CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1690/22 – Have packaging of pralines and of cigarettes something in common? It depends on how the claim is formulated

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Patent EP 3 293 124 B1 relates to a high power packaging method and device, in particular for small pieces like pralines.

Brief outline of the case

The opponent appealed the rejection of its opposition.

In its decision the board held that claims 1 (method) and 9 (device) as granted lacked IS over D3=DE 10 2008 019 605+D1=US 4 947 617.

AR 1-3 were not admitted in the procedure under Art 12(3) and (5) RPBA.

The board dismissed two objections under R 106.

The patent was thus revoked

The case is interesting in respect of the lack of IS decided by the board

The OD’s decision acknowledging IS

The OD found that the embodiment of Figure 7 of D3 disclosed all the features of claims 1 and 9 except for the multiple or double track.

Consequently, it identified a series of distinguishing features.

On the basis of these distinguishing features, the OD formulated the objective technical problem to be solved as increasing the packaging performance of the packaging machine known from D3.

It was known from D1, that an increase in performance could be achieved with a two-lane structure of the device for the simultaneous production of two packages.

The skilled person could thus arrive at the subject-matter of claim 1 on the basis of the teaching of D3 and faced with the task of increasing packaging performance, knowing the teaching of D1.

The OD found that the skilled person would not have taken D1 into account because it was very unlikely that the skilled person would use a cigarette wrapping machine to further develop a chocolate wrapping device.

The proprietor`s point of view supporting the presence of IS

The proprietor basically agreed with the position of the OD by arguing that D1 and D3 concern different technical fields, namely D1 the field of cigarette packaging, corresponding to IPC class B65B 19/02, and D3 the field of packaging of small articles, corresponding to IPC class B65B 11/00.

The respective teachings of D1 and D3 are addressed to different skilled persons and would therefore not be combined by the same skilled person in an obvious way.

Specifically D1 relates to the secondary packaging of already primary packaged cigarette groups in several product lanes and that cigarette groups can only be handled with suction grippers, in contrast to the small-piece articles of D3, and that the concept of the teaching of D1 is not readily transferable to the teaching of D3 due to the necessarily different handling of the goods to be packaged.

The board’s decision

The board agreed with the opponent that the goods to be packaged by the method are merely given by way of example or illustration in the wording ‘in particular’ and ‘preferably’ in the claim, without, however, limiting the subject-matter of claim 1 as granted.

Accordingly, it is not apparent why the skilled person skilled would have to be specifically orientated towards the goods to be packaged when designing a packaging machine.

Rather, the objective technical task of increasing performance is not necessarily dependent on the goods to be packaged, so that the skilled person would generally consider concepts of similarly designed packaging machines in any further development.

Furthermore, D3 expressly discloses that its teaching is not limited to chocolate products. Moreover, each teaching of D1 and D3 is fully described in itself with respect to the handling of the goods to be packaged.

Consequently, it is not apparent why the handling of the goods would be related to the distinguishing feature and consequently to the objective technical task facing the skilled person. This applies all the more since the subject-matter of claim 1 as granted leaves open an embodiment of the handling of the products.

The skilled person would not have recognised the peculiarities of the handling described in D1 and D3 as a possible obstacle to a combination of them when solving the objective technical problem.  

On the contrary, it would have directly encountered the distinguishing feature for solving the technical problem, since D1 expressly teaches, without further reference to the handling of the goods at stake, that “To increase the efficiency, according to a further feature of the invention, the apparatus is designed for two-track operation, that is to say for the simultaneous production of the hinge-lid packs. Each folding turret is designed as a double turret with two turret discs on a common drive shaft.

Accordingly, the OD’s finding that the skilled person would be prevented from implementing the solution disclosed in D1 by necessary adaptations of the packaging machine disclosed in D3 is not correct, because the elements of D3 would have to be substantially modified or replaced in order to arrive at the subject-matter of the independent claims.

The changes that would actually be necessary for an adaptation of the device disclosed in D3 are neither explained in the contested decision nor were they presented by the proprietor.

The board held that the skilled person would have no difficulty, to bring in a pair of turrets with a common axis of rotation, as expressly proposed in D1, in order to set up a two-track operation.

The skilled person would therefore take D1 into account when further developing the packaging machine disclosed in D3 and could also incorporate the efficiency improvement teaching disclosed in D1 into the teaching without further difficulty.


The case is interesting in that it makes clear that a broad claim is easier to tackle when it comes to lack of IS than a claim related to a very specific purpose.

It was the deliberate choice of the proprietor to claim a high-performance packaging device for packaging, in particular small-sized products, preferably confectionery, such as hard or soft caramels, chocolates or the like.

It might have been more difficult to argue if the packaging device would have dealt with small sized confectionary products, but even this is not certain.

The description could have helped to limit the claim, but it was correct not to read in the claim limitations contained in the description.

In view of the claim as granted and their general character, it could not be expected that the skilled person would only look in a very specific part of the packaging class B65B. This is the more so, since the ESR indicates as searched classes B65B and A23G.

D3 was mentioned in the ESR, but not D1. The ED and the OD read in the claim limitations which were not there.

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8 replies on “T 1690/22 – Have packaging of pralines and of cigarettes something in common? It depends on how the claim is formulated”

francis hagelsays:

I find always surprising this reluctance to include field-of-use limitations in independent claims. It may be understandable at the time of drafting the application, but this is a big mistake during exam/opposition, when claiming a field of use would be simple and effective to specify the “art” of the skilled person and make irrelevant for IS documents outside that art.

