T 1178/16 () of 20.1.2020

Summary of Facts and Submissions

I. The appellant-opponent lodged an appeal, received on 11 May 2016, against the interlocutory decision of the opposition division posted on 11 March 2016 concerning the maintenance of European Patent No. 1790217 in amended form, and simultaneously paid the appeal fee. The statement setting out the grounds of appeal was received on 8 July 2016.

The appellant-proprietor also lodged an appeal, received on 19 May 2016, and simultaneously paid the appeal fee. The statement setting out the grounds of appeal was received on 4 July 2016.

II. Opposition was filed under the grounds of Article 100(a) EPC for lack of novelty and inventive step and under the grounds of Article 100(c) EPC for adding subject-matter extending beyond the contents of the parent and the originally filed applications.

The opposition division maintained that the patent as amended met the requirements of the EPC, having regard inter alia to the following evidence:

(E1) Grindal and Priest, Robert J. and David JM "Automatic application of teat disinfectant through the milking machine duster", Journal of Dairy Research, February 1989

(E4) WO 03/077645 A1

(E7) WO 98/28939 A1

The appellant-opponent filed the following further evidence with the statement of grounds of 8 July 2016:

(E8) DE 26 22 794 A1

(E9) US 6,276,297 B1

(E10) DD 261 300 A1

(E11) US 2002/0185071 A1

III. The appellant-opponent requests that the decision under appeal be set aside and that European patent No. 1790217 be revoked.

The appellant-proprietor requests that the decision under appeal be set aside and the patent be maintained as granted, or, alternatively, maintained in amended form on the basis of auxiliary request 1, filed with a letter of 4 July 2016, or auxiliary request 2 (as upheld by the opposition division), or one of auxiliary requests 3-6, filed with a letter of 15 November 2019.

IV. In preparation for oral proceedings the board issued a communication setting out its provisional opinion on the relevant issues.

Oral proceedings were held on 20 January 2020.

V. The relevant claims according to the relevant requests read as follows:

(a) Main request - as granted

1. "A teat cup (1) comprising a flexible liner (3) for engaging about a teat of an animal to be milked, said liner having a head portion (6), at one end, provided with a mouth (7) through which the teat is engageable with the liner, and a milk discharge passageway (4a) at the opposite end, and nozzle means (13) for discharging fluid into the head portion (6) of the liner, characterised in that the nozzle means (13) is arranged to discharge fluid in a direction towards the discharge passageway (4a) of the liner (3)."

3. "A teat cup as claimed in claim 1 or 2, wherein the nozzle means comprises one or more nozzles (12)."

4. "A teat cup as claimed in any preceding claim, including one or more delivery tubes (14) connected to the nozzle means (13) for supplying fluid thereto."

5. "A teat cup as claimed in claim 4, wherein the or each delivery tube is attached to or integrated with the teat cup."

(b) First auxiliary request

Claim 1 as in the main request with the following feature added at the end of the claim (emphasis added by the board to indicate modified text):

"...of the liner (3) so that the nozzle means (13) is able to flush the interior of the liner (3) with fluid discharged upwardly into the liner from the head portion of the teat cup when, after withdrawal from the teat, the teat cup falls into an inverted position with its head portion directed downwardly."

Claims 3-5 as in the main request.

(c) Second auxiliary request - as upheld by the opposition division

Claim 1 as in the main request with the following amendments (emphasis added by the board to indicate modified text)

1. "A teat cup (1) comprising a flexible liner (3) for engaging about a teat of an animal to be milked, said liner having a barrel (8), a head portion (6)[deleted: ,] at one end of the barrel (8), provided with a mouth (7) through which the teat is engageable with the liner, and a milk discharge passageway (4a) at the opposite end of the barrel (8), and nozzle means (13) in the head portion (6) of the liner for discharging fluid into the head portion (6) of the liner, characterised in that the nozzle means (13) is arranged to discharge fluid in a direction into the barrel towards the discharge passageway (4a) of the liner (3) so that the nozzle means (13) is able to flush the interior of the liner (3) with fluid discharged upwardly into the barrel of the liner from the head portion of the teat cup when, after withdrawal from the teat, the teat cup falls into an inverted position with its head portion directed downwardly."

