T 0056/99 (Change of claim category: from sanitary napkin to method of installing a sanitary napkin in an undergarment/PROCTER & GAMBLE) 11-01-2001

1. The appeals are admissible.

2. Main request - Amendments (Article 123(3) EPC)

2.1. Claim 1 of the patent as granted is a product claim for a sanitary napkin with, among other technical features, two flaps extending outwardly from each longitudinal side margin, the flaps being folded over the topsheet of the napkin and means being provided to maintain the flaps in the topsheet facing relationship.

2.2. Claim 1 of the main request now is a process claim relating to a method of installing a sanitary napkin in a garment involving, among other steps, providing the napkin with its two flaps folded over the topsheet and being releasably maintained folded by a unitary release strip bridging and covering adhesive patches on each of the flaps, peeling off the release strip, folding the flaps off the topsheet and around the edges of the crotch of the undergarment and attaching them to the outside of the latter.

According to Article 64(2) EPC this claim confers protection on the product directly resulting from the process. The direct result of the method now claimed is a sanitary napkin installed in a garment whereby the napkin no longer has its flaps folded over its topsheet but in a backsheet facing relationship, nor does it any longer have a release strip maintaining the flaps in the topsheet facing relationship.

2.3. According to Decision G 2/88 (OJ 1990, 93, Reasons 4.1), irrespective of whether there is a change in claim category, as with any amendment it has to be ascertained whether there is a change in technical features, so as to determine whether the protection conferred by the patent is extended or not. If technical features are changed by amendment such that the technical subject-matter of the claims after amendment is outside of the scope of the technical subject-matter before amendment, there is consequently an extension of protection.

Even though by the amendment a technical feature is added (the undergarment), which on the one hand limits the extent of protection, the sanitary napkin itself is modified by peeling off the release strip, folding out the flaps and attaching the flaps to the undergarment's outside. This means that the flaps are now in a backsheet facing position and there is no longer a release strip present. The sanitary napkin now covered by the claim is outside of the scope of the one covered by claim 1 as granted in that the presence of a release strip, or the topsheet facing relationship of the flaps, is no longer a limiting feature.

When compared with granted claim 1 this amendment extends the scope of protection and therefore constitutes an infringement of Article 123(3) EPC.

2.4. Claim 7 of the patent as granted is a claim for a process which comprises, among other steps, the following:

- applying adhesive and a release strip to the flaps of a sanitary napkin by:

- providing a longitudinally trisectioned roll comprising a release strip with two longitudinally oriented adhesive segments, each overlying a respective outboard trisection of the roll,

- cutting the trisectioned roll in a predetermined length,

- applying the adhesive generally contemporaneously with the release strip to the faces of the flaps exposed by the fact that they have been folded over the topsheet of the napkin.

2.5. The amended process claim 1 of the main request does not relate to the application of adhesive and a release strip to a sanitary napkin by means of a trisectioned roll cut in predetermined lengths, but to the installation of a sanitary napkin in an undergarment by peeling off a release strip and folding the flaps around the edges of the crotch of the undergarment.

It is quite evident that the technical subject-matter of this claim after amendment is outside of the scope of the technical subject-matter as contained in claim 7 as granted, by the deletion of the process steps mentioned in point 2.4 above. Now any kind of method of applying the adhesive and the release strip would fall within the extent of protection conferred by the claim.

When compared with granted claim 7 this amendment therefore equally constitutes an infringement of Article 123(3) EPC.

2.6. According to Article 64(2) EPC, if the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.

The direct result of the process claim 7 as granted is, at least as far as the arrangement of the flaps and the release strip is concerned, a sanitary napkin with two flaps extending outwardly from each longitudinal side margin, the flaps being folded over the topsheet of the napkin, an adhesive patch being on each flap and a release strip covering both adhesive patches on the flaps and maintaining the flaps in the topsheet facing relationship.

2.7. As already discussed in point 2.2 above, the direct result of the installation of the sanitary napkin of claim 1 of the main request into an undergarment is a sanitary napkin with the flaps in a backsheet facing position, a release strip no longer being present. The subject-matter covered by this claim is outside the scope of the subject-matter covered by claim 7 as granted in that the presence of a release strip, or the topsheet facing relationship of the flaps, is no longer a limiting feature.

