T 0345/24 24-03-2025

1. Admissibility of the proprietor's appeal

1.1 According to Rule 101(1) EPC, the Board of Appeal shall reject an appeal as inadmissible if it does not comply with, inter alia, Rule 99 paragraph 2, which itself stipulates that the statement of grounds of appeal shall indicate the reasons for setting aside the decision impugned ... and the facts and evidence on which the appeal is based.

1.2 In point 5.1 of its grounds of appeal, referring to auxiliary request 1 before the opposition division (which corresponds to auxiliary request 1 also on appeal), the proprietor states:

'This request was considered novel and inventive by the decision, and the patent was maintained on this basis. We agree with the reasoning and conclusion of the decision that this request satisfies all EPC requirements.'

1.3 Firstly, this statement simply expresses the proprietor's agreement with the finding of the opposition division that auxiliary request 1 met the requirements of the EPC. The opponent's argument of an implicit acceptance that claim 1 of the main request lacked novelty over D1 is simply not derivable from the proprietor's statement.

1.4 The opposition division simply did not decide on novelty of the subject-matter of claim 1 of the main request relative to D1, rather (see e.g. page 11 of the decision under appeal) solely finding it to lack novelty over D5. Thus, in its grounds of appeal, the proprietor had absolutely no need to address novelty of the subject-matter of claim 1 relative to D1. An absence of such arguments by the proprietor concerning D1 therefore does not result in a lack of substantiation of its appeal (in the sense of dealing with all the reasons for the main request not being allowable, as argued by the opponent). The entirety of the reasons given by the opposition division for the non-allowability of the main request in its decision were thus fully addressed, the facts and evidence relied on explaining why the decision should be overturned. The appeal hence contains the required substantiation.

1.5 The requirements of Rule 99(2) EPC were thus met by the proprietor's statement of grounds of appeal. The proprietor's appeal is therefore admissible.

Main request

When referring to the 'application as filed' herebelow, reference is being made to the A-publication of the patent application, which was accepted as accurately reflecting the content of the application as filed.

2. Article 100(c) EPC

The ground for opposition under Article 100(c) EPC is prejudicial to maintenance of the patent as granted.

2.1 'Good' contact

2.1.1 Relative to claim 1 as filed, feature 1.3 has been introduced into the claim, in which the ADL is defined to be 'in contact with' the body-facing side of the absorbent core. The basis for this amendment was stated by the opposition division to be paragraph [0198] of the application as filed where, however, the ADL is disclosed to be 'in good contact with' the body-facing side of the absorbent core. The Board sees the omission of the qualifier 'good' to lack a direct and unambiguous basis in the application as filed.

2.1.2 Firstly in this regard, the Board finds the word 'good' in the expression 'good contact' to be technically relevant in the present context. For a skilled person, a good contact, at least in the technical field of absorbent articles, would imply face-to-face contact over a large area between two elements of the article. Conversely, if two elements are merely 'in contact' with one another, at one extreme the expression encompasses merely single point contact over a small area. This latter condition of minimal contact between two elements would not be considered by the skilled person as embodying 'good' contact between the elements. Despite the term 'good' being somewhat imprecise, in the context in which it is used in the description it would be understood nonetheless to indicate a certain kind, amount and/or quality of contact. This type of contact is, however, left completely open through the omission of the term from claim 1. The proprietor's argument, with reference to G1/93, that the term 'good' could be omitted from claim 1 due to it lacking a technical meaning is thus not accepted.

2.1.3 The proprietor's further contention that 'good' contact did not clearly equate to any type or quality of contact is, at least in the present context, not accepted. It is noted that paragraph [0198] of the application as filed is directed to the ADL and its positioning between the topsheet and the absorbent core in the absorbent article. The purpose of an ADL in absorbent articles is to remove liquid deposited on a topsheet and ensure its distribution within itself, but also to ensure swift transfer of the liquid to the absorbent retention part of the core of the article. In this context, a 'good' contact between the ADL and the absorbent core must be contact which efficiently promotes the transfer of liquid from the ADL to the absorbent core such as, for example, by providing a large face-to-face contact area. Such a contact for promoting transfer of liquid is also suggested in paragraph [0198] by way of the ADL and the absorbent core being disclosed to be 'in close proximity or even in good contact', the 'good contact' thus being evidently superior to mere 'close proximity'. Consequently, at least a contact promoting swift transfer of liquids was implied through the expression 'good contact', which the word 'contact' alone fails to achieve.

