T 1180/05 02-08-2007

1. The appeal is admissible.

2. Main request

The feature of claim 1 of the main request: "a contact surface having greater rigidity than said film blanks (2, 3) is provided by the other film blank" is not disclosed in the originally filed application as published under WO-A-99/66839.

The original disclosure contains the following relevant pieces of information:

- at least one resilient seal member having greater rigidity than the film blanks is attached to at least one film blank to engage a contact surface of the other film blank (paragraph bridging pages 2 and 3);

- two resilient seal members in the form of sealing plates having a greater rigidity than the film blanks are provided on the film blanks (paragraph bridging pages 5 and 6);

- only one resilient seal member is provided on only one of the film blanks to engage with a non-resilient contact surface on the other film blank (page 7, lines 20 to 25 and claim 1);

Hence, in case where the claimed collecting bag comprises only one seal member, the originally filed documents disclose exclusively that

- a resilient seal member having greater rigidity than the film blanks is provided on one film blank, and

- a non-resilient contact surface is provided on the other film blank.

However, there is no disclosure in the original application that a contact surface having greater rigidity than the film blanks is provided by the other film blank.

Contrary to the argumentation of the appellant I there is no basis in the originally filed documents that, in the case where a sealing member is provided only on one of the film blanks, the contact surface of the other film blank should have the same characteristics as the sealing member, in particular a greater rigidity than the film blanks. Furthermore, there is no teaching that this contact surface is provided by the other film blank itself. When reading the paragraph bridging pages 2 and 3 in combination with the disclosure on page 7, lines 20 to 25 the contact surface unequivocally has to be provided on the other film blank.

Accordingly the ground for opposition based on Article 100 c) is well founded and claim 1 of the main request does not comply with Article 123(2) EPC.

3. First and second auxiliary requests

The deletion of the feature: "a contact surface having greater rigidity than said film blanks is provided by the other film blank" with respect to the granted version, according to claim 1 of the first and second auxiliary requests does not comply with Article 123(3) EPC, since it results in an extension of the protection sought.

The embodiments of the claimed collecting bag covered as a result of the above deletion are no longer restricted to those bags where the contact surface is provided by the other film blank.

The argumentation of the appellant I that this finding is not correct, since the second seal member formed part of the other film blank is not convincing. Figures 6 and 7 as well as the corresponding description clearly show that the seal members are separate elements attached to and arranged on the film blanks. Hence, the surfaces of the seal members cannot be considered as surfaces of the film blanks.

Contrary to the assertion of the appellant I the deleted feature does also have a technical meaning and represents a technical contribution to the invention, since it contributes to the definition of the embodiments of the invention and implies a specific design of the claimed collecting bag.

Accordingly claim 1 of the first and second auxiliary requests contains an amendment to the granted version which results in an extension of the protection conferred, contrary to the requirements of Article 123(3) EPC.

4. Third auxiliary request

4.1 Claim 1 of the third auxiliary request is derived from the granted version (main request) by:

(a) deleting the feature according to which a contact surface has greater rigidity than said film blanks and by

(b) adding the feature: "except collecting bags, wherein said contact surface does not have the same or greater rigidity than said film blanks."

4.2 The assumption that the feature of step b) covers the same content as the feature a) is not correct. According to the feature of step a) the rigidity of the contact surface (rcs) has to be greater than the rigidity of the film blanks (rfb), in other words rcs > rfb. The second portion of the feature of step b) (starting with "wherein") requires that the rigidity of the contact surface is less than the rigidity of the film blanks, rcs < rfb. In conjunction with the first portion of the feature of step b) ("except collecting bags") this means that the rigidity of the contact surface of the claimed bag has to be the same as or greater than the rigidity of the film blanks, rcs >= rfb.

Consequently the replacement of the feature according to step a) by the feature according to step b) results in an extension of the protection conferred, so that claim 1 of the third auxiliary request does not comply with Article 123(3) EPC.

4.3 Under consideration of only the second alternative of the feature of step b) ("the rigidity of the contact surface is greater than the rigidity of the film blanks"), the two steps a and b cancel each other out, so that the final result of the amendments according to the third auxiliary request - second alternative - is a claim covering exactly the same extent of subject-matter as the granted claim 1.

Since claim 1 as granted has been found not to be allowable on the basis that the feature that "a contact surface having greater rigidity than said film blanks is provided by the other film blank" was not originally disclosed, and since the subject-matter of claim 1 of the third auxiliary request without the first alternative of the feature of step b) is identical with the one of claim 1 as granted, such a claim 1 of the third auxiliary request inevitably has to share the fate of claim 1 as granted. Therefore, under the assumption that the steps a) and b) cancel each other out, claim 1 of the third auxiliary request does not comply with Article 123(2) EPC.

