T 1609/19 04-04-2023

Main request

1. Article 100(b) EPC

The ground for opposition under Article 100(b) EPC is not prejudicial to maintenance of the patent as granted.

1.1 The appellant's argument that the patent failed to describe the %wt of styrene of the apertured styrene based elastic films used in the 3 samples in paragraphs [0064] to [0066] despite %wt of styrene having a significant impact on elongation and tensile strength results, does not convince the Board that this hindered the skilled person from carrying out the invention. The parameters a), b) and c) in claim 1 relate to the elastic laminate as a whole, not just the elastic film. Consequently, the appellant's burden of proof to show that the invention cannot be carried out has not been satisfied. To this preliminary opinion included in the Board's communication under Article 15(1) RPBA 2007 (see item 1.1), the appellant offered no counter arguments at oral proceedings. The Board thus confirms its opinion on this argument herewith.

1.2 The appellant's argument that the examples provided only a limited number of materials satisfying the claimed parameters is also not found to hinder the skilled person from carrying out the invention. The skilled person appreciates the type, physical characteristics and behaviour of common materials used in the field such that the examples disclosed in the patent would enable them to carry out the invention across its breadth (see also the Board's communication, item 1.2).

1.3 The appellant's contention that the skilled person was unable to predict the properties of the materials that would result from the process steps recited in claim 1 is not accepted. The two alternative process steps included at the end of claim 1 relate to well understood and relatively simple process steps i.e. incremental stretching to tear a layer of fibrous material and stretch bonding. With the skilled person understanding how the nonwoven webs of the laminate primarily dictate the strength properties of the laminate while the elastic film primarily dictates its elasticity, they would not be hindered by these simple alternative process steps from carrying out the invention according to claim 1 (see also the Board's communication, item 1.3).

1.4 As regards the appellant's argument that there was an upper limit of basis weight for parameter c) to be achievable, which the basis weight values in paragraph [0048] of the patent exceeded, this is not accepted. As the respondent also argued, the higher basis weights of the laminate given in paragraph [0048] did not necessarily use the same spunbond layers and elastic film as those used in the appellant's calculations such that no contradiction existed for appropriately selected materials. As indicated in point 1.2 above, the skilled person was aware of the typical materials and their properties used in absorbent articles such that selection of appropriate nonwoven layers and elastic film to satisfy the claimed parameters would be within their knowledge and experience.

1.5 In summary, therefore, none of the appellant's arguments is persuasive that the claimed invention could not be carried out by the skilled person. The ground for opposition under Article 100(b) EPC is thus not prejudicial to maintenance of the patent as granted.

2. Article 100(a) in combination with Article 54 EPC

2.1 Novelty over D1

2.1.1 The subject-matter of claim 1 is novel over D1.

2.1.2 D1 fails to explicitly disclose the parameters a) to c) of claim 1. The appellant's argument that D1 implicitly disclosed these is not accepted. Whilst page 8, lines 14 to 20 of D1 indeed discloses a method of manufacturing an elastic laminate identical to that in paragraph [0049] of the patent, there is no link suggested in the patent between a specific method of manufacture of the laminate and the parameters a) to c) being achieved. It is accepted that the method on page 8 of D1 may result in a laminate satisfying the parameters a) to c) of claim 1, yet there is no direct and unambiguous disclosure that this is the case.

2.1.3 Moreover, parameters a) and b) relate to tensile strength of the laminate whilst parameter c) relates to an extension under a particular force, all of which can be understood to be highly dependent on the material characteristics of the selected nonwoven layers and elastic film of the laminate, such as for example layer/film thickness. Absent guidance in D1 as to the specific materials to be used in conjunction with the method of, for example, page 8, lines 14 to 20, there is no unambiguous disclosure of the claimed parameters being achieved when carrying out this method.

2.1.4 As to the appellant's argument presented in writing that the parameters a) to c) were unusual and so could not differentiate claim 1 over D1 without further justification on the part of the proprietor, this is not accepted. As indicated in the Board's preliminary opinion, tensile strength is a known characteristic of materials and the units of N / 25mm used in the parameters are those produced by ASTM D 882, referenced on page 9 of the patent. Consequently the parameters cannot be seen as unusual in the field of absorbent articles.

2.1.5 D1 thus fails to disclose parameters a) to c) of claim 1.

2.1.6 As regards the product by process steps included in claim 1, it was accepted by both parties that these could only differentiate claim 1 from the prior art to the extent that the physical properties of the article resulting from carrying out the method steps were not known.