Claims 3-5 as in the main request.

(d) Third auxiliary request

Claim 1, 3 and 5 as in the second auxiliary request.

Claim 4 amended as follows (strikethrough and emphasis added by the board to indicate modified text):

4. "A teat cup as claimed in claim 1 or 2 [deleted: any preceding claim], including one or more delivery tubes (14) connected to the nozzle means (13) for supplying fluid thereto."

(e) Fourth auxiliary request

Claim 1 as in the second auxiliary request.

Claims 3,4 amended as follows (strikethrough and emphasis added by the board to indicate modified text):

3. "A teat cup as claimed in claim 1 or 2, wherein the nozzle means comprises [deleted: one or more] a single nozzle[deleted: s] (12)."

4. "A teat cup as claimed in any preceding claim, including a [deleted: one or more] delivery tube[deleted: s] (14) connected to the nozzle means (13) for supplying fluid thereto[deleted: .]

[deleted: 5.][deleted: "A teat cup as claimed in claim 4], wherein the [deleted: or each] delivery tube is attached to or integrated with the teat cup."

Former claim 5 has been deleted.

VI. The appellant-opponent argued as follows:

Claim 4 as dependent on claim 3 of the main request and the first and second auxiliary requests contains added subject-matter. The third and fourth auxiliary requests are late-filed and should not be admitted. Claim 1 of the fourth auxiliary request contains added subject-matter, as does claim 4 (the delivery tube is integrated with the teat cup). Claim 1 of this request is also not clear. Its subject-matter is not new with regard to either E1 or E7 and lacks an inventive step in light of the teachings of E1, E4, E7, E8, E9, E10, E11 and the common general knowledge of the person skilled in the art.

VII. The appellant-proprietor argued as follows:

Claim 4 of all requests does not contain added subject-matter. The third and fourth auxiliary requests, though late-filed, should be admitted since they clearly overcome the issue of added subject-matter to dependent claim 4 without raising new issues. Claims 1 and 4 of the fourth auxiliary request do not contain added subject-matter. Claim 1 of the fourth auxiliary request is also clear, new and involves an inventive step in light of the cited documents.

Reasons for the Decision

1. The appeals are admissible.

2. The invention relates to milking equipment. It relates in particular to teat cups which enable the application of treatment fluid to the teats of animals and also the treatment and cleansing of the teat cups post milking, see paragraph [0001] of the patent specification. Teat cups have a head portion at one end with a mouth for inserting the teat into the cup and a milk discharge passage at the opposite end. The claimed teat cup comprises nozzle means for discharging fluid into the head portion of the cup. Treatment fluid can be injected through the nozzle means at the cup head just before and during the withdrawal of the teat, wiping the injected fluid down the teat for treatment, see paragraph [0011]. After withdrawal, the teat cups typically fall into an inverted position, hanging from the milk tubes of the milking cluster. The nozzle means at the head portion of the claimed cup is also arranged to discharge fluid in a direction towards the discharge passageway at the opposite end of the cup. In this way, the interior of the cup can be flushed in an inverted position with cleansing fluid using the same nozzle means previously used for the treatment fluid, see paragraphs [0009] and [0013].

3. Added subject-matter (dependent claim 4) - Main request, first and second auxiliary requests

3.1 The appellant-opponent objects that claim 4 of the aforementioned requests contains subject-matter that extends beyond the contents of the parent application as originally filed. Indeed, claim 4 as dependent on claim 3 encompasses a possible embodiment comprising a single nozzle connected to two or more delivery tubes. There is no basis for these embodiments in the parent application. The only explicit description in the parent application (WO 2005/043986 A1) of several delivery tubes is on page 11, lines 13-15, also cited by the appellant-proprietor. The passage, contrary to the submissions of the appellant-proprietor, conveys a very clear unequivocal technical teaching, where more than one delivery tube is only described in association with more than one nozzle:

