T 0324/98 (Waistcap/Waistband/PROCTER&GAMBLE) 06-06-2001

1. The appeal is admissible.

2. Amendments (Article 123 EPC)

2.1. The amendments in claim 1 can be derived from the original application documents:

page 7, line 10; page 20, line 17 ("formed of a single piece of elastomeric material"),

page 20, lines 6 and 7 ("serving both as the waistcap and as the waistband"),

page 7, first paragraph and fig. 3 ("wherein the single piece of elastomeric material provides all the said elastic contractability").

In claims 5 to 8 the term "unitary" was deleted, which was superfluous in view of the expression "is formed of a single piece of elastomeric material serving both as the waistcap and as the waistband":

2.2. In the oral proceedings the Respondent no longer maintained its objections under Article 123(2) EPC. In view of the above the Board is satisfied that the amendments are in accordance with Article 123(2) EPC.

2.3. The amendments amount to a limitation of the subject-matter of granted claim 1, thus the requirements of Article 123(3) EPC are also fulfilled.

3. Novelty (Article 54 EPC)- Main request

3.1. The closest prior art according to both the parties and the Opposition Division is D1. The Board sees no reason to disagree with this.

There is no difference of opinion between the parties that D1 discloses an integral disposable absorbent Article according to the preamble of claim 1, with a waistcap/waistband formed of a single piece of material (see column 17, lines 42 to 47 and figure 3) serving both as the waistcap 262 and as the waistband 258. The Board shares that view. D1 discloses as one of the possible choices for the material of the waistcap/waistband: "elastic foam", which can be considered identical with "elastomeric material" (column 14, line 12).

3.2. The subject-matter of claim 1 differs from the disclosure in D1 principally in that the single piece of elastomeric material serving as the waistcap and as the waistband provides all the elastic contractability as defined in the claim, namely that of the outward portion as associated with the absorbent Article adjacent its end edge and of the distal edge of the inward portion as associated with the absorbent Article adjacent the ends of the inward portion.

As opposed to the subject-matter of claim 1, the outward portion of the waistcap discussed in D1 needs the addition of an elastic member 60 to be operatively associated in an elastically contractible condition with the waistflap to form a waist gasketing cuff (see column 11, line 50 to column 13, line 24). The distal edge of the inward portion of the waist barrier cuff further needs the elastic member 77 to provide the operative association in an elastically contractable condition with the absorbent Article (see column 6, lines 10 to 24 and column 14, lines 1 to 8).

The above is not affected even if one agreed with the Opposition Division's reasoning in the decision under appeal that the spacing elastic members 76 in the first barrier cuffs (i.e. the leg barrier cuff at right angles to the waistband/waistcap) would be providing the elastically contractable condition of the association with the absorbent Article via the connection points 78 of the distal edges of the inward portions with the first barrier cuffs. In that case again additional elastic members (the spacing elastic members 76) are needed.

3.3. The Respondent further argued that the reference to the use of an elastomeric foam for the waistcap/waistband in D1 itself made it evident that the operative association of the entire waistcap/waistband with the absorbent Article would be in an elastically contractable condition.

However, there is no disclosure whatsoever in D1 indicating that the waistcap/waistband could by itself be associated with the absorbent Article in an elastically contractable condition. There is no mention of the waistband/waistcap as such being stretched while being associated with the absorbent article, the waist edge of the absorbent Article being shirred during association with the waistband/waistcap, nor of the waistband/waistcap on its own being treated in such a way as to be elastically contractable after having been associated with the absorbent article. All references to the elastically contractable condition are related to the use of additional elastic members 60 and 77.

3.4. The Respondent finally argued that according to the description of the patent in suit (see column 16, lines 25 to 36) the elastomeric material could be formed from a laminate of at least one coverstock layer and an elastomeric film. As the patent in suit, including claim 1, did not limit this laminate solely to one in which the elastomeric film was continuous or contiguous with the coverstock layer, it could involve a laminate in which the elastomeric film consisted of discrete strips arranged in the direction of the required elastic contractability. In that sense the subject-matter of claim 1 was not new in respect of D1 as the elastic members 60 and 77 could be formed of a plurality of elastic strips ("one or more elastic members 60": column 3, line 30 and column 11, line 58 of D1; "one or more spacing elastic members 77": column 14, line 3 of D1) formed of elastomeric film (see column 13, lines 39 and 40 and column 20, lines 30 and 31 of D1). The coverstock layer would then be the material of the second barrier cuff 262 extending continuously from the distal edge 266 to the terminating edge 32 of the waistcap/waistband as shown in Figure 3 of D1.

The Board disagrees with the Respondent on this point; claim 1 is worded such that the single piece of elastomeric material serving both as the waistcap and as the waistband (thus continuously extending from the distal edge of the inward portion to the terminating edge) provides all the elastic contractability. This does not allow for more than one elastomeric material being present in the waistcap/waistband, thus excluding the at least two elastic members (60 and 77) necessarily involved in the arrangement as derived by the Respondent from D1.

3.5. The Board therefore reaches the conclusion that the subject-matter of claim 1 is novel over D1 (Article 54 EPC).

3.6. None of the remaining available documents discloses a waistcap/waistband formed of a single piece of material, and thus cannot put into question the novelty of the subject-matter of claim 1.

3.7. The subject-matter of dependent claims 2-8 being for preferred embodiments of the absorbent Article of claim 1, they too are novel.

4. Inventive step (Article 56 EPC)

In the decision under appeal the Opposition Division has not discussed the question of inventive step.

Both the Respondent as well as the Appellant having requested remittal of the case back to the first instance should the Board come to the conclusion that the subject-matter of claim 1 is novel and no reasons being apparent why the Board should finally deal with the case, the Board considers that remittal to the first instance for further prosecution, pursuant to Article 111(1) EPC, is appropriate.

5. Further remarks

In view of the fact that the case is remitted back to the first instance for further prosecution, the Board has deemed it unnecessary to discuss the adaptation of the description to the amended wording of claim 1.

However, if in the further proceedings the patent is maintained, it is to be observed that the fact that the waistcap/waistband is formed of a single piece of elastomeric material serving both as the waistcap and the waistband excludes the possibility of more than one elastomeric material being present in the waistcap/waistband. This has an effect on at least the passages of column 15, line 54 and column 23, line 11.