2.1.7 In the written submissions of the parties prior to oral proceedings, a significant difference in opinion emerged as to whether the laminate produced by the method according to D1 would display some 'crinkling' of at least one of the nonwoven layers of the laminate. The respondent's arguments developed during oral proceedings to accept that 'crinkling' may also occur in D1, but that the action of the inter-meshing gears of D1 would produce crinkles in the nonwoven layers in a distinct, regular, linear and repeating pattern which would be distinguishable from the irregular crinkling occurring in one of the nonwoven layers according to the first method step of claim 1. The respondent further argued for the first time that at least one of the nonwoven layers of D1 would be untorn whilst, having passed through the inter-meshing gears, the fibres of the nonwoven layers of D1 would be torn. The Board saw all this as a reasonable development of the respondent's appeal case since it hinged around the surface properties of the nonwoven layers of the laminates of D1 and of claim 1 which had been widely discussed in the written submissions to date.

2.1.8 In response to these arguments, the appellant contended that claim 1 was not limited to the supply of untorn nonwovens to provide the claimed laminate. Providing a partially torn nonwoven as one of the outer layers of the laminate of D1 would result in a laminate displaying the same physical features of the article as that produced by the first method step of claim 1 (the first method step reading "wherein the first layer of fibrous material and the elastic film layer form parts of a first elastic laminate that has been rendered elastic by incremental stretching and partial tearing of the first layer of fibrous material"). The Board concurs with this contention. Despite not having been argued prior to the oral proceedings, the Board sees this argument of the appellant as a reasonable development of its appeal case, not least in response to the new arguments presented by the respondent as detailed in point 2.1.7 above.

2.1.9 In response to the substance of the appellant's new argument, the respondent argued that the use of a partially torn nonwoven to provide the laminate of D1 was inappropriate since the same starting materials should be used to those of the patent. This is not accepted. Claim 1 places no restriction on whether a torn or untorn nonwoven layer is used to form the elastic laminate. Indeed, since the method steps in claim 1 could differentiate claim 1 over the prior art only in respect of physical features resulting therefrom, if the use of a partially torn nonwoven met the physical characteristics of the nonwoven layer of the elastic laminate, this was a perfectly reasonable basis on which to find these physical characteristics of claim 1 to be known. In view of the 'product by process' feature in question in claim 1 (i.e. the first method step of claim 1; see citation in point 2.1.8 above), the physical features of the elastic laminate resulting from the process step are clearly also met through the use of a suitably pre-torn nonwoven layer.

2.1.10 It thus follows that the physical features resulting from the first process step of claim 1 were known from D1.

2.1.11 D1 thus discloses all features of claim 1 save for the parameters a) to c).

2.2 Novelty over D2

2.2.1 The subject-matter of claim 1 is novel over D2.

2.2.2 Both parties relied upon their arguments with respect to D1 in order to furnish their respective case regarding novelty over D2. In its communication the Board indicated its preliminary opinion that any conclusion with respect to D1 would thus seemingly apply also to D2. Neither party presented any counter-arguments in this respect such that the Board confirms its preliminary opinion herewith, that the subject-matter of claim 1 is novel over D2 for the same reasons as those given for D1.

2.3 Admittance of D5 for a novelty attack

2.3.1 According to Article 12(4) RPBA 2007, a Board has the power to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings. Claim 1 of the present main request corresponds to claim 1 as granted such that D5 indeed could and should have been presented in a novelty attack already before the opposition division. However, it was first filed with the appellant's grounds of appeal.

2.3.2 As regards the appellant's argument that the opposition division's position that D1 failed to disclose parameters a) to c) was reasoned for the first time in its decision, this does not justify the admittance of D5 on appeal. The nature of appeal proceedings is to allow a review of the impugned decision in a judicial manner. This can manifestly not occur if parties are able to freely file new documents on appeal. In the present case the Board sees it as inconsequential as regards the admittance of D5 that the opposition division detailed why D1 failed to disclose parameters a) to c) for the first time in its decision. The proprietor had argued this position from the outset of the opposition proceedings and the opponent thus had motivation to file a more promising document (such as D5, perhaps) already at this juncture of the proceedings. Its failure to do so can then not be remedied through filing such document on appeal.

2.3.3 The appellant's argument that D5 clearly disclosed parameters a) to c) of the claimed laminate is not a persuasive reason for D5 to be admitted. With the present claim 1 corresponding to claim 1 as granted, D5 could and should have been filed already before the opposition division.

2.3.4 The Board thus exercised its discretion under Article 12(4) RPBA 2007 to hold the novelty attack based on D5 inadmissible to the appeal proceedings.

2.4 Absent a persuasive novelty attack, the Board finds the subject-matter of claim 1 to be novel.

3. Article 100(a) in combination with Article 56 EPC

3.1 Inventive step starting from D1

3.2 As found above, D1 fails to disclose the parameters a) to c) of claim 1. In order to support the recognition of an inventive step in the subject-matter of claim 1, the differentiating features of claim 1 over D1, i.e. parameters a) to c), must make a technical contribution, either independently or in combination with other features of claim 1, over the prior art. The appellant alleged that this contribution was missing in respect of parameters a) to c) as no technical effect was attributable to them.