When the claim with this amendment is compared with granted claim 7, the amendment also involves an infringement of Article 123(3) EPC.

2.8. Appellant I has argued that present claim 1 should be read as a claim to the use of a product "for installing into a garment", probably in the sense as was considered allowable in decision G 2/88 (supra).

The Board cannot follow this opinion. Decision G 2/88 is quite clear (see Reasons 4.1) in stating that not only the question of a change in category, but also the question whether technical features of the invention are changed, should be examined. As already explained above the presently claimed method of installing the sanitary napkin involves a change in the technical features of the sanitary napkin itself, bringing the presently claimed sanitary napkin outside of the scope of the sanitary napkin as covered by claims 1 and 7 as granted.

That being the case, it is no longer necessary to discuss the allowability of the change in the claim category as such.

2.9. For the above mentioned reasons the Board is of the opinion that claim 1 of the main request does not meet the requirements of Article 123(3) EPC because technical features of the product, subject of the claim as granted, are changed such that the subject-matter of the claim after amendment lies outside of the scope of the granted claim.

3. Request for referral of a question to the Enlarged Board of Appeal

3.1. A Board of Appeal can, if it considers that in the case before it a decision of the Enlarged Board of Appeal is necessary to ensure uniform application of the law or because an important point of law has arisen, refer the relevant question of law to the Enlarged Board of Appeal (Article 112 EPC).

3.2. Considering the question as put forward by Appellant I (see point VI) the Board is of the opinion that none of these conditions is fulfilled in respect of this question.

As follows from the preceding points of this decision, the considerations as to the scope of protection conferred primarily concern a comparison of technical features between the claim as granted and the claim as amended, so as to assess the scope of each subject-matter claimed. They do not concern points of law.

3.4. As regards the question whether the protection conferred by the patent is extended by suppression of technical features from the subject-matter of the claims as granted there is no contradictory case law of the Boards of Appeal.

Such an amendment results in the claim covering subject-matter which was previously not covered by the claim as granted, thus making acts constitute infringement which prior to amendment could not have been considered as an infringement of the patent (see e.g. T 378/86, OJ 1988, 386 and T 744/94). The claim would truly protect an "aliud", namely a product which has been changed such that it is different from, not merely more specific than, the product protected by the claim as granted.

3.5. The request for referral of a question to the Enlarged Board of Appeal therefore has to be refused.

4. Since claim 1 of the main request does not meet the requirements of Article 123(3) EPC the main request cannot be allowed.

5. Auxiliary request (Amendments (Article 123(2) and (3) EPC)

5.1. Appellant IV argued in the written proceedings that the process step of pre-folding the flaps over the topsheet before applying the adhesive patch was not disclosed in the original application documents.

This feature is, however, clearly disclosed on page 16, lines 27 to 33 of the application documents as filed and to be found in original claim 7.

Thus, no objection under Article 123(2) EPC arises against claim 1 of the auxiliary request.

6. Novelty of the subject-matter of claim 1 according to the auxiliary request (Article 54 EPC).

Novelty of the subject-matter of claim 1 of this request vis-a-vis the available prior art is established in that none of the documents constituting this prior art discloses applying adhesive patches together with the release strip to flaps where the release strip is cut into predetermined lengths from a trisectioned roll before application to the flaps. None of the Appellants II-IV questioned the novelty of the subject-matter of claim 1 of this request.

7. Inventive step of the subject-matter of claim 1 of the auxiliary request (Article 56 EPC)

7.1. The closest prior art for assessing inventive step is considered to be represented by D1, because it involves a sanitary napkin with two integral and continuous extensions of a laminate of the topsheet and the backsheet, the extensions being flaps ("volets" 245 and 247).

Further, D1 mentions these flaps as being present in the middle zone of the napkin ("dans la zone mediane de la garniture"), Figure 5 does not show the topsheet extending into the laminate, forming the pull-away tabs 242 and 243, and only the backsheet 203 is mentioned as extending over the upper face of the napkin so as to overlap with its longitudinal edges 231 and 232.