2.1.4 The proprietor's argument that the ADL being positioned between the topsheet and the absorbent core as a closed, layered structure unambiguously implied that significant face-to-face contact (i.e. 'good' contact) was achieved is not accepted, at least not in this generality. It is accepted that an ADL sandwiched between a topsheet and an absorbent core of an absorbent article will be in at least some contact with immediately neighbouring layers of the article. However, as was argued by the opponent during the oral proceedings, claim 1 does not exclude further layers being positioned between the ADL and the absorbent core which would allow, for example, contact of merely the peripheral edge of the ADL with the absorbent core. The Board concludes that a skilled person would not equate such peripheral contact over a limited area to be 'good' contact in the sense of the application as filed (see point 2.1.2 above). Consequently, the closed, layered structure of the claimed absorbent article does not unambiguously result in the contact between the ADL and the absorbent core being 'good', such that a reading of claim 1 to implicitly define 'good' contact is not accepted.

2.1.5 The Board also fails to see point or intermittent contact between the ADL and the absorbent core as reflecting a 'good' contact. Even if the function of liquid distribution to the absorbent core were at least minimally achieved by such contact, this does not allow it to be classed as 'good' contact which, (as mentioned above) at least in the context of layers in an absorbent article, would require large area face-to-face contact, also resulting from a technical perspective, in a more substantial liquid distribution to the absorbent core.

2.1.6 The proprietor's argument that the passage in paragraph [0198] as filed disclosed a range of contact from 'close proximity' to 'good contact', such that all degrees of contact therebetween were also disclosed, is not accepted. Reading the disclosure of a range of different degrees of contact into paragraph [0198], rather than two discrete situations, is not unambiguous. The passage reading 'preferably in close proximity or even in good contact with' would linguistically be understood as disclosing preferably close proximity (i.e. not in contact) and even more preferably good contact between the ADL and the absorbent core. Consequently a direct and unambiguous basis for merely 'contact' between the ADL and the absorbent core is not derivable from paragraph [0198].

2.1.7 The proprietor's reference to paragraphs [0116] and [0117] of the application as filed also fails to provide basis for simply 'contact' to exist between the ADL and the absorbent core. These paragraphs define the terms 'directly over' and 'indirectly over' when used in the application and, whilst using the term 'contact' in the respective definitions, (albeit in terms of being direct or indirect contact), provide no indication of how 'contact' or even 'good contact' are to be understood in the application as filed. A direct and unambiguous basis for merely a 'contact' to be present between the ADL and the absorbent core can thus not be inferred from these paragraphs.

2.1.8 In summary, therefore, a direct and unambiguous basis cannot be derived from the application as filed for the inclusion of merely 'contact' rather than 'good contact' in feature 1.3 of claim 1.

2.2 ADL consisting of a spunbond or carded nonwoven

2.2.1 Relative to claim 1 as filed which recited that the ADL comprises a spunbond and/or carded nonwoven layer, feature 1.10 of claim 1 recites the ADL consisting of a spunbond or carded thermobonded nonwoven. The wording of claim 1 as filed itself fails to provide a basis for the adopted wording since the ADL comprising a spunbond and/or carded nonwoven layer allows further elements to be present and does not provide a disclosure of the ADL consisting of (i.e. merely) a spunbond or carded thermobonded nonwoven i.e. without further elements. It is not relevant to the issue to be decided that the amendment limits the scope of protection relative to claim 1 as filed, rather the requirement is that the amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed (see the 'gold' standard mentioned in G2/10).

2.2.2 The proprietor's argument that the expression 'comprised' encompassed just a spunbond or carded thermobonded nonwoven being present in the ADL such that the skilled person would see it reasonably just including these two materials is not accepted. It is not denied that the expression 'comprises' encompasses the possibility that just one of the two materials is present. However that is not the standard for a direct and unambiguous disclosure of solely one of these two materials being included in the ADL.

2.2.3 In further support of its argument, the proprietor referred to samples B and C in the examples disclosed in paragraphs [0285], [0288], [0291] and [0294] as filed, these allegedly providing a pointer to solely the spunbond or carded thermobonded nonwoven layers being present in the ADL. In each of examples 3 to 6, the samples B are all identical and the samples C are all identical. All the individual disclosures of sample B thus provide a single disclosure of a spunbond nonwoven layer forming the ADL, similarly sample C being a single disclosure of a carded thermobonded nonwoven layer forming the ADL. Such isolated, single disclosures of the ADL being either a spunbond nonwoven or a carded thermobonded nonwoven are not seen to provide an unambiguous pointer to the claimed 'consisting of' wording, when the sole unambiguous disclosure in the application as filed in regard to the material(s) of the ADL is in claim 1 in which the 'comprising' wording is used.

