T 0291/18 () of 30.11.2021

European Case Law Identifier: ECLI:EP:BA:2021:T029118.20211130
Date of decision: 30 November 2021
Case number: T 0291/18
Application number: 04785653.9
IPC class: A61F 13/496
Language of proceedings: EN
Distribution: D
Download and more information:
Decision text in EN (PDF, 1 MB)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: A DISPOSABLE ABSORBENT ARTICLE AND METHOD OF FORMING THE ARTICLE
Applicant name: KIMBERLY-CLARK WORLDWIDE, INC.
Opponent name: Essity Hygiene and Health Aktiebolag
THE PROCTER & GAMBLE COMPANY
Board: 3.2.06
Headnote: -
Relevant legal provisions:
European Patent Convention Art 123(2)
Keywords: Amendments - added subject-matter (yes)
Catchwords:

-

Cited decisions:
-
Citing decisions:
-

Summary of Facts and Submissions

I. An appeal was filed by the appellant (patent proprietor) against the decision of the opposition division revoking European Patent No. 1 628 612. It requested that the decision be set aside and the patent be maintained as granted or, failing that, according to one of auxiliary requests 1 to 11.

II. Respondent (opponent I) and respondent (opponent II) each requested that the appeal be dismissed.

III. With letter of 30 October 2018 the appellant filed a main request and auxiliary requests 1 to 6 to replace all requests previously on file. With a further letter of 13 August 2019 the appellant then filed replacement auxiliary requests 5 and 6 and a new auxiliary request 7. It also requested oral proceedings should the Board be minded other than to uphold the contested patent in the form of auxiliary request 4.

IV. The Board issued a summons to oral proceedings and a subsequent communication containing its provisional opinion, in which it indicated inter alia that the subject-matter of claims 1 and 11 of the main request appeared not to meet the requirement of Article 123(2) EPC. It additionally indicated that claim 1 of each of auxiliary requests 1 to 7 appeared not to overcome this objection.

V. With letter of 4 November 2021 the appellant withdrew its request for oral proceedings.

VI. The Board subsequently cancelled the scheduled oral proceedings.

VII. The final requests of the parties were thus as follows:

The appellant requested that the impugned decision be set aside and the patent be maintained according to the main request of 30 October 2018, or that it be maintained according to one of auxiliary requests 1 to 4 of 30 October 2018 or according to one of auxiliary requests 5 to 7 of 13 August 2019.

The respondents each requested that the appeal be dismissed.

VIII. Claim 1 of the main request, with feature annotation added as referred to by the parties, reads as follows:

"A disposable absorbent article (10) comprising:

a) a front panel (12) having a first zone (14) and a second zone (16), said first zone being extensible and retractable and said second zone being non-extensible and non-retractable, said front panel also having a first side edge (26) and a second side edge (28);

b) a back panel (36) having a first zone (38) and a second zone (40), said first zone being extensible and retractable and said second zone being non-extensible and non-retractable, said back panel also having a first side edge (50) and a second side edge (52);

c) an absorbent assembly (60) including a liquid pervious bodyside liner (62), a liquid-impervious outer cover (64), and an absorbent (66) positioned therebetween, said absorbent assembly having a first end (70) and a second end (72), said absorbent assembly being secured to said front and back panels, and said absorbent assembly capable of being folded to enable said first and second side edges of said front panel to align with said first and second side edges of said back panel; and

d) a pair of seams (88,90) joining said front and back panels together at said first and second side edges to form a disposable absorbent article having a waist opening (92) and a pair of leg openings (94, 96);

e) said second zone of said front panel is spaced inward from said first and second side edges of said front panel;

f) said second zone of said back panel is spaced inward from said first and second side edges of said back panel; and

g) said first end of said absorbent assembly is secured to said second zone of said front panel and said second end of said absorbent assembly is secured to said second zone of said back panel, and

h) characterized by (sic) said back panel being spaced apart, discontinuous and distinct from the front panel, characterized in that

i) each of said second zones is formed from the same material as said first zone but does not possess extensible and retractable properties, wherein

j) said material from which each panel is formed is a single integral elastomeric material exhibiting said extensible and retractable properties of said first zone

k) that has been fused, deadened or chopped so as to form the second zone."

