T 1375/16 20-03-2020

1. Main request and first to fourth auxiliary requests

By withdrawing its appeal, the respondent (proprietor) became a party as of right under Article 107, second sentence, EPC, whereas the appellant (opponent) keeps its legal position as the (now sole) appealing party. For the appellant, the principle of the prohibition of reformatio in peius (see e.g. G1/99) is applicable, such that the respondent's rights here are limited to defending the position in which it was placed by the decision of the opposition division. A request of a party as of right that, if granted, deteriorates the position of the appealing party cannot be allowed apart from in the particular circumstances described in G1/99.

In the present case, the main request and each of the first to the fourth auxiliary requests include an independent claim 1 that is broader in scope than claim 1 of the fifth auxiliary request which represents the position in which the appellant was before filing its appeal. Maintenance of the patent in any of these forms would hence put the appellant in a worse position than it was before filing its appeal. The respondent has not argued that any particular circumstances according to G1/99 apply in the present case and the Board could not reach any different conclusion either.

The main request and the first to fourth auxiliary requests are therefore not admissible.

2. Fifth auxiliary request

2.1 Admittance

The Board understands the appellant's objection that the opposition division should not have admitted the fifth auxiliary request into the proceedings as a request to hold this request inadmissible under Article 12(4) RPBA. However, since the interlocutory decision was based on a request which was admitted and was fully reasoned in regard to that admitted request, the Board sees no legal provision under which it can re-examine whether the request should have been admitted or not. Further reasoning is however not required on this matter in the present decision, since the fifth auxiliary request is anyway not allowable (see below).

2.2 Article 123(2) EPC

Claim 1 according to the fifth auxiliary request defines subject-matter that extends beyond the content of the application as filed contrary to Article 123(2) EPC.

2.2.1 In its communication (see point 5.2), the Board stated that the only basis for the subject-matter claimed in inter alia auxiliary requests 5 to 7 was to be found on description pages 13 and 15 which refer to Figure 3A. It noted that this Figure showed inter alia a step-like configuration of three attachment areas. The Board further remarked that whilst three were shown, overall there were seemingly five when including those mirrored on the lower non-shown end. The Board noted that this configuration was not reflected in claim 1.

No arguments were presented by the respondent in reply to the preliminary opinion on this matter. The Board thus concludes that an unallowable intermediate generalisation of the disclosed subject-matter has indeed occurred as further explained below.

2.2.2 The basic principle when assessing whether the claimed subject-matter extends beyond the content of the application as originally filed can be found in the case law of the Enlarged Board of Appeal as summarised in G 2/10 (see Reasons 4.3). 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. The Enlarged Board referred to this as the "gold standard". In order to be allowable under Article 123(2) EPC, any amendment must hence meet this standard.

2.2.3 According to established case law of the Boards of Appeal and as summarised in the Case Law Book of the Boards of Appeal (CLBA), 9th edition, II.E.1.9, page 482ff, it is normally not allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination.

2.2.4 As also conceded by the respondent, features (h) and (i) were explained on page 13 (lines 18 to 20) and page 15 (lines 17 to 19) while referring to Figure 3A. All drawings show inter alia three attachment areas. As already noted by the Board in its communication (see item 5.2), whilst three are shown, the embodiment depicted in Figure 3A actually comprises five, when including those mirrored on the lower non-shown end, noting here that the claim is to "a wearable absorbent article" and not just to one end thereof. Furthermore, these attachment areas are laid out in a step-like configuration, where the third attachment area has a smaller lateral width than the second attachment area. In the embodiment according to Figure 3A, the first attachment area adjoins the second, and the second adjoins the third.

Furthermore, there is no embodiment shown or described in the application as filed, that comprises separated attachment areas together with feature (i). In all embodiments in which the longitudinally outboard end of the first attachment area coincides with the first end of the absorbent core assembly (feature "i") the attachment areas adjoin each other (see Figures 1B, 1D, 2B, 2D, 3A, 3C). None of these further details has however been included in claim 1.

2.2.5 In this respect, the respondent's argument put forward in the written proceedings that the information on page 13 of the application as filed was to be understood generally and not restricted to Figure 3A is not accepted. There is no indication apparent in the application that the statements on these pages should be understood more generally. They either refer explicitly to the Figures (inter alia by mentioning the reference signs depicted in Figure 3A, e.g. on page 13, lines 9 to 26; page 15, line 9 to 24) or refer to "various embodiments" (e.g. page 13, line 17; page 15, line 19). The skilled person would hence understand that this part of the description is not to be understood generally but refers to either the embodiment shown in Figure 3A or to some other embodiment(s), which is/are however not described in detail.

Hence, neither can form the basis for a general disclosure of an absorbent article comprising features (h) and (i) but not all of those depicted in Figure 3A.

2.2.6 In this regard, the respondent's argument that no features described with reference to Figure 3A were structurally or functionally inextricably linked to the feature of the first attachment area coinciding with the waist edge is hence not persuasive.

2.2.7 Even if it were accepted that there was no structural link between features (h) and (i) and the presence of a third attachment area, which the Board does not subscribe to, the skilled person would anyway still not have unambiguously understood the disclosure on pages 13 and 15 to be of a general nature such that singular features could be taken out of the single context in which they are disclosed.

2.2.8 The fifth auxiliary request is therefore not allowable.

3. Sixth auxiliary request

Claim 1 according to the sixth auxiliary request differs from claim 1 according to the fifth auxiliary request merely in the use of an indefinite article. This amendment cannot therefore change the finding of the Board in view of subject-matter extending beyond the content of the application as filed. Nor was this argued by the respondent.

The Board hence finds that claim 1 according to the sixth auxiliary request contravenes the requirement of Article 123(2) EPC for the same reason as set out for the fifth auxiliary request above and as indicated in the communication of the Board.

The sixth auxiliary request is therefore not allowable.

4. Seventh auxiliary request

4.1 Claim 1 lacks clarity (Article 84 EPC) as already mentioned in the Board's communication (see point 6).

4.2 In its communication, the Board stated e.g. that the term "end" in claim 1 appeared to involve an extension in two dimensions and that the Board doubted how such a two-dimensional entity could then be understood clearly to "coincide" with an edge which is one-dimensional. Thus, it is unclear to a skilled person in the context of the claim in what way, the first "end" of the absorbent assembly should be understood to "coincide" with the waist "edge". Although these features were essentially taken from the description, they were notably used in the description of a particular Figure where this relationship could perhaps be identified and the terms be given a particular sense, but which is however not in the claim.

4.3 Since the appellant supplied no response to the Board's remarks in this context, the Board has no basis on which to alter its provisional opinion.

4.4 Additionally, by incorporating the further features taken from claim 9 as originally filed, claim 1 according to the seventh auxiliary request defines a third attachment area. Although this amendment was stated by the respondent to have addressed the objection under Article 123(2) EPC, it however fails to incorporate the other details referred to above (cf. Reasons 2.2.4). The subject-matter defined therein is hence still an unallowable intermediate generalisation of what is disclosed in the Figures, a matter which, again, the Board had referred to in its communication in item 5.3. The respondent however filed no substantive response to the Board's communication.

4.5 For completeness, it should be stated that the Board also cannot ascertain of its own motion how the article defined by the combination of features now in claim 1 is directly and unambiguously derivable from other parts of the application as filed.

4.6 Thus, in conclusion, the claim lacks clarity contrary to Article 84 EPC and its subject-matter contravenes Article 123(2) EPC, such that the seventh auxiliary request is also not allowable.