2.2.4 The proprietor further referred to the aims of the invention in paragraph [0016] of the application as filed. With examples 4 and 6 providing exemplary acquisition times and low rewet values for samples B and C in accordance with the aims of the invention, the proprietor argued that this also pointed to the type of nonwoven in samples B and C being the original intention of the 'comprising' wording in the application as filed. In addition to such single samples (i.e. one single sample for each possibility in claim 1, sample B being a spunbond layer and sample C being a carded thermobonded nonwoven layer) not being able to provide an unambiguous pointer, rather than several samples all consisting of one or the other material, samples B and C were each made of 100% polypropylene fibres such that, if anything, the skilled person would tend to see at least this specific fibre material as having a significant impact on the acquisition times and rewet performance, rather than solely the specific type of nonwoven structure in samples B and C.

2.2.5 With reference to T 759/10, the proprietor argued that the amendment from 'comprising' to 'consisting of' did not extend beyond the content of the application as filed. In that case, claim 1 of auxiliary request 3 indeed differed from claim 1 as originally filed in that the wording 'the texturizing agent comprises' had been amended to 'the texturizing agent consists of', the amendment being found not to be subject-matter extending beyond the content of the application as filed. Even though it is clear that the Board is not bound by a decision from another technical Board of Appeal, it is noted that in that case, the amendment was based on an explicit disclosure in the application as filed of a texturizing agent consisting of fatty acid esters of sterols, fatty acid esters of stanols or mixtures of these' (see Reasons, point 7.1). The cited case thus differs significantly from the present case in which no explicit disclosure of the 'consists of' wording is to be found in the application as filed.

2.2.6 The proprietor also referred to T 1634/15 in which specific examples in the description led the Board to the conclusion that an amendment to the wording of claim 1 from 'comprising' to 'consisting of' was allowable. In that case, paragraph [0028] of the application as filed provided a general disclosure of a solder paste with different solder powder and flux proportion ranges, each combination of which however disclosed 100 wt% of the solder paste composition. This was further reflected by each of four examples similarly disclosing solder powder and flux combinations which together added up to 100 wt% of the solder paste composition. In contrast, the present case provides but a single example, i.e. only one for each of the two types of nonwoven in the ADL as claimed, and with further restrictions in the samples, which, in the absence of any further indication of the ADL consisting of solely one or other of these nonwoven types, cannot be seen to provide the requisite direct and unambiguous disclosure of the claimed subject-matter.

2.2.7 The proprietor further referred to T 1173/17, yet in that case the change from 'comprising' to 'consisting of' was not found to have an unambiguous basis in the application as filed. Despite the description including several samples allegedly showing that micron-size particles were not envisaged in the washcoat composition, the Board in that case disagreed that this provided a direct and unambiguous disclosure of the claimed washcoat consisting of sub-micron particles, at least since further components of the washcoat slurry, which could comprise micron-size particles, were undefined (see Reasons, point 5). This decision thus provides no support for the proprietor's contention that the examples in the description of the present case provide a general pointer to the allegedly intended disclosure of an originally filed claim.

2.2.8 In view of all points 2.2.1 to 2.2.7 above, therefore, and even reflecting the skilled person's standpoint as argued by the proprietor based on T 99/13, the amendment from 'comprising' to 'consisting of' is not directly and unambiguously derivable for the skilled person from the whole of the application as filed.

2.3 With the amendments in claim 1 relating to 'good' contact and 'consisting of' both defining subject-matter extending beyond the content of the application as filed, the Board concludes that the ground for opposition under Article 100(c) EPC prejudices maintenance of the patent as granted.

3. Auxiliary request 1 filed during the oral proceedings before the Board

Article 13(2) RPBA

3.1 Relative to claim 1 of the main request, claim 1 of auxiliary request 1 narrowed the claimed basis weight range for the ADL and added further features taken from claims 8 and 12 as filed.

3.2 This request was submitted at oral proceedings before the Board in reaction to the main request being found not allowable. Having been filed after notification of a communication under Article 15(1) RPBA, according to Article 13(2) RPBA the request shall not be taken into account unless exceptional circumstances are identified.

