T 1934/12 () of 15.3.2017

Summary of Facts and Submissions

I. The appellant-opponent lodged an appeal, received 27 August 2012, against the interlocutory decision of the Opposition Division of the European Patent Office posted on 13 July 2012 concerning maintenance of the European Patent No. 1 654 932 in amended form and simultaneously paid the required fee. The statement of the grounds of appeal was received on 13 November 2012.

The opposition was based on Article 100(a) EPC in combination with Articles 52, 54 and 56 for lack of novelty and inventive step and on Article 100(b) EPC for insufficiency of disclosure.

The Opposition Division held that the main request meets the requirements of the Convention, in particular with respect to novelty, inventive step and allowability of amendments, having regard to, inter alia, the following documents:

D1: US 5 833 527

D2: US 5 697 837

D3: EP O 168 865

D5: WO 00/22933

II. With communication dated 24 October 2016 and in preparation for the oral proceedings the Board made preliminary observations.

Oral proceedings before the Board were duly held on 15 March 2017.

III. The appellant-opponent requests that the decision under appeal be set aside and the patent be revoked in its entirety.

The Proprietor as respondent requests that the decision under appeal be set aside and the patent maintained in amended form according to a main request alternatively on the basis of one of auxiliary requests I to III, all filed with letter of 26 January 2017.

Both the appellant and the respondent request oral proceedings.

IV. The wording of the three independent claims of the main request on file at the time of the present decision reads as follows:

Claim 1:

Filleting machine (1) for poultry, comprising a frame (2) and a conveying device (4,5,9) arranged thereon, which conveying device comprises an endless conveyor (9) circulating in a plane and a drive for it, on which conveyor a series of vertically placed holders (11) has been arranged on which a carcass member, comprising the breast, such as a breast cap or entire breast, can be secured, wherein the filleting machine (1) furthermore comprises a number of treatment stations (A), such as a placement station where the carcass members are placed on the holders (11), a skinning station (B) where the carcass members are skinned, and a filleting station (C) where the meat in the form of fillets is detached from the skeleton, wherein the conveyor (9) is adapted for conveying the carcass members with the shoulder joints (5) in the lead through the filleting station (C), and a discharge station where the skeleton is taken from the holder (11), wherein the filleting station (C) comprises two, preferably curved, filleting plates (21) for detaching meat from the skeleton, which filleting plates (21) are positioned on both sides of the path (E) of the skeleton in order to each treat one half of the carcass member, characterised in that the filleting plates (21) have front edges (26) and rear edges (28), wherein the front edges (26) are provided with a first cutting edge (26) for detaching the meat from the chest, wherein the filleting station (C) is furthermore provided with second cutting edges (31) positioned for detaching the meat from the skeleton along the wishbones (W), wherein the second cutting edges (31) are positioned downstream from the first cutting edges (26), before the rear end (28) of the filleting plates (21).

Claim 14:

Method for filleting carcass members of poultry containing breast meat, particularly breast caps, wherein the carcass members are placed on holders (11) that have been disposed one after the other on a conveyor (9) so as to circulate in a vertical plane, wherein the holders (11) with carcass members are passed through a skinning station (B) for removing the skin, wherein the carcass members are subsequently, in a lower track of the circulating path (E), passed through a filleting station (C), characterised in that at the filleting station by means of cutting edges (26,31) the meat is detached from the chest, the wishbones (W) and the coracoids, as well as separated on both sides of the keel bone (K), wherein the detaching of the meat from the wishbones (W) takes place downstream from the detaching of the meat from the chest, wherein the cutting edge (31) for detaching meat from the wishbones (W) is between front and rear edges (26, 28) of filleting plates (21) for detaching meat from the chest.

Claim 18:

Fillet plate assembly (21,29) for poultry, characterised in that the assembly (21,29) is provided with filleting plates (21) having front edges (26) and rear edges (28), and wherein said front edges (26) are embodied as first cutting edges (26) for cutting meat loose along the chest and that it has second cutting edges (31) for cutting meat loose along the wishbones (W), on both sides of a carcass member, particularly the breast cap, which second cutting edges (31) are positioned between the first cutting edges (26) and the rear edges (28) of the filleting plates (21).

V. The appellant-opponent argued as follows:

Amendments to all three independent claims include the feature that the second cutting edges (31) - for detaching meat along the wishbone - are positioned downstream the first cutting edges (26) of the filleting plates and before the rear edges of the filleting plates, which inclusion represents an intermediate generalization and thereby added subject-matter in the sense of Article 123(2) EPC. Originally filed claim 3 only gives support to the feature that the second cutting edges are positioned downstream the front edges of the filleting plates, but not necessarily before the rear edges. The feature that the second cutting edges are positioned before the rear edges of the filleting plates is selectively taken from the only embodiment of the description - paragraphs [0036] and [0038] - in isolation from other technical features of the filleting station to which it is functionally and structurally linked.