Claim 11 of the main request reads as follows:

"A method of forming a disposable absorbent article (10) comprising the steps of:

forming a front panel (12) having a first zone (14) and a second zone (16), said first zone being extensible and retractable and said second zone being non-extensible and non-retractable;

forming a back panel (36) having a first zone (38) and a second zone (16), said first zone being extensible and retractable and said second zone being non-extensible and non-retractable; each panel being formed from a single integral elastomeric material that exhibits extensible and retractable characteristics, the material then being fused, deadened or chopped to form the second zone;

forming an absorbent assembly (60) having a liquid pervious bodyside liner (62), a liquid-impervious outer cover (64), and an absorbent (66) positioned therebetween;

securing said absorbent assembly to said front and back panels;

folding said absorbent assembly so that said front panel is positioned over said back panel; and

joining said front and back panels together by a pair of seams (88, 90) to form a disposable absorbent article (10) having a waist opening (92) and a pair of leg openings (94,96); and characterised in that

the securing step comprises securing said absorbent assembly to said second zones of said front and back panels; and

said second zone of said front panel is spaced inward from said first and second side edges of said front panel;

said second zone of said back panel is spaced inward from said first and second side edges of said back panel;

the back panel being spaced apart, discontinuous and distinct from the front panel."

The independent claims of auxiliary requests 1 to 7 are appended to the present decision.

IX. The appellant's arguments relevant to the present decision may be summarised as follows:

The subject-matter of claim 1 of the main request met the requirement of Article 123(2) EPC. None of the features indicated to be unallowably omitted from claim 1 in points 5.7 to 5.9 of respondent OII's letter of 16 August 2018 was inextricably linked to those included in the independent claim, such that there was no intermediate generalisation. Regarding respondent OII's objection that the relative sizes of the second zones of the front and back panel had been omitted from claim 1, the words 'usually' and 'typically' in lines 24 to 25 of page 7 indicated this relationship to be optional. As for the omission of the crotch region from claim 1, the claimed 'spaced apart front and back panels' inherently included a crotch region in the article of claim 1. For the same reasons, the subject-matter of claim 11 also met the requirement of Article 123(2) EPC.

The subject-matter of claim 1 of each of auxiliary requests 1 to 7 met the requirement of Article 123(2) EPC essentially for the same reasons as given for claim 1 of the main request.

X. The combined arguments of the respondents relevant to the present decision may be summarised as follows:

The subject-matter of claim 1 of the main request failed to meet the requirement of Article 123(2) EPC. Features h), j) and k) lacked basis in the claims as filed. If the basis for these features were to be page 7, lines 8 to 9, page 6, lines 25 to 28 and page 10, lines 9 to 12, these passages related to a specific embodiment having further features, and those further features had been unallowably omitted from the amended claim. Each of the further features were described in mandatory terms such that their omission represented an unallowable intermediate generalisation of the embodiment.

As regards the auxiliary requests, at least one of the above objections under Article 123(2) EPC applied to each of the requests, such that these were also not allowable.

Reasons for the Decision

1. Main request

1.1 Article 123(2) EPC

The subject-matter of claim 1 fails to meet the requirement of Article 123(2) EPC.

1.1.1 Claim 1 has been amended relative to claim 1 as filed inter alia through the addition of features h), i), j) and k). Features h), j) and k) have no basis in the claims as originally filed, the alleged basis for features j) and k) being indicated by the opposition division (see point 1 of its reasons) as coming from page 6, lines 25 to 28 and page 10, lines 9 to 12 of the description.

