T 1213/22 13-06-2024

1. Main request - Article 123(2) EPC

1.1 The following feature was added to claim 1 during examination:

"where PFA is applied in a discontinuous application such that any portion of the application is greater than 1 mm and no more than 10 mm distant from another portion of the application where PFA is not applied"

1.2 The appellant had argued during the opposition proceedings that page 13, lines 5-8 and page 15, lines 1-3, of the application as originally filed provided the basis for this amendment. However, the opposition division concluded in items 2.1.2.3 and 2.1.2.5 of its reasons that this was not the case.

1.3 The reasons of the opposition division contain the following paragraph (see item 2.1.2.3, page 9) :

"In that respect, it must further be stressed that, from a technical point of view, there can be no other minimal distance than 0 mm between any portion of the application where PFA is applied and another portion of the application where PFA is not applied, since the portions of the PFA stripes at the borderline between the PFA area and the PFA free area are necessarily and inevitably less than 1 mm distant from the PFA free areas. It is the Division's view that it does not make sense to introduce a lower distance of "greater than 1 mm" to the disclosure at page 13, lines 5-8 of the application documents. Otherwise, what would be present in the transition area between the PFA areas and the PFA free areas ?".

1.4 In the appeal proceedings however, the appellant did not contest the finding that there was no basis for this amendment in the application as originally filed (see item 21 of its grounds of appeal) and argued only that, whilst it agreed with the opposition division's understanding (see item 1.3 above) that the feature was technically meaningless, such a feature did not contain any additional technical limitation and thus could not contain subject-matter which extended beyond the content of the application as filed under Article 123(2) EPC.

1.4.1 The Board does not accept this argument, at least because it finds that the feature added to claim 1 is not technically meaningless in the context of the claim, even though the application as filed did not disclose such embodiments and even if such embodiments may not even have been initially intended.

As also argued by respondent 2 (see pages 6 and 7 of its reply to the grounds of appeal), a skilled person reading the claim would conclude that the feature for example defines a further region/portion extending by more than 1 mm between any point with PFA and the closest point to it without PFA, which region/portion is not a region/portion of the backsheet garment facing surface. A void in the backsheet surface between the portion of pattern application of PFA and the portion of the application where PFA is not applied greater than 1 mm would correspond to this feature of claim 1.

1.5 The appellant argued that claim 1 defined the pattern as a striped pattern alternating PFA stripes and PFA free stripes, such that no other areas could be between them.

The Board does not accept this argument. The term "alternating" only defines that two stripes of the same type cannot appear in the pattern without one of the other type between them but does not exclude that the pattern can be formed with further types of areas. A backsheet having voids between the portion of pattern application of PFA and the portion of the application where PFA is not applied would still be considered as a a striped pattern alternating free PFA stripes and PFA free stripes as defined in claim 1.

1.6 The appellant argued that such a void would also correspond to a portion of the application where PFA is not applied as defined in claim 1 and thus would not be at a distance of more than 1 mm from the portion where PFA is applied. In any event, the skilled person would not contemplate making a hole through the backsheet as the backsheet would lose its technical function.

These arguments are, however, not persuasive. As stated in paragraph [0032] of the patent, the backsheet can be a composite material such as a laminate of a film, and can thus have several layers. Since claim 1 defines that the fastening adhesive is applied on said backsheet garment facing surface, it makes technical sense for the skilled person reading the claim to consider that the portions of application (where PFA is applied and where PFA is not applied) on said backsheet garment facing surface are both on the outer layer of the laminate.

On the other hand, any void greater than 1 mm on the outer layer of said laminate would expose a surface other than that to which the adhesive is applied and would thus not be considered by the skilled person as a "portion of the application". In addition, since only the outer layer of the laminate is missing, the backsheet would still be able to perform its technical function.

The skilled person would therefore come to a logical interpretation of the claim which includes all the features of the claim, i.e. the feature is not technically meaningless. Yet, as uncontested by the appellant, there is no disclosure of such an embodiment in the application as filed.

1.7 The question as to whether a technically meaningless feature in a claim would still be required to fulfil the requirement of Article 123(2) EPC was addressed in the Board's provisional opinion, but is ultimately not decisive for this case and will thus be left unanswered.

1.8 Claim 1 of the main request does not fulfil the requirement of Article 123(2) EPC. The main request is therefore not allowable.

2. Admittance of the parties' cases concerning whether a feature is technically meaningless

2.1 The appellant and respondents requested that each other's cases concerning whether a feature is technically meaningless should not be admitted into the proceedings.

2.2 Since claim 1 of the main request does not fulfil the requirement of Article 123(2) EPC even when taking into consideration all the arguments of the appellant (see item 1. above), the question regarding the admittance of the appellant's case can be left undecided.

2.3 Regarding the respondents' cases, the appellant argued that the technical interpretations given by the respondents to show that the feature was technically sensible (such as the interpretation discussed above) constituted a change of case and should not be admitted into the proceedings. According to the appellant, these interpretations should have been submitted during the opposition proceedings, since the burden was on the respondents to substantiate their Article 123(2) EPC objections from the outset of the opposition proceedings. The respondents should allegedly have submitted these interpretations at the latest when the matter was discussed during oral proceedings before the opposition division.

2.3.1 These arguments are, however, not persuasive. Irrespective of when the appellant may have made its own submissions in this regard before the opposition division (which is not evident from the minutes or the decision), the latter merely gave its reasons concerning Article 123(2) EPC in the contested decision.

The explanation that the feature (which was not disclosed) would also be meaningless, was stated by the opposition division in its decision in the last paragraph of item 2.1.2.3 to conclude its reasoning on this aspect. Whatever the appellant's submission may have been during the oral proceedings, this evidently did not lead the opposition division to conclude that the subject-matter of claim 1 fulfilled the requirement of Article 123(2) EPC. Thus, there was no need for the respondents to argue any further to convince the opposition division at the time on the matter of Article 123(2) EPC, i.e. the respondents' arguments were sufficient for the opposition division to revoke the patent.

2.3.2 In its grounds of appeal, the appellant then specifically directed its arguments to that last paragraph of item 2.1.2.3, in which the opposition division reasoned why the added feature was meaningless. The Board therefore finds the respondents' replies to the appellant's line of argument that a technically meaningless feature does not add subject-matter, by supplying arguments as to why the features are not technically meaningless, to be a normal development of their cases and finds that these arguments should not reasonably have been made earlier.

2.4 There was therefore no reason for the Board not to admit the respondents' arguments into the proceedings under Article 12(6) RPBA. They were thus taken into consideration (see above).

3. Auxiliary requests 1 to 8

3.1 The Board stated in its preliminary opinion that all the auxiliary requests contained the added feature discussed above and thus would not be allowable for the same reasons as the main request.

3.2 The appellant did not provide any further comments on the auxiliary requests such that the Board sees no reason to deviate from this opinion, which is hereby confirmed.

3.3 Auxiliary requests 1 to 8 are therefore not allowable since claim 1 of each of these requests respectively does not fulfil the requirement of Article 123(2) EPC.

4. In the absence of an allowable request, on the basis of which the proceedings could be further prosecuted, there is also no reason to remit the case to the opposition division. The Board thus rejected the appellant's request for remittal.