T 1041/12 - "Full container" is unclear (first blog post)

Blog headnote: 
Referring in the claim to a "full container", renders the claim unclear.

Analysis: The Board seems non-receptive to the argument that in commercial and economic reality, it is clear when a container is full. Citing an EU Directive that sets the maximum fill level of an aerosol dispenser did not convince the Board.

T 1041/12 - online 06.03.2015

Dated 04.09.2014 - Board 3.3.10 (Mercey, Perez Carlon, Rogers) - click here for the decision

Summary of Facts and Submissions

I. The appellant (applicant) lodged an appeal against the decision of the examining division to refuse European patent application No. 05 764 128.

II. The documents forming part of the examination proceedings included the following:

D1: Council Directive 75/324/EEC of 20 May 1975 on the approximation of the laws of the Member States relating to aerosol dispensers

D2: Commission Directive 2008/47/EC of 8 April 2008

III. Claim 1 of the main request in appeal proceedings, filed under cover of a letter dated 30 March 2012, reads as follows:

"A method of freshening air comprising dispersing an air freshening composition comprising a malodor counteractant, into the air, wherein said air freshening composition is provided in a container, said container comprising:

a) a propellant comprising a compressed gas, and

b) a dispenser;

wherein said compressed gas is selected from the group consisting of compressed air and nitrogen, and further,
wherein said air freshening composition is released from said container at a flow rate of from 0.1 grams/second to 1.5 grams/second, wherein the flow rate is determined by measuring the rate of air freshening composition expelled from a full container for the first 60 seconds of use." [...]

Reasons for the Decision

[...] 2. Clarity, Article 84 EPC:

2.1 Claim 1 of the main request contains the feature "wherein said air freshening composition is released from said container at a flow rate of from 0.1 grams/second to 1.5 grams/second, wherein the flow rate is determined by measuring the rate of air freshening composition expelled from a full container for the first 60 seconds of use".

2.2 Article 84 in combination with Rule 43(1) EPC stipulates the requirements that the claims shall be clear and define the matter for which protection is sought in terms of the technical features of the invention. These requirements serve the purpose of ensuring that the public is not left in any doubt as to which subject-matter is covered by a particular claim and which is not (see T 337/95, OJ EPO 1996, 628, Reasons 2.2 to 2.5).

Claim 1 is directed to a method which requires a container capable of releasing an air freshening composition at a defined flow rate measured from a full container for the first 60 seconds of use.

The key issue to be decided is whether the skilled reader clearly understands what is meant by the feature "from a full container" in claim 1 so that it can be unambiguously determined whether a specific container is capable of releasing an air freshening composition during the "first 60 seconds of use" at the flow rate required by claim 1.

2.2.1 Although a container comprising a compressed gas propellant is always "full" throughout its lifetime, as the propellant fills the whole inner volume of such a container, the board concurs with the examining division and the appellant that this is not the intended use of the term "full" in the context of this patent application.

However, an unambiguous definition of the feature "full container" is, nevertheless, required.

2.2.2 The appellant argued that the term "full" as it would be understood by the skilled reader referred to the unused, sealed product as taken directly from the shelf of a store or from the end of a production line, and that for this reason the feature "full container" was clear. Every commercially available product of this kind must indicate its net content by weight, and the skilled person could easily determine whether a container was full simply by weighing.

However, which fraction of the net capacity of a specific container is filled in a finished product is a decision taken during its production upon the basis of various considerations which also include marketing and economical issues and within the framework of the relevant legal requirements, such as those of documents D1 and D2. For this reason, the skilled person cannot know a priori which filling level of a container corresponds to the state of "full container".

The appellant itself acknowledged during the oral proceedings before the board that a full container could contain 70%, 60% or even 50% of air freshening composition and still be a "full container" in the sense of claim 1. The appellant could not indicate an unambiguous lower limit of air freshening composition below which the container would no longer be regarded as "full".

Thus, the interpretation of full as an unused, sealed product as taken directly from the shelf of a store or from the end of a production line does not provide an unambiguous definition of "full container" which could allow the skilled person to determine whether a specific container is capable of releasing an air freshening composition at the flow rate defined in claim 1.

2.2.3 In a different line of argument, the appellant relied on D1, which is a Directive that sets the maximum fill level of an aerosol dispenser, and argued that every producer would fill a container up to this maximum legal limit.

The board considers, however, that D1 merely sets a maximum volume of the liquid phase in the dispenser with respect to its net capacity in view of safety considerations, but does not oblige producers to fill every container up to such limit. The appellant has failed to provide evidence that a producer would always fill a container up to said maximum and, furthermore, this line of argument is at odds with the statement of the appellant itself that a full container could contain 70%, 60% or even 50% of air freshening composition and be a "full container" in the sense of claim 1.

In addition, such a Directive can be modified (see for example D2, which modifies D1) or even repealed at any later point in time, so that even assuming that every container were to be filled up to the legally allowed maximum, there is no legal certainty that such upper limit would remain constant during the patent term.

2.2.4 The board thus concludes that the feature "from a full container" does not allow the skilled person to unambiguously determine whether a specific container is capable of releasing an air freshening composition at the flow rate defined in claim 1 and thus said claim lacks clarity.

[...]