"The teat cup may be fitted with more than one nozzle 13 for injecting fluid into the cavity 9 in the head 6 of the liner 3 and these nozzles may be supplied via one or more fluid delivery tubes 14"

3.2 Otherwise, the specific example as depicted in the figures 1-3 (having one single nozzle), that has been cited by the appellant-proprietor, has only one single delivery tube 14 connected to the nozzle means 13. It therefore likewise does not disclose the option of one nozzle with several delivery tubes. The further tube sections connected to the opposite end of the tube 14, namely passageway 32 and supply tube 34, are not connected to the nozzle, and therefore do not describe a further delivery tube within the meaning of the contested claim, that requires that the delivery tube is connected to the nozzle means.

3.3 The board concludes that the subject-matter of claim 4 of the main request and of the first and second auxiliary requests contains added subject-matter, Art 100(c) and Art 76(1) EPC. These requests are therefore not allowable.

4. Auxiliary requests 3 and 4 - Admissibility

4.1 Auxiliary requests 3 and 4 attempt to address the above objection to added subject-matter by amending the dependent claims 3 and 4. These requests were filed with a letter of 15 November 2019, after oral proceedings had been arranged. Their admission is thus at the discretion of the board, Article 13(1) and (3) RPBA 2007.

According to an approach frequently adopted by the boards, unless there is a good reason for filing the amendment this far into the proceedings - for example as a result of developments in the proceedings - a request will only be admitted after the arrangement of the oral proceedings if the auxiliary request does not extend the scope of discussion as determined by the grounds of appeal and the respondent's reply, and if it is immediately apparent to the board, with little investigative effort on its part, that the amendments successfully address the issue raised without raising new ones, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), V.A.4.5.1.a) and the case law cited therein.

4.2 In the present case, the board is not aware of any circumstances which would justify such late filing of the auxiliary requests. The outstanding objection to added subject-matter had already been raised by the appellant-opponent with the statement of grounds of appeal. Therefore the appellant-proprietor was in a position to file suitable auxiliary requests with its reply to the opponent's appeal.

4.3 Moreover, it is not immediately apparent to the board that auxiliary request 3 successfully addresses the above issue of added subject-matter. Indeed, new claim 4 (claiming one or more delivery tubes) of auxiliary request 3 is now directly dependent on claim 1. Claim 1 however generally requires "nozzle means" and is thus not restricted to only one nozzle. Therefore, in a prima facie analysis, the unallowable subject-matter of a cup with one single nozzle connected to several delivery tubes has not been removed from the scope of the amended set of claims.

4.4 However, in the fourth auxiliary request, the feature of more than one delivery tube has been completely removed from claim 4. It is thus evident that, by deleting the contested optional feature, it successfully removes the above issue of added subject-matter. The other claims have only been amended as a consequence (i.e. to remove the references to several delivery tubes, to incorporate claim 5 into claim 4, and to renumber and update dependencies accordingly). Otherwise, the claims are identical to those of auxiliary request 2 on file (corresponding to the version upheld by the opposition division). The remaining issues are the same as those raised by the appellant-opponent against those claims and considered by the board in its preparatory communication. Consequently, no new issues are raised by this amendment, rather the number of issues is reduced and therefore the appellant-opponent and the board could reasonably be expected to deal with the new fourth auxiliary request within the framework of the oral proceedings without an adjournment.

4.5 For the above reasons, the board decided not to admit auxiliary request 3 and to admit auxiliary request 4 into the proceedings.

5. Clarity - Auxiliary request 4

The appellant-opponent has objected to the subject-matter of claim 1 of auxiliary request 2 for lack of clarity, which objection is also relevant to auxiliary request 4. It merely referred to its written submissions during the oral proceedings before the board.

5.1 The appellant-opponent in particular questioned the clarity of the added functional feature that defines the nozzle means as being able to flush the interior of the liner with fluid discharged upwardly into the barrel of the liner from the head portion of the teat cup when, after withdrawal from the teat, the teat cup falls into an inverted position with its head portion directed downwardly.

