T 0102/04 17-10-2007

I. The appeal lies from a decision of the Opposition Division to revoke European patent 0 918 902, which originates from international patent application PCT/GB97/02172 (published as WO-A-98/06891) claiming a priority date of 15 August 1996. The independent claims as granted read as follows:

"1. A composite material for a garment comprising

(a) a water-resistant, water-vapour-permeable, flexible substrate (2) having a first (6) and second (8) side;

(b) a fabric (4) secured to said first side of the substrate; and

(c) a plurality of discrete abrasion-resisting polymeric dots (12) forming a discontinuous lining-forming pattern on the surface of said second side of the substrate and which dots resist abrasion of the flexible substrate."

"28. A garment comprising a composite material as claimed in any preceding claims."

"30. A process of producing a composite material for a garment comprising securing a fabric to a first side of a flexible, water-resistant, water-vapour-permeable substrate; and applying a plurality of abrasion-resisting polymeric dots to a second side of said substrate in order to form a discontinuous lining-forming pattern over the surface of said second side to resist abrasion of the flexible substrate."

II. The European patent had been opposed on the grounds that the claimed subject-matter lacked novelty and an inventive step (Article 100(a) EPC) having regard inter alia to the following documents:

D1: JP-U-64 045 195 (in the form of its English translation D1a);

D2: JP-Y2-05 033 335 (in the form of its English translation D2a);

D3: JP-A-62 233 237 (in the form of its English translation D3a);

D4: JP-B2-03 056 541 (in the form of its English translation D4a);

B1-34: Items of evidence in support of an alleged prior use of the Entrant Sunlock Fabric garments made by Spyder Active Sports, Inc..

III. The decision under appeal was based on two sets of amended claims filed as the Main and the Auxiliary Requests during the oral proceedings held on 6 November 2003. The respective independent Claim 1 of each of those requests read as follows (emphasis added by the Board to show the amendments to the claims as granted):

Main Request

"1. A composite material for a garment comprising

(a) a water-resistant, water-vapour-permeable, flexible substrate (2) having a first (6) and second (8) side;

(b) a fabric (4) secured to said first side of the substrate; and

(c) a plurality of discrete abrasion-resisting polymeric dots (12) forming a discontinuous lining-forming pattern on the surface of said second side of the substrate and which dots resist abrasion of the flexible substrate; the polymer having an elastic modulus greater than about 800 psi (5 Nmm**(2)); each dot having a height in the range of 10 to 200 microns; and the abrasion resistance of the composite material being at least 4 times the abrasion resistance of the flexible substrate alone."

Auxiliary Request

"1. A composite material for a garment comprising

(a) a water-resistant, water-vapour-permeable, flexible substrate (2) having a first (6) and second (8) side;

(b) a fabric (4) secured to said first side of the substrate; and

(c) a plurality of discrete abrasion-resisting polymeric dots (12) forming a discontinuous lining-forming pattern on the surface of said second side of the substrate and which dots resist abrasion of the flexible substrate; the polymer having an elastic modulus greater than about 800 psi (5 Nmm**(2)); each dot having a height in the range of 10 to 200 microns; the percentage coverage of the surface of the substrate by the dots being 20 to 80%; and the abrasion resistance of the composite material being at least 4 times the abrasion resistance of the flexible substrate alone."

The Opposition Division revoked the patent for lack of an inventive step, on the basis of reasoning which can be summarised as follows:

(a) Amended Claim 1 according to each of the Main and the Auxiliary Requests complied with the requirements of Articles 84 and 123(2) EPC. Thus, they were formally allowable.

(b) None of cited prior art documents D1 to D4 and the alleged prior use of the Entrant Sunlock Fabric garments anticipated all of the features of the respective Claim 1, whose subject-matters were consequently novel.

(c) As to inventive step, the closest prior art was the composite material disclosed in D2, which comprised resin printed in the form of projections/indentations providing for outstanding apparel characteristics and durability. In the field of garments, durability was associated with wear resistance, thus with abrasion resistance. Moreover, projections and indentations encompassed dots. Hence, the skilled person seeking to improve the abrasion resistance of that composite would obviously replace the rather soft polymer of D2 with a harder polymer having an elastic modulus higher than 800 psi, which polymers were known from B29, a document disclosing the polymers defined in Claim 1. The further feature of the polymer coverage defined in Claim 1 according to the Auxiliary Request was known from D1 and from D2. Hence, the claimed subject-matter was obvious.

(d) Since therefore the ground of opposition under Article 100(a) EPC (lack of an inventive step) prejudiced the maintenance of the patent in suit, that patent should be revoked.