3.3 The proprietor's argument that the opponent had detailed the multiple different types of contact between the ADL and the absorbent core for the first time at oral proceedings, and that this was an exceptional circumstance justifying the new request being taken into account, is not accepted. In point 11 of the opponent's reply to the proprietor's grounds of appeal, it was argued that deletion of the word 'good' from the expression 'good contact' resulted in any contact between the ADL and the absorbent core being included in the scope of protection, including overlap of only small areas, for which there was no disclosure in the application as filed. This is seen as a key argument of the opponent's objection on this point, an example also being given of how this unallowably extended the claimed subject-matter. Consequently, the opponent providing further examples of contact between the ADL and the absorbent core at oral proceedings before the Board, not least with the communication under Article 15(1) RPBA having indicated in point 2.1.3 that this may be a matter of discussion, is seen to be nothing more than a normal development of the opponent's appeal case rather than an exceptional circumstance justifying a new request being taken into account.

3.4 The proprietor's further argument that the reliance on a single sentence of the opponent's submissions in order to elaborate on additional examples of 'contact' at oral proceedings had to be seen as going beyond a mere development of existing arguments is also not accepted. As the opponent argued, the specific objection relating to 'good' contact had been raised at the outset of the opposition proceedings and had been maintained ever since. Its grounds of appeal (see item 7) had also indicated that any kind, amount and/or quality of contact was included in claim 1 as granted, whereas solely 'good contact' was originally disclosed. The essentials of the opponent's objections were thus clearly presented as part of its complete appeal case (see Article 12(3) RPBA). The addition of extra examples of how 'contact' could be understood at oral proceedings, as opposed to 'good contact', were thus no more than a normal development of its existing case.

3.5 The Board thus exercised its discretion such that, due to the absence of exceptional circumstances, auxiliary request 1 was not taken into account (Article 13(2) RPBA).

4. Further auxiliary requests - auxiliary requests 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A as filed with the proprietor's grounds of appeal

Article 13(1) RPBA

4.1 At oral proceedings before the Board, a higher ranking auxiliary request 1 was filed than all auxiliary requests previously on file. Consequently, all the auxiliary requests previously on file assumed a new ranking below auxiliary request 1 filed during the oral proceedings before the Board, such that e.g. auxiliary request 1 as filed with the grounds of appeal in fact becomes the second auxiliary request. The fact that the requests maintained their original numbering is irrelevant to the fact that these are now re-ranked. Such a re-ranking is (due to the procedural effects of such a change, such as consideration of alternate subject-matter) an amendment to the proprietor's appeal case and its admittance is at the discretion of the Board. Under such circumstances the Board's discretion is to be exercised in view of inter alia procedural economy (see Article 13(1) RPBA, last sentence).

4.2 Auxiliary request 1 filed at oral proceedings before the Board includes features taken from claims 8 and 12 as filed. The features of at least claim 12 as filed are, however, present in none of the lower ranking auxiliary requests 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A such that each of these lack convergence with the auxiliary request 1 filed at oral proceedings. A lack of convergence of requests falling under Article 13(1) RPBA is usually seen to be contrary to procedural economy, not least since the opposing party and the Board would need to consider claims directed to subject-matter broader than that previously decided upon.

4.3 At oral proceedings the Board's preliminary view was given that auxiliary requests 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A were not convergent with the higher ranking auxiliary request 1 filed at oral proceedings before the Board. Consequently the re-ranking of these requests was an amendment to the proprietor's appeal case which was, in the present case, contrary to procedural economy and would not be admitted. To this preliminary opinion the proprietor explicitly refrained from providing any counter-arguments.

4.4 Although not ultimately decisive due to the aspect of adverse procedural economy, it may be added that the Board had also indicated (see the minutes) that none of the auxiliary requests anyway seemed to overcome the objection of added subject-matter with regard to the main request.

4.5 As a result of the foregoing, the Board confirmed its preliminary opinion and exercised its discretion under Article 13(1) RPBA not to admit auxiliary requests, which were still numbered 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A, into the proceedings.

5. Requests for remittal and stay of proceedings

For completeness it is noted that the patent proprietor had initially requested that, if any of the auxiliary requests lower ranked than auxiliary request 1 were to be considered, the case should be remitted to the opposition division. In the absence of any such auxiliary request (albeit all now re-ranked) being admitted, there was no request to be considered and thus no request on the basis of which a remittal could be ordered.

Likewise, the patent proprietor's initial request for a stay of proceedings pending the outcome of G 1/23 became moot, since the alleged public prior use did not require discussion.