T 1050/16 17-12-2019

1. Main request - remittal

1.1 The appellant requested as a main request that the decision under appeal be set aside and the case be remitted to the opposition division with the order for further prosecution of auxiliary request 5.

1.2 Under Article 111(1) EPC, second sentence, the Board of Appeal may either decide on the appeal or remit the case to the department which was responsible for the decision appealed. The appropriateness of a remittal is decided by the Board on the merits of the particular case. There is no absolute right to have every issue decided upon by two instances. Further, the criteria which inter alia can be taken into account when deciding on possible remittal may include for example the parties' requests, the general interest that proceedings are brought to a close within an appropriate period of time and whether or not there has been a comprehensive assessment of the case during the proceedings.

1.3 In the proceedings leading to the decision under appeal, the opposition division denied the appellant the possibility of filing a request during the oral proceedings after announcing that the subject-matter of claim 1 of auxiliary request 9 (which had the same wording as claim 1 of auxiliary request 1 filed on 26 September 2014) did not fulfil the requirements of Articles 84 and 123(2) EPC.

1.3.1 The preliminary opinion of the opposition division regarding this claim (i.e. claim 1 of the (then) auxiliary request 1 of 26 September 2014), which was sent to the parties with the communication dated 6 July 2015, was that such a claim met the requirements of Article 123(2) EPC and Article 83 EPC, notably without mentioning any further objections or points for discussion (see point 7.2 of the preliminary opinion). No other objections regarding this claim had been put forward at that time (albeit objections were however raised against different claims).

1.3.2 Further, no specific objections regarding this particular claim were put forward by the opponents in reply to the preliminary opinion, nor at any other time before the oral proceedings either. With its letter dated 18 January 2016, the opponent 3 stated only in general that there were concerns ("Bedenken") regarding the amendments made to auxiliary request 1 of 26 September 2014 under Article 84 EPC, without specifying what these might be. The sentence immediately before this, in its letter regarding the maintenance ("aufrechterhalten") of the objections under Articles 100(b) and 100(c) EPC, evidently relates to the main request, as no objections had been put forward by any of the parties regarding any possible extension of subject-matter or sufficiency of disclosure objections to auxiliary request 1 at that date. The other opponents did not bring forward any specific objection before the oral proceedings on that request either.

1.3.3 The Board finds that whilst objections might arise at every stage of the proceedings, it cannot be expected from the appellant (in a case such as this) that it should anticipate the substance of any possible objections and then file (in advance) precautionary requests, in particular if in the preliminary opinion of the opposition division it is clearly stated that the requirements of the EPC are met. By denying the appellant the possibility of reacting to the objections put forward for the first time during the oral proceedings by filing another request, the opposition division denied the appellant its right to be heard under Article 113(1) EPC. A party being denied its right to be heard amounts to a substantial procedural violation.

1.4 The appellant argued that the decision of the opposition division was not complete and had made it difficult for the appellant to structure its defence, possibly even leading to a need of appealing twice and to an accrual of costs; it might also have avoided appealing at all. Whether or not the appellant is correct on these points in the case in question can be left undecided, since the appellant anyway made the deliberate and conscious choice of maintaining higher ranking auxiliary requests 1 to 4 each comprising sets of claims upon which the decision from the opposition division was based.

The Board thus finds that, regardless of whether the opposition division should have admitted a further auxiliary request or not, it would serve no useful purpose and that it is not procedurally economical to remit the case for further prosecution at this stage without having dealt with the higher ranking requests (i.e. in terms of the sets of claims filed as auxiliary requests 1 to 4) and at least with the admittance of auxiliary request 5 which forms the basis of the remittal request.

1.5 For these reasons, the Board decided, in the exercise of its discretion conferred by Article 111(1) EPC, not to remit the case to the opposition division for further prosecution of the opposition at that particular stage reached during the oral proceedings before the Board. The main request for remittal was thus rejected.

1.6 The Board notes that auxiliary request 5, on which basis the "main request" for remittal was originally based, was withdrawn at a later stage of the oral proceedings, such that no further discussion of its merits is required here.

2. Auxiliary requests 1 and 3 - Article 123(2) EPC

2.1 Claim 2 of auxiliary request 1 is a combination of the features of independent claim 2 as originally filed with the specific features of the characterizing portion of independent claim 1 as originally filed.

2.2 Independent claims 1 and 2 as originally filed however correspond to two different embodiments of the application. There is however no disclosure in the application of an article comprising the features of both.

2.3 The appellant argued that page 11, lines 31-36 (of the published application) provided a basis for the subject-matter of claim 2 and that the references in the description to "invention" were different from the ones to referring to "embodiment". According to its argument, the skilled person would recognize that these references to the invention (such as the one on page 11) could generally be combined with all the disclosures. The Board, however, does not concur.