The subject-matter of the independent claims is further not new vis-à-vis D3, in particular as the second cutting edges in the sense of the contested patent are anticipated by rods 46. Whilst said rods are admittedly not described as detaching meat along the wishbone but along the keel bone, they are nonetheless suitable for that use and thereby meet that limitation. In the case that the rods 46 are not considered "edges" in the sense of the contested patent, it is submitted that this is an obvious modification to the rods 46 for the skilled person. In this manner the subject-matter claimed lacks inventive step over D3.

The independent claims are furthermore not inventive in the light of either D1 or D2 as starting point. The differentiating feature that the second cutting edges are positioned downstream of the first cutting edges and before the rear ends of the filleting plates may not be anticipated by either document. However, such a modification is obvious from common general knowledge for the skilled person seeking to obtain an apparatus or method with simultaneous operation of first and second cutting edges or with enhanced positioning - i.e. guiding of the carcass by the filleting plates - during operation of the second cutting edges.

An objection of insufficiency (Article 83 EPC) was withdrawn with letter of 13 February 2017.

VI. The respondent-proprietor argued as follows:

Originally filed claim 3 and page 3, lines 16-22 of the application as filed (paragraph [0007] of the B1 publication) provide support for the introduction of the disputed feature into the independent claims.

Since the appellant-opponent appears not to have raised the objections of novelty vis-à-vis D3 and inventive step starting from D3 in the first instance proceedings, these arguments should not be admitted. It is contested that the rods 46 of D3 are arranged for detaching meat along the wishbone and that they can be considered cutting edges by the skilled person, as required by the independent claims of the patent-in-suit.

With respect to inventive step, it is essentially submitted that the cited prior art documents suggest the placement of the second cutting edges either upstream of the first cutting edges (front edges of the filleting plates) or downstream of the rear edges of the filleting plates, but not between both edges of the filleting plates, as required by the independent claims.

Reasons for the Decision

1. The appeal is admissible

2. Background

The patent relates to a filleting machine for poultry, a filleting method and a fillet plate assembly. According to the patent (specification, paragraph [00001]), filleting machines are known where poultry carcass members, such as the breast cap are placed on holders on a conveyor and passed to a first filleting station to detach meat from wishbones, then to a second filleting station to detach meat from the chest and coracoids (shoulder bones) using so called tunnel plates (plates that cut along the ribs with the keel bone (downward extension of sternum/breast bone) protruding through a gap there between). The invention aims to make a compact filleting machine (specification, paragraphs [0002] and [0003]). To this end the invention as defined in the independent claims 1, 14, 18 of the main request foresees a filleting station with tunnel plates with front edges constituting the first cutting edges for the meat along the ribs and second cutting edges for detaching meat from the skeleton along the wishbones (furcula / fused clavicles), wherein the second cutting edges are "positioned downstream from the first cutting edges, before the rear end of the filleting plates", i.e. located between front and rear edges of the tunnel plates. In this manner the first and second cutting edges are effectively placed in a single filleting station which makes the machine shorter, thus more compact, specification paragraph [0005].

3. Admission of the main request filed on 26 January 2017

This request has been filed after arrangement of oral proceedings. Thus, the provisions of Article 13(1) and 13(3) RPBA with regard to admission apply. With this new main request, the subject-matter of independent claim 14 has been restricted by way of amendment in order to bring it in line with the subject-matter of the other independent claims on file. Several alternative attacks against inventive step that were specific to independent claim 14 in its original form are thereby overcome. Thus, complexity has been reduced. Furthermore, the amendments do not raise any issue beyond the ones already under dispute and they are occasioned by a ground for opposition (Rule 80 EPC). The appellant-opponent also concedes that the discussion is essentially not changed by the amendments. Accordingly, the Board at the oral proceedings decided to admit new main request under Article 13(3) RPBA.

4. Main request : Added subject-matter

4.1 The objections concern all independent claims. Each independent claim uses slightly different wording, but the substance of the disputed amendments is the same. Thus reasoning in respect to the amendment to claim 1 applies to the other independent claims mutatis mutandis.

4.2 Originally filed claim 1 has firstly been amended by adding that the filleting plates have rear edges. The Board considers this to be disclosed throughout the application as filed, see for example application as filed, page 3, line 20, figure 2A. This issue is furthermore not under dispute.