5.2 As noted in its written communication, the board considered that the person skilled in the art is given with the contested functional feature of the auxiliary requests clear instructions on how to orient the nozzle to achieve the desired discharge. The feature thus appeared to be clear to the board within the meaning of Article 84 EPC.

5.3 Without any further submissions from the appellant-opponent the board sees no reason to change its point of view. It thus considers the claimed subject-matter to be clear within the meaning of Article 84 EPC.

6. Added subject-matter - Fourth auxiliary request

The appellant-opponent raised several issues of added subject-matter for auxiliary request 2, that are also relevant to auxiliary request 4.

6.1 With regard to the feature that the nozzle means is arranged to discharge fluid in a direction towards the discharge passageway, added to claim 1, this feature corresponds literally to the only feature of the original parent claim 3, originally also dependent on claim 1. There is thus a clear basis in the parent application for this feature.

The allegedly contradictory original disclosure on page 10, line 17 of the parent description, that the nozzle sprayed fluid towards the mouths of the cup, to which the appellant-opponent referred, is an obvious error that has been corrected under Rule 139 EPC in the granted patent, see paragraph [0029] of the patent specification.

6.2 The board reads the contested expressions used in the maintained claim 1 "inverted position" and "after withdrawal" as conveying the same technical meaning and scope as the expressions "inverted rest position" and "after take-off" in the context of the contested patent, which stem from the original application documents and have been referred to by the appellant-opponent. The board thus maintains that the use of those expressions in the claim does not represent added subject-matter.

6.3 With regard to the expression with fluid discharged "upwardly into the barrel of the liner", in the opinion of the board this feature has a clear basis in similar expressions in the parent description: "...flushed with fluid discharged upwardly into the barrel of the liner..." (page 4, line 23), "Nozzles 13 spray these various fluids upwardly into the barrels 8..." (page 10, lines 16, 17), and in the figures that explicitly depict the nozzle 13 with a discharge direction into the barrel 8 with the associated clear explanation of the function of that discharge direction in the description, which is indeed to be able to flush the interior of the barrel 8 (see e.g. page 4, lines 18-25). The board thus maintains that this feature has a direct and unambiguous basis in the parent application.

6.4 In respect of the above functional feature, the appellant-opponent also objects that it has been taken from the specific embodiment of the description, which is a milking cluster of four milking cups, without however restricting the scope of claim 1 accordingly to a milking cluster. Taking this functional feature, without including the restriction of the cup being in a milking cluster represents, according to the appellant-opponent, an unallowable intermediate generalisation.

In this regard the board notes that an intermediate generalisation is not unacceptable if the extracted feature is not inextricably linked to those of the originally disclosed specific set of features, see CLBA II.E.1.9.

In the present case, the added feature relates to the flushing operation of the interior of the individual cup using an internal nozzle, in an inverted position of the cup after withdrawal from the teat. This function is in the board's opinion functionally and structurally independent from the cluster feature. Indeed, it is not apparent how belonging to a milking cluster or not is linked in a clearly recognisable way to the internal liquid discharge and flushing of an individual cup. It is rather immediately clear to the skilled person that belonging to a milking cluster is merely an example and subsidiary to the internal flushing operation of each individual cup. The same conclusion may be derived from the original description where the relevant technical teachings focus on the individual cup features, without describing or suggesting any implication of the cup being in a cluster or not in the internal flushing operation. The board thus maintains that, irrespective of whether there is an intermediate generalisation or not, this would be allowable in any case.

6.5 The board also considers, contrary to the submissions of the appellant-opponent, that the expression integrated with the teat cup in claim 4 of this request (in claim 5 of the auxiliary request 2) has the same technical meaning as the original expression disclosed in claim 12 of the parent application integral with the teat cup and therefore does not add subject-matter.

6.6 As otherwise there is a clear basis for the claimed subject-matter in the parent application and application as originally filed, the board concludes that the claims according to auxiliary request 4 meet the requirements of Article 76(1) EP and Article 123(2) EPC.

7. Novelty - Fourth auxiliary request

The appellant-opponent argued that the subject-matter of claim 1 of the fourth auxiliary request lacked novelty over documents E1 and E7.