The passage on page 11, lines 31-36 of the published application does not provide a basis for the subject-matter of claim 2. The skilled person reading the description would understand that this passage relates "to the invention" which is being explicitly described (i.e. the first invention described at that juncture).

Following the passage on page 11, there is (on page 12, lines 8-13) a further passage where the features of the characterizing portion of independent claim 1 of this request (corresponding to the characterising portion of independent claim 2 as originally filed) are disclosed as belonging to "another embodiment of the invention". Without a previous literal reference to an "embodiment according to the invention" on pages 11 and 12 concerning a pant diaper, the skilled person reading the application understands that the passage on page 12 belongs to another (i.e. a different) embodiment as distinct from the one described immediately before on page 11 (simply referring to "invention") having the overlapping ranges. A direct and unambiguous disclosure of the combination of the referred features of pages 11 and 12 is thus not present.

2.4 The appellant also argued that the passage on page 2, lines 10-22 of the published application taught the skilled person the need to have correct elastic materials and dimensions to obtain the advantages of the invention and thus that the skilled person would directly and unambiguously derive therefrom that the features of claims 1 and 2 as originally filed could be combined. The Board does not find this argument persuasive either.

This passage teaches the skilled person generally that it is important for articles to have appropriate dimensions to the size of the wearer and to place elastics only in the appropriate regions of the article but it does not provide a direct and unambiguous disclosure for an article according to the specific features of the invention as now claimed. The whole application discloses a pant diaper comprising not only the features of the claim but also further specific features relating to its dimensions and the elastics (e.g. the ratio between the maximum width c and length b or other details concerning the position of the elastic web material) such that it would be impossible for the skilled person to derive from this passage alone the specific combination of features of claim 1.

2.5 Thus there is no basis in the whole disclosure as originally filed to combine the features of independent claim 2 as originally filed with the specific features of the characterizing portion of independent claim 1 as originally filed. The subject-matter of claim 2 of auxiliary request 1 does not fulfil the requirement of Article 123(2) EPC and auxiliary request 1 is therefore not allowable.

2.6 The issue of possible exclusion of auxiliary request 3 into proceedings (Article 12(4) RPBA 2007) need not be addressed, since the request is anyway not allowable for the same reasons as explained for auxiliary request 1.

2.7 Claim 2 of auxiliary request 3 comprises the combination of the features of independent claim 2 as originally filed with the specific features of the characterizing portion of independent claim 1 as originally filed discussed above and with the further features of dependent claims 4 and 5 as originally filed. The addition of the further features from dependent claims 4 and 5 does not change the reasoning regarding extension of subject-matter discussed above nor has any of the parties argued that it would.

2.8 The subject-matter of claim 2 of auxiliary request 3 therefore does not fulfill the requirement of Article 123(2) EPC. Thus auxiliary request 3 is not allowable.

3. Auxiliary request 2 - Article 83 EPC

3.1 Claim 2 of auxiliary request 2 defines inter alia that the length of the crotch potion is between 10% and 40% of the entire length of the article as measured in an extended state of the article.

3.2 However, it is not possible for the skilled person to establish the length of the crotch person as required by the features of claim 2 for any other shape than the specific shape shown in Figure 2 of the patent, since the patent does not teach the skilled person how to establish any boundaries of the crotch portion of the absorbent article in general.

3.3 Contrary to the argument of the appellant, the claim is not limited to articles where the dimensions of the crotch portion can be defined. The claim simply defines that the length of the crotch portion is between 10% and 40% of the entire length of the article as measured in an extended state of the article and that the crotch portion is located between the front portion and the back portion. Without a teaching in the patent of how to establish the crotch portion and its boundaries, any limits then established by a skilled person would be nothing but entirely arbitrary when defining a crotch portion of the article and its length as required in claim 2 of auxiliary request 2. The skilled person is thus faced with an impossible burden.

3.4 Paragraph [0054] belongs to the specific embodiment of Figure 2 where two points at which each leg opening changes most abruptly might be identified. This disclosure of a single embodiment however does not teach the skilled person how to establish what are the points where the angle of the edge of the leg opening changes "most abruptly" and where, for example, they might be located for other shapes of leg opening. It is thus impossible for the skilled person taking into consideration paragraph [0054] to define the boundaries and establish the length of the crotch portion for the other shapes encompassed by the wording of claim 2, i.e. over the whole range claimed.

3.5 The invention according to claim 2 of auxiliary request 2 therefore does not fulfil the requirements of Article 83 EPC. Auxiliary request 2 is thus not allowable.

4. Auxiliary request 4 - Article 83 EPC

4.1 The Board exercised its discretion not to exclude auxiliary request 4 from the proceedings under Article 12(4) RPBA 2007. The reasons therefor are however not important for the decision, since as explained below the requirements of Article 83 EPC are not met.