5. Fourth auxiliary request

Claim 1 of the fourth auxiliary request is based among other things on the same deletion (step a) and addition (step b) as claim 1 of the third auxiliary request. Therefore, for the same reasons, claim 1 of the fourth auxiliary request does not comply with Article 123(2) EPC.

6. Fifth auxiliary request - Referral to the Enlarged Board of appeal

6.1 Under Article 112(1)a) EPC, the Board of Appeal may, during proceedings on a case, refer any questions to the Enlarged Board of Appeal if

(a) it considers that a decision is required in order to ensure uniform application of the law, or

(b) if an important point of law arises.

6.2 A referral to ensure uniform application of the law is required if the board intends to depart from an interpretation of the EPC in an earlier decision of the boards of appeal.

6.2.1 In the present case, the first part of the question:

"Under which circumstances, if any, does an amendment to a European patent made during opposition proceedings comply with the provisions of Articles 123 (2) and 123 (3) EPC, if the amendment consists in:

a) the removal of subject-matter included in the claim as allowed by the Examining Division but not disclosed in the application as filed",

has been essentially answered in the decision of the Enlarged Board of Appeal G 1/93 to the effect that:

"If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC" (see G 1/93, Order, 1.),"

and the board does not intend to depart from this interpretation.

6.2.2 Regarding the second part of the question of the allowability of the amendments if they consist in:

"b) the introduction of a disclaimer excluding embodiments of the invention not incorporating such a subject-matter (i.e. claimed but not disclosed) from protection",

the board has reached the following conclusions:

On the basis of decision G 1/03, point 2 of the reasons, the board considers the term "disclaimer" as meaning an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments or areas. That decision deals with the allowability of disclaimers which have not been disclosed in the application as filed.

In the present case, the feature:

"except collecting bags, wherein said contact surface does not have the same or greater rigidity than said film blanks",

contained in the claim 1 of the third and fourth auxiliary requests, if taken at its face value, appears to be a "disclaimer" with respect to claim 1 as granted.

However, it is not completely convincing that the "disclaimer" per se deserves this name, since, even if it is introduced by the word "except", it contains a double negative in the form: "except... does not have", the result of which is not to disclaim, but to claim additional subject-matter. Furthermore, the board wants to emphasize that the only reason for introducing the "disclaimer" is to reintroduce into the claim a deleted feature. Therefore the present approach results in nothing more than an artificial and editorial rewording of the claim without modification of its technical content.

Putting aside these considerations and accepting that the feature in question is a disclaimer, the board is not aware of any decision which has allowed this kind of disclaimer in order to overcome the conflict between Articles 123(2) and (3) EPC, nor could the appellants cite such a decision.

In particular, in its decision G 1/03, the Enlarged Board of Appeal has not allowed the use of an undisclosed disclaimer in the specific situation of potentially conflicting requirements under Article 123(2) and (3) EPC already dealt with in its former decision G 1/93 (see above, 6.2.1).

Accordingly, the Board has reached the conclusion that a decision of the Enlarged Board of Appeal is not required in order to ensure uniform application of the law.

6.3 Turning to the second alternative for referral to the Enlarged Board of Appeal, it remains at the discretion of the Board whether or not to refer a question to the Enlarged Board, even if it concerns an important point of law (see T 390/90, OJ EPO 1994, 808).

In the present case the board decides not to refer this question to the Enlarged Board of Appeal, since it does not consider this question to be an important point of law. Decision G 1/93 clearly pointed out that a granted patent which contains subject-matter which extends beyond the content of the application as filed within the meaning of Articles 123(2) EPC can only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC (see order, part 1 as above cited). Moreover, decision G 1/03 gives a clear indication that a disclaimer may be allowable to restore novelty or to disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons (see order, point II.1). However, there is no basis in G 1/03 for allowing a disclaimer for resolving the potential conflict between Articles 123(2) and (3) EPC.

The board is aware that in other judicial systems the conflicting provisions of Article 123(2) and (3) EPC have been dealt with more liberally in favour of the patent proprietor allowing the use of a disclaimer or - to the same effect - even of a declaration outside the claim disclaiming the subject-matter claimed but not disclosed (see for example: Schulte, Patentgesetz, 7. Aufl., 2005, § 21, Rdnr. 4.4.1, 4.4.2). However this solution is not contemplated in the case law of the boards of appeal, see decision G 1/93.

6.4. Accordingly, the request to refer two questions to the Enlarged Board of Appeal is rejected.