1.1.2 Features h), j) and k) included in claim 1 have been taken from a specific embodiment of the invention disclosed in Figs. 2 to 4. This embodiment includes further features disclosed in structural combination with those taken up into claim 1, yet which have been omitted. Such omitted features are at least:

Objection (1) - the second zone 16, 40 having a smaller surface area than the first zone 14, 38 (see page 3, lines 21 to 22 and page 7, lines 16 to 17);

Objection (2) - the second zone of the back panel having a larger surface area than the second zone of the front panel (see page 7, lines 22 to 23);

Objection (3) - the absorbent assembly being secured only to the second zones (see page 12, lines 1 to 4);

Objection (4) - the absorbent article including a crotch region (see page 12, lines 22 to 23); and

Objection (5) - at least one elastic member being located along each side edge of the absorbent assembly (see page 13, lines 22 to 25).

1.1.3 Consequently, the omission of at least these features from claim 1 results in its subject-matter being an unallowable intermediate generalisation of the original disclosure.

1.1.4 The appellant's argument in respect of objection (2), that the words 'usually' and 'typically' in lines 24 to 25 of page 7 indicate the relative surface area relationship to be optional is not accepted. The use of the words 'usually' and 'typically' does not indicate the disclosed surface area relationship of the second zones to be optional, rather these relate to a surface area comparison between the front panel and the back panel. The surface area relationship between the second zones of the front and back panels is thus disclosed in structural combination with at least feature k) of claim 1, the omission of which from claim 1 extends its subject-matter beyond the application as filed.

1.1.5 As to the appellant's argument that none of the features indicated to be unallowably omitted from claim 1 by opponent OII was inextricably linked to those included in the independent claim, this is not accepted. As just one example, claim 1 defines both the front and back panels having first and second zones (see features a) and b) in claim 1). Feature j), which has been taken into claim 1, further defines each panel in relation to the particular material of the first zone. It thus follows that the further detail of the nature of the first and second zones, disclosed on page 3, lines 21 to 22 and page 7, lines 16 to 17 of the description as filed, is inextricably linked, at least from a structural point of view, with the material of the first zone included in feature j) of claim 1. These passages of the description relate to the relative areas of the first and second zones i.e. objection (1) as detailed in point 1.1.2 above.

1.1.6 Regarding objection (4), the appellant's contention that the claimed 'spaced apart front and back panels' inherently includes a crotch region in claim 1 is not accepted, at least not in such generality. The crotch region is disclosed on page 12, lines 20 to 23 as separating the front and back panels, but also being 'designed to cover the perineum area of the wearer'. The latter of these limits the longitudinal extent of the front and back panels to not extend into the perineal area which is not defined with the 'spaced apart front and back panels' wording included in claim 1. Thus this omission from claim 1 also extends its subject-matter beyond the application as filed.

1.1.7 Therefore, at least for the reasons given above, the subject-matter of claim 1 fails to meet the requirement of Article 123(2) EPC.

1.1.8 In its preliminary opinion, the Board indicated that the subject-matter of independent method claim 11 also appeared not to meet the requirement of Article 123(2) EPC for the same reasons as those given with respect to the subject-matter claim 1. With this opinion not having been contested by the appellant, the Board herewith confirms the same.

1.2 The main request is therefore not allowable.

2. Auxiliary requests 1 to 7

Article 123(2) EPC

2.1 In its preliminary opinion (see item 5.1 thereof) the Board indicated that none of the auxiliary requests 1 to 7 seemed to address all of the omissions objected to in point 1.1.2 above (none of the requests overcomes for example the objection (4) of point 1.1.2, for the reasons given in point 1.1.6 above). The appellant did not contest this. The Board therefore confirms its preliminary opinion in this regard, that the subject-matter of claim 1 of each of the auxiliary requests 1 to 7 fails to meet the requirement of Article 123(2) EPC.

2.2 Auxiliary requests 1 to 7 are thus not allowable.

3. With no further requests of the appellant on file, and its request for oral proceedings having been withdrawn, the appeal must be dismissed.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

Quick Navigation