4.2 Claim 1 of auxiliary request 4 defines inter alia that the front and back portions comprise an elastic laminate and that the length b2 of the crotch portion is substantially equal to the distance between the panels of the elastic laminate in the front and back portion.

4.3 Regardless of the question of whether it is clear what these panels of elastic laminate are, the disclosure as a whole does not specify the number, size and shape of these panels nor their possible positions in the front and back portions of the absorbent article.

It is thus only possible for the skilled person to establish the distance between panels of the elastic laminate as defined in claim 1 for very specific embodiments (such as the one of Figure 2, when there is a single panel in each of the front and back portion and their shape and size match the shape and size of the portions).

The whole disclosure does not provide information to a skilled person on how to establish this distance for most of the other encompassed cases in claim 1, such as when there are several panels in each of the portions with each of the panels having possibly a different shape with concave or convex contours.

4.4 The appellant argued that the skilled person recognized that the distance between panels was the closest distance between the two closest panels in each portion and that this distance defined the crotch portion. The Board is however not persuaded by this argument. Paragraphs [0060], [0062] and [0065] disclose the possibility of the elastic web material (and thus the panels) not coinciding with the limits of the front and back portion, of being also present in the crotch portion or being arranged only in parts of the front and back portion. The skilled person therefore does not derive from the disclosure as a whole that the closest distance between the panels is a general criteria to establish the boundaries of the crotch portion that can be applied throughout the invention.

4.5 Even if the skilled person would try to apply this criteria, it would still be impossible for them to carry out the invention over the whole scope claimed. For example, in some embodiments where the panels would be present in the side portions to replace the elasticized side portions (as hinted in paragraph [0065]), it is not clear whether the distance between the panels should be measured in a straight line and possibly over areas outside the absorbent article or only between points whose distance is obtainable without surpassing the boundaries of the article. The patent is simply silent on how such a distance should be established.

4.6 The appellant also argued that there were no "real life" embodiments with more than one panel in the front and back portion or with offset panels and that thus the skilled person with a mind willing to understand would realize that such products fall outside the scope of the claim and would thus be able to determine the distance in all reasonably workable embodiments. The Board however does not agree with this argument, not least since paragraph [0065] discloses possible cases "where the elastic web material 10 is arranged only in parts of the front and/or back portions". It is thus specifically disclosed as a possibility in the disclosure for elastic web material to be arranged in multiple parts of one of the front or back portions, thus more than one panel can be present in each of the front and back portions.

4.7 At least for the reasons stated above, the skilled person would not be able to perform the invention over the whole scope of claim 1 of auxiliary request 4 such that the requirements of Article 83 EPC are not fulfilled. Thus, auxiliary request 4 is not allowable.

5. Auxiliary request 10 - Article 123(2) EPC

5.1 Claim 1 of auxiliary request 10 differs from claim 1 of auxiliary request 1 inter alia in the specific added feature:

"said crotch portion (7) is defined in the longitudinal direction (y) of the article by a transverse line located at said defined point at the front portion (5) where there is an abrupt change of the angle of the edge of the leg opening and a transverse line located at said defined point at the back portion (6) where there is an abrupt change of the angle of the edge of the leg opening"

5.2 The appellant argued that page 11, lines 16-29 and Figure 2 provided a basis for the combination of features of claim 1 of auxiliary request 10.

The Board does not agree. The features added to claim 1 referred to above do not correspond to the ones in the referred passage on page 11. For example, the point at which the angle of the edge of the leg opening changes most abruptly (as described on page 11, lines 19-21 and 23-25) is more specific than a defined point at the front/back portion where there is an abrupt change (as defined in claim 1).

5.3 Contrary to the argument of the appellant, the skilled person would identify a clear difference between "changes most abruptly" and "abrupt change". The latter expression does not differentiate, for instance, between levels of abruptness in cases where there are several abrupt changes (i.e. all of them are encompassed), whereas the expression "changes most abruptly" only encompasses the points at which this rate of change is the highest.

5.4 In addition, the description of the way of establishing the crotch portion on page 11, lines 16-29, belongs to a specific embodiment of a pant diaper of Figure 2 with a leg opening shape comprising (possibly only) two abrupt changes, which necessarily are also the ones that change most abruptly. However, claim 1 is not limited to this specific embodiment of Figure 2 and its specific leg contour shape (i.e. no such limiting features have been included in the claim). It encompasses instead leg opening shapes with a higher number of abrupt changes some of them being more abrupt than others. The passage on page 11 does therefore not provide a basis for the specific combination of the features of claim 1.

5.5 The subject-matter of claim 1 extends beyond the content of the application as originally filed contrary to Article 123(2) EPC. Auxiliary request 10 is thus not allowable.