7.1 It is undisputed that both documents disclose a milking cup with a nozzle in the head portion of the inner liner. It is however in dispute whether they also disclose that the nozzle is able to discharge fluid upwardly into the barrel of the liner.

7.2 As regards the aforementioned feature, the board notes that the claim requires the nozzle to have that ability in an inverted position: "...when, after withdrawal from the teat, the teat cup falls into an inverted position with its head portion directed downwardly". That is, when the cup head and consequently the nozzle are in a lower position than the barrel. Therefore, the fluid must reach its destination "into the barrel" only with the outcoming nozzle jet thrust, without the contribution of gravity. The nozzle must thus be properly oriented to be able to produce the appropriate thrust direction.

The appellant-opponent submits in this context that it is not clearly defined in the claim where the head portion ends and the barrel begins. Therefore, the feature "into the barrel" should be broadly interpreted as reaching above the liner cylindrical portion. The board disagrees. The skilled person reading the claim with normal reading skills and giving terms their usual meaning, would understand the claimed term "barrel" in its usual sense to be "a drum or cylindrical part" of the liner (see Merriam-Webster), which is also, as defined by the patent specification (see paragraph [0002]), the portion of the liner that engages about the teat. Thus for the skilled person the two terms define two clearly distinct liner sections, the cylindrical portion (barrel) and the wider head portion that begins where the teat cup liner ceases to be cylindrical.

The disputed feature therefore requires as understood by the board that the nozzle has a proper orientation with a discharge direction into the cylindrical part of the liner.

7.3 Turning to citations E1 and E7, there is no explicit disclosure of the discharge direction in either document, other than what might be inferred from the figures (figure 1 in E1 and figure 2a in E7). These figures disclose nozzles located at the head portion that are clearly arranged to discharge liquid towards the opposite side of the head portion and not into the barrel or cylindrical portion of the liner, as required by the claim.

The appellant-opponent submits that, nevertheless, due to the fluid jet conical shape, part of the fluid would be discharged into the barrel, which would anticipate the claimed feature. However, E1 only describes (see page 581) that the nozzle means is a stainless steel nozzle of 1.5 mm internal diameter and E7 (see page 9, lines 29,30) that the nozzle opening is about 4 mm in diameter. From these dimensions the skilled person cannot infer whether the jet emerging from the nozzles is expressly conical in shape, much less a conical opening angle of the discharged jet.

7.4 In view of the above, the only clear and unambiguous disclosure for the skilled person that can be derived from E1 or E7 is that the known nozzles are able to discharge fluid toward the opposite wall of the liner head portion. A clear and unambiguous disclosure that any of the nozzles is able to discharge fluid into the barrel of the liner in an inverted position of the cup, as claimed, cannot be derived directly and unambiguously by the skilled person.

7.5 The board thus concludes that the subject-matter of claim 1 of the fourth auxiliary request is new.

8. Inventive step - Fourth auxiliary request

The appellant-opponent has raised several objections of lack of inventive step for the subject-matter of claim 1 of auxiliary request 4.

8.1 E7, E1, E8 and E10 are considered by the appellant-opponent as suitable starting points for an assessment of inventive step.

They describe different arrangements having either a nozzle at the cup head discharging towards the opposite wall part of the cup head or towards the cup mouth or nozzles placed at the lower part of the teat cup. Therefore, none of them describes nozzle means at the cup head that are able to discharge fluid in a direction into the barrel when the milking cup is in inverted position, as is claimed in claim 1.

8.2 The interior of the cup barrel can thus be flushed after being taken off, in inverted position, with cleansing fluid using the same nozzle means at the cup head previously used for treatment fluid, see paragraph [0013] of the patent specification, which allows a simplified teat cup construction. The associated technical problem can therefore be formulated as how to optimise the operations of disinfecting and cleansing the teat cup by simplifying the teat cup construction, see paragraph [0009] of the patent specification.