3.3 The respondent's argument that the parameters themselves provided a technical contribution since they defined concrete values of physical characteristics of the laminate is not persuasive for an inventive step to be recognised. The patent as a whole fails to disclose any technical effect of the individual parameters claimed. In writing the respondent referred to the technical problem being to provide 'a chassis material which promotes comfort, fit and soft feel and which has a cloth-like appearance while having sufficient strength to avoid that the chassis material breaks when putting on the absorbent article' (see page 9, second full paragraph on page 9 of its reply to the grounds of appeal). No link can be seen, nor was any alleged to be present by the respondent, between the claimed parameters and the chassis material promoting comfort, fit, a soft feel or a cloth-like appearance; the technical effect of the parameters can therefore not be seen in these characteristics. As regards the sufficient strength to avoid breaking the chassis material, no data or evidence has been provided by the respondent that the specifically claimed parameters have either individually or in combination a particularly beneficial impact on the chassis (i.e. elastic laminate) strength.

3.4 The absence of a technical effect of the claimed parameters is still further underlined when considering the appellant's argument regarding values just outside the claimed parameter ranges. For example, parameter a) claims a tensile strength of the laminate of at least 15N / 25mm both in the longitudinal and the transverse direction of the article. No evidence is included in the patent, nor has it been provided during the opposition/appeal proceedings, of a particular advantage of this claimed range over tensile strength values outside this range, e.g. 10N / 25mm. This observation applies to each of the claimed parameters a) to c) with no evidence being on file of a particular advantage of the claimed parameter ranges over values just outside these ranges. Consequently, the claimed parameter ranges a) to c) cannot be credited with having a technical effect which can be considered for recognition of an inventive step in the subject-matter of claim 1.

3.5 The respondent's contention that the technical effect of the invention lay in the combination of the claimed parameters is not accepted. Absent any evidence of the beneficial impact the claimed parameters have on, for example, the tensile strength in the longitudinal direction of the article over neighbouring parameter values, no technical effect of the parameters a) to c) can be recognised.

3.6 The respondent's reference to paragraph [0014] and [0061] of the patent and the argument that the combination of claimed parameters provided a desirable balance between tensile strength in the longitudinal direction whilst not unnecessarily oversizing the material tensile strength in the transverse direction, thereby allowing a cost efficient article to be produced, is also not persuasive for a technical effect to be recognised. As indicated in points 3.4 and 3.5 above, no evidence has been provided that shows the claimed parameters achieving this technical effect and values outside of the claimed ranges failing to do so.

3.7 Absent a technical effect imparted by the parameters a) to c) for the claimed article, the objective technical problem may be seen as 'to provide a pant-type absorbent article comprising an alternative elastic laminate material'.

3.8 With the claimed parameter ranges a) to c) lacking a technical effect, the parameters cannot be seen as anything but arbitrarily chosen and consequently cannot provide the basis for an inventive step to be recognised in the subject-matter of claim 1. To this finding presented preliminarily at oral proceedings, the respondent submitted no counter arguments.

3.9 The subject-matter of claim 1 thus does not involve an inventive step when starting from D1 and combining with common general knowledge. The ground for opposition under Article 100(a) EPC in combination with Article 56 EPC thus prejudices the maintenance of the patent as granted. The main request is consequently not allowable.

Auxiliary request 12

4. Article 13(2) RPBA 2020

4.1 According to Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

4.2 The Board found that exceptional circumstances were indeed present which justified the respondent filing a new auxiliary request at oral proceedings. As indicated in 2.1.8 above, the appellant's arguments had developed at oral proceedings to finally contend that a pre-torn sheet could be used as a feedstock to manufacture the laminate of D1. This argument was seen to not only be persuasive in the Board's finding that any structural feature resulting from method step i) was equally achieved by the method of D1 when using a pre-torn sheet, but moreover it was decisive in the Board reaching its final conclusion on novelty, and consequently also on inventive step. It was thus appropriate for the respondent to be able to react to this new line of argument as it could not have anticipated this and reacted at an earlier time. This was seen by the Board as an exceptional circumstance which exempted auxiliary request 12 from not being taken into account.

4.3 The appellant's argument that it had, throughout the opposition proceedings, held method steps i) and ii) to be known is not contested by the Board. However, the Board did not accept that the respondent should thus have filed auxiliary request 12 at an earlier point in the procedure. The respondent could not reasonably have anticipated the way in which the appellant's arguments with respect to claim 1 of the main request and D1 developed in the course of the oral proceedings. Prior to this the respondent had argued the existence of structural differences between the article produced by method step i) of claim 1 and the article of D1. Only as a consequence of the new argument of the appellant, that D1 could have a pre-torn sheet as a feedstock to the production of the article, had these structural differences ceased to be technically persuasive.