4.3 The second amendment (wherein the second cutting edges are positioned downstream from the first cutting edges, before the rear end of the filleting plates) is disputed. Particularly the feature "before the rear end of the filleting plate" is argued by the appellant-opponent not to have support in the original disclosure in this broad form.

4.4 The Board considers that this feature is clearly and unambiguously derivable from the original disclosure by the first part of originally filed claim 3 (i.e. without the optional feature "preferably..."), read in combination with paragraph [0008] of the published application as filed corresponding to paragraph [0007] of the B1 publication. Said passage of the description specifically concerns the effects and functioning of the combination of features of originally filed claim 3 and is therefore to be read in conjunction with it.

4.5 With respect to the compulsory features of the originally filed claim 3 (i.e. without the preferable feature), said claim explicitly requires that the second cutting edges are positioned downstream from the first cutting edges. The cited paragraph [0008] explains that they are in said relative position so that they can be simultaneously operative. Paragraph [0008] continues to specify what the claimed invention achieves by said simultaneous operation, namely that "[the] tunnel plates then enhance the positioning of the wishbones with respect to the second cutting edges". In other words, the tunnel shape of the filleting plates forms a guide for the carcass, providing the enhanced positioning effect by guiding the carcass between them while the second cutting edges are in operation. Thus from this described operation the skilled person derives clearly and unambiguously that the second cutting edges must be positioned somewhere downstream the first cutting edges and in a position such as to engage the meat along the wishbone, while the carcass section corresponding to said wishbone area is still being guided within the tunnel plates- i.e. in a position before the rear end of said tunnel plates. Therefore, the feature that the second cutting edges are positioned before the rear ends of the filleting plates (i.e. tunnel plates) is, albeit implicitly, yet clearly and unambiguously disclosed by the referred parts of the original description in combination with the compulsory features of claim 3.

4.6 Additionally, the final sentence of paragraph [0008] only makes sense as a further refinement of the downstream location of the second cutting edges if they are understood as being positioned before the rear edges of the filleting plates, as explained in the following. The final sentence of paragraph [0008] is specifically associated with the further optional feature of originally filed claim 3. It describes that "if the second cutting edges are positioned near the rear ends of the filleting plates, the shoulder joints may slightly give way" while the second cutting edges operate. Taking into account that the carcass is always conveyed through the filleting plates with the shoulder joints in the lead (see e.g. originally filed claim 1 and paragraph [0005] of the published application), if the second cutting edges were positioned after the rear ends of the filleting plates, the shoulder joints would have already left the "constraining" tunnel plates and passed the second cutting edges due to the joints' leading position by the time the second cutting edges engage the wishbone area. Thus, there would be no need to locate the second cutting edges near said rear ends to achieve the "give way" effect, as stated in the last sentence of paragraph [0008]. This statement acquires its full meaning if however the second cutting edges are located just before the rear end. Only then would they indeed engage the wishbone just as the shoulder joints leave the tunnel and start to ("slightly") give way. Thus, the final sentence of paragraph [0008], albeit associated with the optional feature, underpins by implication the feature already implicitly disclosed in the previous sentences in paragraph [0008], that the compulsory feature of originally filed claim 3 is to be understood only in combination with the second cutting edges being positioned before the rear ends.

4.7 In conclusion, the skilled person unambiguously derives from a combined reading of the originally filed compulsory features of claim 3 (i.e. without the optional feature "preferably...") and associated description paragraph [0008] of the original published application (paragraph [0007] of the B1 publication) the contested combination of features of the main request, including the feature that the second cutting edges are positioned before the rear end of the filleting plates. Thus, contrary to the submissions of the appellant-opponent, the disputed feature is not selectively taken from the only embodiment of the description but from originally filed claim 3 in the light of the relevant part of the general description associated to that claim. Consequently the objections related to an alleged intermediate generalisation are unfounded.

4.8 The Board concludes that the amendments to the independent claims of the main request do not add subject-matter that extends beyond the original disclosure and thereby meet the requirements of Article 123(2) EPC.

5. Admission of arguments in respect to document D3

5.1 The respondent-proprietor requests not to admit any discussion about document D3 in respect of novelty (Art. 12(4) RPBA) because no novelty objection was raised in the first instance proceedings against the subject-matter of granted claim 3, which forms the basis of the version upheld by the opposition division of claim 1.

5.2 The Board however finds that document D3 has been used to substantiate several novelty objections in the notice of opposition (see e.g. notice of opposition sections 29, 108, 113) and in particular with respect to original claim 15 (basis of the appealed independent claim 14) and original claim 20 (basis of present independent claim 18). Thus, not only could the appellant-opponent have raised novelty in regard of D3 in the first instance proceeding, they demonstrably did so.

