not exist.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. European patent No. 1 464 408 is revoked.