8.3 Each of the documents cited by the appellant-opponent, namely E1, E4, E8, E9 and E11, teaches a different solution for improving disinfection and/or cup cleaning: applying a vacuum for improving cleaning fluid circulation (paragraph [0027],[0028] of E11), using an external cleaning member 34c (see figure 3 of E4), using an external UV-light source irradiating the interior of the teat liner (see column 3, lines 11-24 of E9), that a nozzle placed at the teat cup head improves disinfection of the teat and cup withdrawal (see E1, page 579, Summary and page 583, "Teat swabs"), or that spraying sanitiser from below in a direction towards the cup liner wall can improve disinfection (see E8, claim 6). There is no explicit suggestion of nozzle means at a cup head that discharges fluid in a direction into the barrel, nor any indication or suggestion of liquid discharge through the cup nozzles when the teat cup is in an inverted position.

8.4 Only document E4 teaches flushing the interior of the liner with the teat cup in an inverted position. However, this document teaches the use of additional equipment in the form of jetter cups 30 (see cleaning member 34c of the arrangement 30 on figure 3 of E4) for flushing away residues after cluster removal. Thus, D4 teaches using a separate, dedicated device with associated nozzle for the final, subsequent flushing of the cup in inverted position and not the use of any nozzle in the teat cup. Accordingly, neither using an existing nozzle of the cup nor modifying its discharge direction is suggested by E4.

8.5 The appellant-opponent further argues that it is generally known to the skilled person to clean or flush the liner after milking with disinfecting liquid or with rinsing fluid, which would lead the skilled person to use the nozzle of E7 at the cup head for flushing in an inverted position. The appellant-opponent adds in support of its argument, that this nozzle has also already been described to supply rinsing liquid through the upper leakage line 4 (see page 7, lines 20-30). It also adds that the further step for arriving at the claimed subject-matter, namely to modify the discharge angle of the known nozzle (end of tube 18 in figure 2a) in a direction into the barrel instead of toward the opposite cup head wall, would be seen by the skilled person as a trivial modification in order to obtain a satisfactory cleaning result. The board is not convinced by this argument. Document E7 only teaches the use of the teat cup in position and engaged with the teat, including supplying rinsing fluid through the upper and lower leakage lines 4, 15. The skilled person would therefore, when seeking to improve the operation of the device, develop it further in an obvious manner, essentially in its position of operation, engaged to the teat. While engaged with the teat, there is no obvious reason that would motivate the skilled person to modify the discharge direction of the cup nozzle.

8.6 In the opinion of the board this line of attack, and also the other submitted combinations, overlook the inventive insight that with a proper teat cup and flexible milk discharge tube the teat cup can fall into an inverted position after being taken off and that in this inverted cup position it can be conveniently flushed using a nozzle inside the same cup, since the flushing fluid can then drain downwardly through the cup mouth. These necessary steps for arriving at the subject-matter of claim 1 of the fourth auxiliary request are neither taught nor suggested by common general knowledge or any of the prior art documents. Consequently, the further step of changing the nozzle discharge direction is also not rendered obvious by any of these teachings.

8.7 This conclusion applies similarly when starting from E4 as closest prior art. E4 describes a specific separate device, a jetter cup, on which the teat cups are placed for cleaning after milking. Modifying a jetter device so that it becomes a teat cup, and is essentially no longer a jetter, goes well beyond the routine of the skilled person.

8.8 The board thus concludes that the subject-matter of claim 1 of the fourth auxiliary request involves an inventive step in the sense of Article 56 EPC.

9. For the above reasons the board maintains that the claims as amended according to auxiliary request 4 meet the requirements of the EPC. The board is furthermore satisfied that the description as amended before the opposition division is in line with the amended claims and in this respect is acceptable. It was also not objected to by the appellant-opponent. The board concludes that the patent as amended can be maintained 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 opposition division with the order to maintain European patent No. 1790217 in the following version:

Claims:

Claims 1-13 of auxiliary request 4, filed with letter of 15 November 2019

Description:

Paragraphs 1-12, 15-32 of the patent specification,

paragraphs 13 and 14 as filed during oral proceedings before the opposition division on 16 February 2016

Drawings:

Figures 1-3 of the patent specification.