Thus, the Board finds it appropriate to consider D3 under novelty.

6. Main request: Novelty of independent claims vis-à-vis D3

6.1 Novelty of present independent claims of the main request is only challenged vis-à-vis the D3 disclosure. D3 discloses a filleting machine for poultry (see figure 1 and page 5, line 16 to page 6, line 20; page 7, line 26 to page 9, line 15). The machine comprises a frame with an endless conveyor 2 and vertically placed holders 3 for carcasses placed shoulders first (page 5, lines 22 to 24). There are also a number of treatment stations e.g. skinning station 11, filleting station 14 and discharge station 15 where the skeleton is removed (page 6, lines 15 to 18, page 11, lines 13 to 18).

6.2 It is not disputed that the filleting station 14 has two filleting plates 43 on each side of the skeleton's path for detaching meat from the chest (figure 13, page 10, lines 22 to 32). Furthermore the plates have front (stepped) cutting edges and rear edges.

6.3 The question of novelty turns on whether or not D3 discloses that the filleting station 14 is provided

with second cutting edges for detaching meat from the skeleton along the wish bones, wherein these are downstream of the first cutting edge, before the rear ends of the filleting plates.

6.4 The appellant-opponent argues that the scraping rods 46, best seen in figures 6 and 7, are such cutting edges. These rods can be swung into recesses 45 in the filleting plates 43 by pistons 48. The appellant-opponent acknowledges that the rods 46 are only brought into the operative position in recesses 45 when the sternum or keel bone, which lies behind the wishbone, reaches these recesses (page 10, line 33 to page 11, line 6) and therefore after the wishbone has passed the recessed area 45. The appellant-opponent submits that the described rods 46 anticipate the claimed feature requiring that the cutting edges are "positioned for detaching the meat", i.e. that they are in a position suitable for detaching the meat from the wishbones, because even if they have not been described for that use, they could in principle be swung into position at the time the wishbone passes the recesses 45, thereby meeting that limitation required by the independent claims. The appellant-opponent further submits that even though the rods 46 have rounded edges (cf. figures 6 and 7) they can be considered cutting edges in the sense of the contested patent because they achieve the same result as the cutting edges described in the patent-in-suit.

6.5 It is however the opinion of the Board that the scraping rods 46 according to D3 are not in a position for detaching the meat along the wishbone in the sense of the contested patent, because they are held away from the carcass (dashed lines, figure 7) at the time the wishbone moves through that area. In order to fulfil this feature they must be brought into the proper position accordingly, which requires modification of the machine and the method of its operation as described in D3. No such modification is disclosed in the document or otherwise suggested therein. On the contrary, document D3 discloses that the meat along the wishbone has already been severed by device 37 (page 2, lines 4-7, figure 12, page 10 lines 3-12) before the carcass enters the filleting station 14. Thus there is no disclosure in D3, not even implicit, that the scraping rods 46 could be swung into the required position to scrape meat along the wishbone.

6.6 Furthermore, the independent claims of the contested patent require that the filleting station is provided specifically with second cutting edges. The feature edge calls, by definition, for a certain form which is not fulfilled by the rounded ends of the rods 46 described in D3.

6.7 D1 and D2 do not disclose either second cutting edges positioned for detaching or cutting meat loose along the wishbones and positioned between front (cutting) and rear edges of filleting plates.

6.8 The Board can but conclude that the apparatus of claim 1 is novel over the prior art as required by Article 52(1) in combination with Article 54 EPC. The same conclusion applies also to independent claim 14 (directed to a filleting method), and to independent clam 18 (directed to a fillet plate assembly), both of which are characterized by the same feature of the second cutting edges effectively being located between the first cutting edges and the rear edges of the filleting plate.

7. Main request : inventive steps of independent claims

7.1 Starting from D1

7.1.1 It is common ground that D1 discloses the pre-characterising portion of the independent claims and can be considered as closest prior art. As shown in figure 1, endless conveyor 26 has carcass holders 56 carrying carcasses through various stations including a skinning station (figure 1, 175, column 4, lines 53-58, column 13, line 49 to column 14, line 32) and a filleting station 48, with tunnel plates 317, 318 having (in the claim language) first blades (column 18 line 58 to column 19, line 19, figures 1 and 7).

7.1.2 D1 also discloses a station 47 with (second) cutting edges 252, 253, cutting along the wishbone (figures 1 and 5, column 15, line 55 to column 16, line 43). Wishbone station 47 is upstream of filleting station 48, so its cutting edges are before the ends of the filleting plates 317, 318 as claimed.