Furthermore, the tear lines 240 and 241 extend to the region defining the flaps 245 and 247, of which they follow an edge ("..jusqu'à la zone définissant les volets (245) et (247) dont elle suit un bord"). Thus these flaps are already present in their final form, covering only a portion of the topsheet, when the napkin is in its wrapped state with the backsheet 203 enveloping the napkin and the pull-away tabs still in place.

Finally, these flaps can be released after tearing out the pull-away tabs 242 and 243 and by pulling off the release tab 249; they are therefore releasably maintained folded over the topsheet, among others by the release tab 249 cooperating with the adhesive patches 248. It is to be noted here that the claim does not mention the adhesive patches and the release strip being the only means releasably holding the flaps.

7.2. There are no indications in D1 supporting the view of Appellant I that the laminate of the topsheet and the backsheet forming the flaps in the sanitary napkin of D1 covers the entire topsheet surface.

On the contrary, the flaps are expressly mentioned in the description as being present in the middle section. It would further be a waste of topsheet material if it were thrown away with the pull-away tabs 242 and 243, and finally, it is the backsheet material 203 which is stated as being connected together with the backsheet material coming from the other side on top of the topsheet along its edges 231 and 232 (column 5, lines 1 to 3 and 12 to 15). It is not backsheet material being connected to the topsheet material of the opposite overlapping laminate of backsheet and topsheet, which would necessarily be the case considering the arrangement as shown in Figure 5.

7.3. The Opposition Division, in the decision under appeal (see point 9.2 regarding the third auxiliary request involving a process claim for the making of a sanitary napkin), found that there was a further feature distinguishing that claim from the disclosure in D1, namely the fact that the flaps were releasably maintained before applying the release strip (emphasis added by the Opposition Division). As present claim 1 is identical to claim 1 then under examination by the Opposition Division in respect of this feature, this aspect of the decision under appeal needs further consideration.

It is to be observed that the actual wording of neither claim 1 of the request under examination by the Opposition Division nor of claim 1 according to the present auxiliary request leads to the interpretation indicated by the Opposition Division. The feature actually reads: "releasably maintaining the flaps (28) folded over the topsheet (22), .... , by applying adhesive patches (40) and a unitary release strip (46') to the flaps ....".

Even if the interpretation of the Opposition Division were accepted, the pull-away tabs (242 and 243) do releasably (they can later be torn out) maintain the flaps folded over the topsheet before the release strip is applied.

7.4. Finally, the Opposition Division also argued (point 10.4. of the decision under appeal) that the pull-away tabs 242 and 243 were the means primarily holding the flaps in the folded position, not the adhesive patches cooperating with the release strip. Therefore the disclosure of D1 did not involve the release strip releasably maintaining the flaps in the folded position.

The Board wishes to remark here that claim 1 of the present auxiliary request does not mention the adhesive patches and the release strip being the primary means holding the flaps in the folded position, let alone the only means (emphasis added by the Board).

Thus the above mentioned feature as recognised by the Opposition Division cannot help in distinguishing claim 1 over D1 either.

7.5. Since the sanitary napkin known from D1 already provides a flap disposition which promotes cleanliness of the topsheet during handling as well as a convenient means for manipulating the flaps into a position in which they will be when the sanitary napkin is worn in an undergarment, the remaining object underlying the subject-matter claimed is to make the production method of the sanitary napkins more efficient (see the patent in suit, column 2, lines 10 to 21).

Starting from the sanitary napkin known from D1 this is achieved by the fact that the application of the adhesive patches as well as the release strip is done generally contemporaneously. The release strip comes from a trisectioned roll having adhesive segments covering the two outboard trisections of the roll. From this roll predetermined lengths are cut before application to the flaps of the sanitary napkin.

In the production of the sanitary napkin of D1 a hot-melt adhesive is applied to the backsheet folded over the topsheet at the location where the backsheet and the topsheet together form the laminate of the flaps 245 and 247. The release strip is laid over it subsequently.