IV. On 22 January 2004, the patent proprietors lodged an appeal against that decision and paid the appeal fee on 23 January 2004. In the statement setting out the grounds of appeal, received on 23 March 2004, the appellants inter alia enclosed two sets of amended claims, namely Claims 1 to 46 as the Main Request (Appendix 3) and Claims 1 and the remaining claims of the Main Request except Claim 9 as the Auxiliary Request (Appendix 4), respectively, together with an indication of their basis (Appendix 5). The respective independent Claim 1 of each of the Main and Auxiliary requests read as follows (emphasis added by the Board to show the amendments to the claims as granted (in bold) and the further amendments (in bold and italics) to the claims underlying the decision under appeal):

Main Request

"1. A composite material for a garment comprising

(a) a water-resistant, water-vapour-permeable, flexible substrate (2) having a first (6) and second (8) side;

(b) a fabric (4) secured to said first side of the substrate; and

(c) a plurality of discrete abrasion-resisting polymeric dots (12) forming a discontinuous lining-forming pattern on the surface of said second side of the substrate and which dots resist abrasion of the flexible substrate; the polymer having an elastic modulus greater than about 800 psi (5.5 Nmm-2); the abrasion-resisting polymer being water-vapour-permeable and selected from polyesters, polyamides, silicones, polyurethanes and polyurethane-polyester composites; each dot having a height in the range of 10 to 200 microns; the dots having a substantially smooth, non-angular profile and each of the dots having a cross-section in the plane of the substrate which is substantially circular and a cross-section which is substantially part-spherical in a plane normal to the substrate; the percentage coverage of the surface of the substrate by the dots being 20 to 80%; the abrasion resistance of the composite material being at least 4 times the abrasion resistance of the flexible substrate alone; and the water-vapour permeability of the composite material being in excess of 1500 g/m-2/day."

Auxiliary Request

"1. A composite material for a garment comprising

(a) a water-resistant, water-vapour-permeable, flexible substrate (2) having a first (6) and second (8) side;

(b) a fabric (4) secured to said first side of the substrate; and

(c) a plurality of discrete abrasion-resisting polymeric dots (12) forming a discontinuous lining-forming pattern on the surface of said second side of the substrate and which dots resist abrasion of the flexible substrate; the polymer having an elastic modulus greater than about 800 psi (5.5 Nmm-2); the abrasion-resisting polymer being water-vapour-permeable and selected from polyesters, polyamides, silicones, polyurethanes and polyurethane-polyester composites; each dot having a height in the range of 10 to 200 microns; in which the centre of each dot is spaced from the centre of an adjacent dot by 200 to 2000 microns; the dots having a substantially smooth, non-angular profile and each of the dots having a cross-section in the plane of the substrate which is substantially circular and a cross-section which is substantially part-spherical in a plane normal to the substrate; the percentage coverage of the surface of the substrate by the dots being 20 to 80%;

the abrasion resistance of the composite material being at least 4 times the abrasion resistance of the flexible substrate alone; and the water-vapour permeability of the composite material being in excess of 1500 g/m-2/day."

As regards the further claims, the following amendments had been made:

- A new Claim 2 had been added;

- Claim 25 now concerned "a process for producing a composite lining material for a garment or the like" comprising the features already defined in respective Claim 1.

V. By letter dated 18 August 2004, the opponents (now respondents) enclosed their observations in response to the statement setting out the grounds of appeal as well as Declaration No. 4 by Mr Uemoto dated 18 August 2004 (B36) and Exhibits MU28-MU31, identified as documents B37 to B40.

VI. In a communication dated 14 August 2007 to prepare oral proceedings the concerns which the Board then had in relation to some of the arguments, evidence or requests presented, inter alia those concerning the amendments to the claims, were made known to the parties.

VII. In response to that communication of the Board, the respondents raised objections under Articles 84 and 123(2) EPC against the amendments to the claims of the Main and the Auxiliary Requests (letter dated 17 September 2007).

VIII. By letter dated 11 October 2007, the appellants informed the Board that they did not wish to proceed with the scheduled oral proceedings and that they requested a decision based on the written record. No comments whatsoever were made about the latest objections raised by the respondents under Article 123(2) or 84 EPC.

IX. The Board informed the parties that the scheduled oral proceedings would nevertheless be maintained (facsimile dated 12 October 2007).