7.1.3 Claim 1 therefore differs in that the second cutting edges are downstream from the first (tunnel) cutting edges. D1 discloses the reverse (figure 1).

7.1.4 The subject-matter of independent claims 1, 14 and 18 of the main request differs from the prior art of D1 in that the second cutting edges detaching meat along the wishbone are positioned between the first cutting edges and the rear edges of the filleting plates. With such an arrangement the filleting station for detaching the meat from the chest is further provided with means - the second cutting edges - for also detaching the meat along the wishbone. Both operations are therefore performed (more or less) simultaneously in a single station along the conveyor line, thus achieving a more compact arrangement. The associated technical problem can thus be formulated as in paragraph [0002] of the contested patent, namely the provision of a compact machine or fillet plate assembly, or the use of such a compact machine.

7.1.5 The claimed solution of providing (second) cutting edges for the wishbone area positioned between the front cutting edges and the rear edges of the filleting plates is not known from any of the cited prior art documents. Nor does the Board consider it to be obvious to the skilled person, a mechanical engineer designing filleting machines for poultry, from his common general knowledge. It can be his general aim to build machines in a more compact manner in order to be able to place the machine or carry out the method in smaller spaces and common general knowledge might suggest to him to place the different known stations or detaching operations as close as possible or to develop shorter stations. It is also suggested - e.g. by D5 - that the order of first detaching meat along the wishbone and subsequently filleting along the skeleton can be reversed. The skilled person might also, as a matter of obviousness, modify the filleting plates to make them either longer or shorter. However, integrating the operation of detaching the meat along the wishbone within the same filleting station so that both operations are effectively carried out simultaneously along the chest marks a significant departure from the teachings in the cited prior art documents, wherein both operations are always carried out in separate stations such that one operation is started after the other one has finished. In the Board's view such a departure does not normally arise from common skill, but is rather indicative of inventive activity. It therefore holds that positioning of the cutting edges for the meat along the wishbone between front and rear edges of the filleting plates, achieving simultaneous operation of both tools, involves an inventive step as required by Article 56 EPC.

7.2 Starting from D2

7.2.1 D2 discloses an arrangement with a conveyor and various stations (figure 1). As with Dl, the tunnel filleting plates 111, 112 are downstream plough shaped cutters 88, which cut along the wishbone (figures 1, 4 and 5, column 9, line 53 to column 10 line 13, and column 8, lines 36-59). So at best D2 is not more relevant than Dl and the same considerations in respect to inventive step apply mutatis mutandis.

7.3 Starting with D3 and other combinations with D3

7.3 1 Without prejudice to the question of the admission of inventive step arguments related to D3 raised by the respondent-proprietor, as already explained this document teaches scraping rods 46 having rounded ends and which are not in a position for detaching the meat along the wishbones (see section 6.6. above). Considering an inventive step objection starting from D3 as closest prior art, even if the skilled person would contemplate modifying said tool in order to meet the limitation that the rods are edges, these edges would still not be in a position for detaching the meat along the wishbone but along the keel bone. Further, modifying the machine according to D3 in order to use the scraping rods 46 for detaching meat along the wishbone is not only not suggested by any cited prior art but it is also contrary to the teachings of D3, wherein that meat has already been cut loose in a previous station. Thus, similarly as discussed with respect to D1 and D2, the integration of the operation of detaching the meat along the chest simultaneously with the filleting operation along the skeleton is not suggested by document D3 either alone, in combination with common general knowledge or with any other cited prior art document.

Likewise, the combination of the teachings of D3 with D1 or D2 as closest prior art would not lead the skilled person to an apparatus or method wherein the cutting edges for the meat along the wishbone is located between front and rear edges of the filleting plates, achieving simultaneous operation of both tools.

7.4 Thus, as the discussed differentiating combination of features and associated effects are present in all independent claims of the main request, the Board concludes that the subject-matter of all independent claims 1, 14 and 18 of the main request involves an inventive step as required by Article 56 EPC.

8. For the above reasons the Board holds that the claims as amended meet the requirements of the EPC. The Board is satisfied that the consequential amendments to the description bringing it into line with the amended claims are unobjectionable, and these were also not objected to by the apppellant-opponent. The Board concludes that the patent can be maintained as amended pursuant to Article 101(3)(a) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent as amended in the following version:

Description: pages 2-5 (columns 1-8) as filed during the oral proceedings before the Board.

Claims: Nos. 1-18 of the Main request filed with letter dated 26 January 2017.

Drawings: Figures 1, 2A-2E, 3A-3C, 4A-4F as in the patent specification.