4.4 The appellant's further contention that its allegedly new argument had simply been a development of its case and so the outcome should have been anticipated by the respondent is not accepted. Even if the contention regarding the use of a pre-torn sheet in D1 to anticipate method step i) of claim 1 is accepted as a development of the appellant's argument, this had been decisive in the Board's conclusion that method step i) was indeed known from D1. A party's argument developing in such a way as to be decisive in the decision on the request, yet not being seen as a change of the party's case, is seen to be an exceptional circumstance which in the present case justified auxiliary request 12 not being excluded from being taken into account.

4.5 The Board thus found that, in view of the specific circumstances of the case and the way in which the arguments had developed, exceptional circumstances justified auxiliary request 12 being taken into account (Article 13(2) RPBA 2020).

5. Remittal (Article 111(1) EPC)

5.1 According to Article 111(1) EPC 1973, when deciding on an appeal, the Board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

5.2 In the exercise of such discretion, in the present case an important aspect is that both parties requested remittal should auxiliary request 12 be admitted. In the present case, if the Board itself carried out the examination as to patentability, the parties would lose the opportunity of having an examination of the claimed subject-matter before two instances. Also, at present, the parties have not yet had the opportunity to develop their arguments with respect to the subject-matter of claim 1 of auxiliary request 12. Nonetheless, as is standard practice, objections under Articles 84 and 123(2) EPC are considered before any decision to remit is taken.

5.3 Article 84 EPC

5.3.1 The appellant's argument that the product by process features were maintained in the new process claim 1, and were repeated as process steps in the present tense, which led to a lack of clarity is not accepted.

Even though there is a degree of repetition in claim 1 insofar as the previously included process steps (interpreted in the main request as product-by process features) are maintained in addition to the newly included process steps themselves, the Board cannot recognise a lack of clarity resulting therefrom. The method steps are clearly introduced with the wording 'wherein the method comprises' such that no doubt can exist for a skilled reader as to what should be viewed as the features of the method rather than the features of the absorbent article being produced.

5.3.2 The appellant's further argument that the use of the present tense in the method steps was not active language, such that the method steps to render the laminate elastic could also have been carried out before assembly of the absorbent article is not accepted. Irrespective of the merit of the argument relating to use of the present tense, claim 1 specifically indicates which method steps are comprised in the claimed method of producing the article, these being introduced with 'wherein the method comprises'. The subsequently quoted method steps are thus clearly an integral part of the claimed method. There is also no requirement for the method steps to be carried out in a continuous process; the method steps being carried out before assembly of the absorbent article would still form part of the claimed method.

5.3.3 No argument of the appellant thus persuasively questions the clarity of claim 1. The Board thus finds claim 1 to meet the clarity requirement of Article 84 EPC.

5.4 Article 123(2) EPC

5.4.1 The appellant's argument that the application as filed included no disclosure of the invention relating to a method of production of an article is not accepted. At least page 10, lines 32 to page 11, line 6 of the application as filed discloses the method steps i) and ii) of the present claim 1. The preceding paragraphs also address methods of manufacturing an elastic laminate according to WO 03/047488. The suggestion that the application as filed included no disclosure of the invention relating to a method of production is thus incorrect. Indeed, the skilled person would see the application as filed as providing direct and unambiguous disclosure of the invention also relating to a method of production of an absorbent article.

5.4.2 As regards the appellant's analogy that disclosure of a 'spunbond' material did not disclose the spinbonding process, this is not analogous to the claimed laminate being 'rendered elastic'. The use of 'spunbond' in the term 'spunbond material' is an adjective describing the nature of the material. It is thus evident that the spinbonding process itself is not disclosed by the disclosure of a spundbond material. Conversely, a laminate having been 'rendered elastic' includes reference to the 'rendering' that has occurred, rather than simply to an 'elastic' laminate. Moreover, as indicated in 5.4.1 above, exemplary method steps for rendering the laminate elastic are disclosed from page 10, lines 32 to page 11, line 6 of the application as filed, such that disclosure of a method of production of an absorbent article is seen to be directly and unambiguously disclosed to the skilled person.

5.4.3 The Board thus finds that the objections to the subject-matter of claim 1 under Article 123(2) EPC are not persuasive such that the subject-matter of claim 1 meets the requirement of Article 123(2) EPC.

5.5 In view of no objections to auxiliary request 12 under Articles 84 or 123(2) EPC being persuasive and the requests for remittal being of sound basis, the Board avails itself of its power under Article 111(1) EPC to remit the case to the department of first instance for further prosecution.