X. Oral proceedings were held on 17 October 2007, pursuant to Rule 71(2) EPC, in the announced absence of the appellants. After a discussion with the respondents on the amendments to the claims, who inter alia sought to raise an objection under Article 123(3) EPC against the expression "or the like" in Claim 25, the debate was closed for deliberation. Then, the Board announced the decision.

XI. The appellants had, in writing, essentially argued as follows:

(a) The amendments to the claims had a basis in the application as filed. In particular, the requirements that the abrasion-resisting polymer should have an elastic modulus greater than 800 psi (5.5 Nmm-2), that it should be water-vapour permeable and be selected among the polymers defined in Claim 1, had all been disclosed in the description as filed. Hence, the amended claims were formally allowable.

(b) Novelty had been acknowledged in the decision under appeal, which was not contested.

(c) As to inventive step, the skilled person starting from D2 with the aim of improving abrasion resistance should have made a number of choices to arrive at the claimed subject-matter, such as: dots with a optimised form, a harder polymer having an elastic modulus greater than 800 psi suitable for an at least four fold improvement of the abrasion resistance as well as a specific water-vapour-permeable polymer. However, the mentioned choices were neither obvious from D2 nor were they suggested in any of D1, D4 and the Entrant Sunlock Fabric garment either.

(d) Therefore, the decision under appeal should be reversed.

XII. The respondents have essentially argued as follows:

(a) Since the application as filed merely mentioned that a dot-forming polymer made of polyurethane could also be water-vapour permeable, the generic requirement now defined in Claim 1 of the Main and the Auxiliary Requests, i.e. that all of the dot-forming polymers listed in Claim 1 were water-vapour permeable, constituted added subject-matter. Furthermore, not all of the abrasion resisting polymers as disclosed in the application as filed were said to be water-vapour permeable, e.g. PVC. The common property of polymers listed was only their being elastomeric. The absence in Claim 1 of any limitation of the dot-forming polymer to being "elastomeric", together with the generic requirement that it be "water-vapour permeable" had no basis in the application as filed. Furthermore, since water-vapour permeability depended on many factors such as kind of material, thickness and pressure, in the absence of any method for assessing whether or not a dot-forming polymer fulfilled the feature "water-vapour permeable polymer", that feature in Claim 1 was meaningless in the context of dot formation, thus unclear. It was not clear either whether the polyurethane polymer OLC-5T mentioned in the patent in suit was water-vapour permeable. A clarity objection was raised also against the features "abrasion resisting polymer" and "at least 4.0 times the abrasion resistance of the flexible substrate alone". Finally, the introduction of new Claim 2 in each of the two sets of amended claims and the amendment in Claim 25, "or the like", were neither necessary nor appropriate to overcome a ground of opposition. Indeed, the inclusion of the expression "or the like", contravened also the requirements of Article 123(3) EPC. Consequently, the Main and the Auxiliary Requests defined combination of features not disclosed in the application as filed, which should not be allowed.

(b) Although none of the prior art items D1, D2, D4 and the Entrant Sunlock Fabric garment disclosed all of the features as claimed, each of D1, D2, D4 and the Entrant Sunlock Fabric garment however was a suitable closest prior art for assessing inventive step. In the absence of any evidence of improvement over the composite materials disclosed in the said prior art, the problem to be solved was the provision of another fabric having sufficient abrasion resistance. The solution to that problem as claimed was obvious in view of any of the following combinations: D4 and the common general knowledge; D4 and D2; D2 and D4; D1 and the common general knowledge; D1 and D2; Entrant Sunlock fabric garment and the common general knowledge; Entrant Sunlock Fabric garment and D2; D2 and D1 or D2 and the Entrant Sunlock Fabric garment.

(c) The patent proprietors had withdrawn their request for oral proceedings at a late stage of the proceedings, by a letter expressing an unclear statement of abandonment of the patent, without sending that letter directly to the respondents too. In particular, the appellants had not dealt with the latest objections of the respondents. Following the facsimile sent by the Board concerning the decision to maintain the date set for oral proceedings, the respondents discovered on Friday 12 October 2007 afternoon, from an online inspection of the file, the letter of the proprietors. However, since the outcome of the oral proceedings was uncertain for the respondents, they had to be prepared for all scenarios, in particular on all of material filed on inventive step. Thus, the respondents had no opportunity but to attend the scheduled oral proceedings. This behaviour of the proprietors consequently warranted an apportionment of costs.

XIII. The appellants (patent proprietors) had requested in writing that the decision under appeal be set aside and that the patent be maintained on the basis of the Main or Auxiliary Request filed on 23rd March 2004.

XIV. The respondents (opponents) requested that the appeal be dismissed and that there be an apportionment of costs.