There seems to be something wrong in the education of patent agents : this idea that the broadest possible scope (i.e. no field of use limitation) is always the best option. “Grasp all, lose all.”, in French “Qui trop embrasse mal étreint”.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

You certainly have a point in your comment, but claiming a field of use might not be enough to avoid an objection of IS.

Indicating a field of use might only help if the intended use implies specific features of the device/apparatus. I refer here to the Guidelines F-IV, 4.13.

As far as IS is concerned, the skilled person might not only look in the specific field of use, but also to neighbouring or even general technical field, if the skilled person could be expected to find of a solution in those fields. See T 32/81, OJ 1982,228, T 176/84, OJ 1986,50 T 195/84, OJ 1986,121.

francis hagelsays:

Mr Thomas,

I agree. Claiming a field of use is a convincing differentiation if it can be related to features/advantages disclosed in the original application. The risk for the applicant of being only concerned with a broad scope is to forget about “fallback positions” (if the field of use is not recited in the initial claims) carefully supported in the original application by features/effects specific to the field of use.

The paradox is that frequently, the field of use is the only one of practical/commercial interest for the applicant.

Max Dreisays:

Nice case for drawing out comments. He who lives by the sword dies by the sword. If you claim a wrapping machine, as opposed to a cigarette wrapping machine, with the hope of asserting your patent in all fields of wrapping, do not be surprised if the prior art in all fields of wrapping is asserted against you. If your claim is to a machine “for” wrapping cigarettes, do not be surprised if it bites only in the tobacco industry but nevertheless that particular industry successfully asserts against the claim art found anywhere within any part of the wrapping machine industry.

How to draft? Work out what was your inventor’s objective technical problem, what was their contribution and in which art, and craft your claim around that fundamental analysis. Then write a description that conforms to that OTP. You can’t do more than that. But to do that you need to have to hand, when drafting, an accurate and full picture of the prior art landscape.

Here, I suspect that whatever the OTP was, it was not confined to any particular field of use. But it surely could have been, if the drafter had been i) better informed and ii) imaginative, and would have been, if the drafter had enough diligence and talent to take account, while doing the drafting, of what would be the validity attacks incoming, during the post-grant opposition period, if the drafter were put in the shoes of a competitor.

Extraneous Attorneysays:

@Max Drei,

Nice case for drawing out comments indeed. I beg to disagree with your last point. When drafting the patent application, one never has full knowledge of the prior art which could be cited in examination, much less in opposition — because that simply isn’t possible. Even with a prior art search in hand, there are still other documents which did not come up in your search and will come up in someone else’s. It is always better if you have more prior art, but your client’s budget, and therefore your time, is always finite.

Admittedly, for the same invention and in the same time, some drafters will do a great job, most will do an acceptable job, and some will do a terrible job. But just because a piece of prior art comes up, which is relevant from an “unexpected” and difficult-to-defend-against angle, does not necessarily mean that the drafter did a terrible job X years ago.

Max Dreisays:

I think we agree, EA. The drafter must always reckon on prior art emerging after filing, which is more relevant than anything brought to light by Appplicant’s own patentability searches done in preparation for the drafting task. Crafting fall-back positions is part of the skill of competent drafting. Further, writing a set of “concentric” onion-skin dependent claims is feasible only when you have some idea of the inventive concept and have visualised a ladder of abstraction, all the way from the “best mode” to the outermost credible conceptual notion of what the contribution to the art might be.

European patent attorneys are taught so to draft, and must be able so to draft, if they want to qualify as European patent attorneys. In this particular case, curiously, it looks as if the drafting was done by one of Germany’s biggest and most prominent patent attorney firms. One wonders how much freedom it was given, by its client, to draft as competently as it could manage.

How is patent drafting though, in other jurisdictions? In particular, how is it in the USA? Not at all the same, I understand.

francis hagelsays:

@Extraneous Attorney

The prior art heavily depends on the “art” of the skilled person, this is why field-of-use limitations are so critical. This requires adequate communication with your client. Your client may be eager to claim a broader scope but then, the patent attorney should warn them about the likely implications : citation of X documents in the search report which have no bearing whatsoever on the field of use of interest to the applicant. And if nevertheless you agree with your client to start from broad claims without specified field of use, it is prudent to have “fallback positions” in place with suitable emphasis and support in the description.

Avatar photoDaniel X. Thomassays:

Thanks to al the commenters. All seem right in their assumptions/conclusions.

I would like to add that a representative cannot act against its client. If the client wants a broad claim not limited to a specific use he has no choice but to file and insist upon such a claim.

Some applicants/proprietors are difficult to handle, but this is part of life’s rich tapestry. The best representative can only act on the basis of what is given to him by his client.

There are indeed manifest limits in the money spent for pre-filing searches. This is why the EPO searches again. That this search is not always fruitful is, alas, illustrated here.

What is surprising in the present case is that, in spite of a broad claim, not limited to a specific type of article to be wrapped, the representative argued that the two documents considered, D3 and D1, belong to totally different classification units in the general IPC class B 65B.

This is a rather week argument, as going from one track packaging machine to a two track packaging one does not a priori appear an unsurmountable task, or at lest worth an attempt. That, in order to increase the throughput, the skilled person would look at double track packaging machines, even if they were for different goods, is not an abstruse thought. The skilled person does not have blinkers.

I would therefore think that the applicant/proprietor, the ED and the OD, read into the claim limitations from the description drawings which were not present, as the board clearly said.

A claim limited to packaging confectionary, at least as AR, could have had a better chance to survive, but we will never know as it was never filed.

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