T 0085/16 26-07-2019

1. Main request - Article 100(c) EPC

1.1 The ground for opposition under Article 100(c) EPC prejudices maintenance of the patent as granted.

As already indicated in the Board's communication (see point 1.3), the subject-matter of claims 1 and 2 as granted extends beyond the content of the earlier application as filed. It is not directly and unambiguously derivable by the skilled person from the earlier application as filed.

1.2 The European patent application on which the contested patent is based was filed as a divisional application. This later application (the "divisional") differs from the earlier application (the "parent", application number 00922946.9 - EP 1 188 427 A1) inter alia in that its independent apparatus claim 1 does not contain the following three features (the "omitted features"):

- the pair of upper and lower sheets are made of a non-woven fabric,

- a reinforcement sheet is secured on a lower surface side of the fit gather laminate in the widthwise center area thereof, and

- a back sheet is provided on a lower surface side of the reinforcement sheet.

The independent method claim 2 also does not contain method steps relating to the three omitted features.

1.3 Omission of features - the relevant standard and test

1.3.1 As already stated in the communication of the Board (see points 1.1 and 1.2), when assessing whether the subject-matter of granted claims 1 and 2 of the patent extends beyond the content of the earlier application as filed under Article 76(1) EPC the same principles apply as when examining whether the requirement of Article 123(2) EPC is met. The basic principle therefor can be found in the case law of the Enlarged Board of Appeal and was summarised in G2/10 (see Reasons 4.3).

1.3.2 The appellant argued that the three-point-test developed in T331/87 was applicable in the present case. It further referred to T2311/10, in which decision it was pointed out that the risk existed of applying the three-point-test in the wrong way by formulating an objective technical problem with regard to some state of the art instead of deriving it directly from the application. In the appellant's view, such risk did not exist in the present case and the test should be applied.

1.3.3 However, the basic principle underlying Articles 76(1) and 123(2) EPC is independent of particular tests that have sometimes been used in other decisions, even if this might, in certain cases, have become common practice of the EPO. While such tests might give some guidance in certain situations, they do not substitute the application of said basic principle. The question to be answered is hence what a skilled person can derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed. This is known as the gold standard (see G2/10, Reasons 4.3).

1.3.4 Applied to the present case, it thus has to be established whether the disposable pants and the method of manufacturing them, as defined in claims 1 and 2, i.e. without the limitations to a non-woven fabric, a reinforcement sheet and a back sheet (the omitted features in item 1.2 above), can be derived directly and unambiguously from the original documents of the earlier application (i.e. the parent).

1.4 The omission of the feature "non-woven fabric"

1.4.1 As already mentioned in the communication of the Board under point 2, there is no suggestion in the earlier application that the sheets of the laminate could be anything else than upper and lower non-woven fabric sheets.

Already the first sentence of the earlier application refers to a pair of non-woven fabric sheets. Paragraph [0007] defines the object of the invention and again, reference is made to non-woven fabric sheets. The single embodiment described in paragraphs [0013] to [0039] also shows the non-woven fabric sheets.

1.4.2 The appellant argued that the non-woven fabric was not "essential" for solving the technical problems. The respondent O1 stated that the non-woven fabric sheets were disclosed in the parent application as being essential and that they were indispensable for the function of the invention.

1.4.3 However, whether something is essential or not is not the same as whether subject-matter is directly and unambiguously derivable by a skilled person. For example, a reader might well conclude, after having deliberated on the essentiality of the non-woven fabric for any particular purpose or reason, that another material could also have been used for the laminate's sheets, but this does not mean that it has been directly and unambiguously disclosed. There is no disclosure in the earlier application - be it explicit or implicit - of the general sheets with which the feature "non-woven fibre sheet" was replaced. These general sheets cannot be derived directly and unambiguously from the original documents. Having ascertained this, it is of no relevance whether the sheets of the non-woven fibre type have been presented as being essential for the invention or whether they were indispensable for its function.

1.5 The omission of the feature "reinforcement sheet"

1.5.1 With regard to the omission of the reinforcement sheet, similar considerations apply. As already stated under point 1.3.2 of the Board's communication, there is no passage in the earlier application indicating that a reinforcement sheet could be omitted, let alone an embodiment without such a reinforcement sheet.