7.6. It is known in this art that first applying adhesive to the backsheet of a sanitary napkin as the enveloping material of the absorbent core of a sanitary napkin and then covering it with a release strip is disadvantageous. This is discussed in D11, page 1, lines 22 to 40. The skilled person starting from the sanitary napkin disclosed in D1 and wishing to improve the production method thereof, will thus be on the lookout for other ways of applying the adhesive and the release strip.

As acknowledged in the patent in suit and confirmed by Appellant I in the oral proceedings, it was also known, prior to the priority date of the patent in suit, to apply adhesive first to the release strip, cut the strip with the adhesive to a predetermined length and apply this length of strip together with the adhesive to the backsheet of a sanitary napkin (see column 11, lines 22 to 28. In this respect Appellant I argued that the previously known process of applying adhesive which it had acknowledged did not involve a longitudinally trisectioned roll.

7.7. However, D5 (see Figures 1 and 2 and column 2, lines 1 and 2) clearly discloses the result of such a process, known before the priority date of the patent in suit, wherein a predetermined length of release strip with adhesive thereon has been applied to the backsheet of a sanitary napkin, where the release strip has to have originated from a longitudinally trisectioned roll with two adhesive segments each overlying an outboard trisection of the roll.

Thus the skilled person had, at the priority date of the patent in suit, already at his disposal machines which applied a predetermined length of release strip from a trisectioned roll, with adhesive already applied on the outboard trisections, to the backsheet of sanitary napkins.

7.8. Since the flaps 245 and 247 of the sanitary napkin of D1 are not loose flaps, but are maintained in their topsheet facing relationship by the backsheet material 203 enveloping the entire absorbent core including the flaps, the problems put forward by Appellant I as existing with sanitary napkins having loose flaps to which adhesive and a release strip could difficultly be applied, do not arise. The face of the sanitary napkin having the flaps folded over the topsheet of the absorbent core is not different from the backsheet face of the sanitary napkin which is provided with cut lengths of release strip with adhesive patches thereon according to D5.

There is thus for the skilled person no technical obstacle against using the known process for applying predetermined lengths of release strip cut from a trisectioned roll with adhesive segments covering the two outboard trisections to the backsheet of a sanitary napkin.

7.9. The skilled person having to manufacture the sanitary napkin as disclosed in D1 in a more efficient way would recognize the advantages of this process implicitly known from D5 and apply it to the manufacture of the sanitary napkins as known from D1, thus arriving at the process claimed in claim 1 of the auxiliary request in an obvious manner.

7.10. Appellant I further questioned why it was so obvious to apply adhesive to napkins by means of predetermined lengths of release strip cut from a trisectioned roll with adhesive already applied thereto as known from D5 (dating from 1970), instead of applying adhesive first to the napkin and only subsequently covering it with a release strip, if according to D2 the latter was still done in 1979.

7.11. According to D1, the application of adhesive to the backsheet of a napkin, with the subsequent application of a release strip, was still performed not only in 1979, but also as late as 1988. This, however, does not alter the fact that the disadvantages of this process still existed, having been acknowledged in 1972, the year of filing of D11. These disadvantages therefore still required a remedy.

Also in 1988 it had been acknowledged in the field of sanitary napkins that both methods were equivalent, which can be derived from D7, in which both methods are discussed for applying adhesive and a release strip to the backsheet as well as (at least) one of the flaps, on the backsheet face thereof, without expressing a preference in respect of one or the other (see column 5, lines 28 to 32 of D7).

7.12. Thus, the skilled person had a choice among equivalent processes of applying adhesive to a napkin's backsheet, one of which he was already performing in the manufacture of the sanitary napkin he was starting from (the one disclosed in D1).

The question therefore arises whether he would consider applying the other alternative. It is quite clear that the application of adhesive together with the release strip has the additional advantage of not having to perform two steps, applying adhesive and subsequently the release strip, but performing one step, without having to synchronize the application of the release strip with the presence of the adhesive already applied to the sanitary napkin. This improves efficiency considerably.

This advantage is considered so evident to the skilled person that the question has to be answered in the affirmative.

8. Thus in view of the above assessment the Board comes to the conclusion that the subject-matter of claim 1 of the auxiliary request lacks inventive step.

None of the requests of Appellant I being allowable, the patent has to be revoked.