1.5.2 The appellant again argued that the reinforcement sheet was not presented as being essential. The description merely referred to bonus effects associated with the provision of the reinforcement sheet. Paragraph [0032] mentioned that the reinforcement sheet rendered it possible to manufacture at a high speed without requiring complicated operations. From paragraph [0031], the skilled person immediately understood, however, that it was the omission of the elastic members in the widthwise direction that allowed the high speed production of disposable pants with a good appearance and a stable wear feeling without complicating the structure of the manufacturing apparatus. This meant that the provision of the reinforcement sheet was not essential and the described good appearance was already achieved by other features.

1.5.3 However, in this case the skilled person might well understand, both from structural and functional considerations, that reinforcement is present because all of the layers have been cut through. It thus appears that the reinforcement sheet has indeed been provided to structurally and functionally compensate for the weakening of the laminate caused by cutting the elastic strands and thereby also leaving incisions in the sheets of the laminate. The skilled person might regard the better appearance due to the provision of the reinforcement sheet to be a "bonus effect". However, the skilled person also recognises that it provides structural compensation for the weakened structure. Hence, even if the argument of the appellant were followed, the skilled person would still regard the provision of the reinforcement sheet as being a structurally integral part of the disposable pant. Whether the better appearance then comes as a bonus effect has no relevance for this finding. Therefore, the skilled person is not presented with any information to omit the reinforcement sheet.

1.6 The omission of the feature "back sheet"

1.6.1 A back sheet is referred to throughout the original earlier application. The description of the background art, the disclosure of the invention, the figures and the original claims all mention it. As already stated in the Board's communication under point 1.3.3, the single embodiment also explicitly includes a back-sheet. There is hence no explicit disclosure of disposable pants not having a back-sheet.

1.6.2 The appellant argued that the person skilled in the art recognised implicitly that omitting the back sheet further simplified the structure of the manufacturing apparatus.

1.6.3 The Board finds, however, that such recognition is not directly derivable from the disclosure of the earlier application. In the earlier application, no information of this kind is apparent. Any recognition that the omission of the back sheet simplifies the structure of the manufacturing apparatus is hence merely based on possible considerations of the skilled person, for which there is no basis in the application as filed. It might originate from the mind of the skilled person but is not directly on unambiguously derivable from the disclosure in the application documents.

For similar reasons as with regard to the omission of the reinforcement sheet, when reading the description, the skilled person is even deterred from omitting the back sheet. In paragraph [0016], the back sheet is described to be "provided so as to cover the entire lower surface of the fit gather laminate 2 on the lower surface side of the reinforcement sheet 3". With the disposable pants necessarily comprising a reinforcement sheet (see the reasoning above under point 1.5), the reader understands that the back sheet is also present. Paragraph [0016] further suggests that the reinforcement sheet should not be exposed but covered by a back sheet. No other means to cover the reinforcement sheet than a back sheet can be deduced from the original application documents.

Therefore, there is no direct and unambiguous disclosure of a disposable pant nor a method of manufacturing it, without a back sheet being present.

1.7 No substantive response from the appellant was received in response to the Board's communication. There is hence no reason to deviate from the opinion expressed in the communication of the Board, which is hereby confirmed.

1.8 As the claims of the main request lack all three "omitted features", their subject-matter extends beyond the content of the earlier application as filed. Article 100(c) EPC hence prejudices maintenance of the patent as granted.

2. Auxiliary requests - Article 76(1) EPC

2.1 None of the auxiliary requests includes all three "omitted features". As laid out under points (1.4), (1.5) and (1.6) above, none of the features can be omitted without contravening Article 76(1) EPC. Furthermore, none of the features added in the auxiliary requests can be regarded as a substitution for one or more of the omitted features. Nor has this been argued to be the case. Insofar as the same feature(s) is/are omitted, the subject-matter defined in the claims of the auxiliary requests extends beyond the original disclosure of the earlier application for the same reasons as set out for the main request. All pending auxiliary requests hence fail to meet the requirements of Article 76(1) EPC.

2.2 Irrespective of the question as to whether auxiliary requests 14 and 15 should be admitted into the proceedings, their respective independent claim still does not include a back sheet. Already for this reason alone, they cannot remedy all the deficiencies of the higher ranking requests (see the reasons given above under point 1.6). Their subject-matter thus also extends beyond the content of the earlier application as filed such that the conditions of Article 76(1) EPC are not met.