T 2399/18 15-12-2022
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DISPOSABLE WEARING ARTICLE
Essity Hygiene and Health Aktiebolag
The Procter & Gamble Company
Grounds for opposition - extension of subject-matter (yes)
Auxiliary requests 1 to 5 - amendments - added subject-matter (yes)
I. In its interlocutory decision the opposition division found that, account being taken of the amendments made by the patent proprietor during the opposition proceedings, European patent No. 2 506 817 met the requirements of the EPC.
II. Appeals were filed by the proprietor and opponent 2. As two parties have appealed, the parties will be referred to in the following as "proprietor", "opponent 1" and "opponent 2" (or both together as "opponents").
III. The proprietor requested that the decision under appeal be set aside and the patent be maintained as granted (main request), or that the patent be maintained on the basis of one of the auxiliary requests 1, 2, 2A, 3, 3A, 4, 4A and 5 filed with the statement of grounds of appeal, where auxiliary request 5 was identical to the amended text of the patent found allowable by the opposition division. The proprietor further requested that opponent 2's appeal be rejected as inadmissible.
IV. Opponent 2 requested that the decision under appeal be set aside and the patent be revoked. In the alternative, it requested that the proprietor's appeal be dismissed.
V. Opponent 1 requested that the proprietor's appeal be dismissed.
VI. The Board issued a summons to oral proceedings and a subsequent communication in which it gave its preliminary opinion that the ground for opposition under Article l00(c) EPC was considered to be prejudicial to maintenance of the patent as granted and that claim 1 of each of auxiliary requests 1-5 respectively did not overcome the objections under Article 100(c) EPC against the main request.
VII. After the issuance of a summons, and a subsequent communication including a preliminary opinion, oral proceedings were held before the Board on 15 December 2022, during which the proprietor withdrew its request for rejection of opponent 2's appeal as inadmissible.
The requests of the parties at the end of the oral proceedings were as follows:
- the proprietor requested that the appealed decision be set aside and the patent be maintained based on the claims of the main request or, in the alternative, one of auxiliary requests 1 to 4A or, in the further
alternative, that opponent 2's appeal be dismissed,
- opponent 2 requested that the decision under appeal be set aside and the patent be revoked,
- opponent 1 requested that the proprietor's appeal be dismissed.
VIII. Claim 1 of the main request reads as follows:
"A disposable wearing article (10) having a longitudinal direction (Y), a transverse direction (X) orthogonal to said longitudinal direction and comprising a front waist region (13), a rear waist region (14), a crotch region (15) extending between said front and rear waist regions, a waist-opening (22) and a pair of leg-openings (23), annular elastic waist panels (11) defining said front and rear waist regions and a liquid-absorbent structure (12) attached to the inner surface of said elastic waist panel to define at least a part of said crotch region,
said rear waist region (14) comprising a rear waist main section (18) and a buttocks-covering section (19) lying adjacent to said crotch region;
said rear waist main section (18) being divided into an upper area (31) lying adjacent to said waist-opening and a lower area (32) lying adjacent to said crotch region;
said front waist region (13) being divided into an upper area (24) lying adjacent to said waist-opening and a lower area (25) lying adjacent to said crotch region; and
a tensile stress per unit width dimension in said buttocks-covering section (19) being lower than a tensile stress per unit width dimension in said lower area of said rear waist main section (18); wherein
a tensile stress per unit width dimension in said lower area (25) of said front waist region (13) is higher than a tensile stress per unit width dimension in said lower area (25) of said rear waist main section (18)."
IX. The wording of the auxiliary requests is annexed at the end of the decision.
X. The proprietor's arguments relevant to the decision may be summarised as follows:
Main request and auxiliary requests 1-5 - Articles 100(c) and 123(2) EPC
Paragraphs [0014] and [0017] and the Figures of the published application provided a basis for the feature "an upper area lying adjacent to said waist-opening".
XI. The opponents' arguments relevant to the decision may be summarised as follows:
Main request - Article 100(c) EPC
Paragraphs [0014] and [0017] of the published application did not provide a basis for the feature "an upper area lying adjacent to said waist-opening" and instead disclosed that the upper area lay on the side of the outer end of the rear waist panel, which was not the same as lying adjacent to the waist opening.
Auxiliary requests 1-5 - Article 123(2) EPC
No auxiliary request overcomes the objection under Article 100(c) EPC mentioned above for the main request, and auxiliary requests 1 to 4A should anyway be excluded from the proceedings under Article 12(4) RPBA 2017.
1. Main request - Article 100(c) EPC
1.1 Claim 1 as granted was amended during examination proceedings to include inter alia the following feature:
"said rear waist main section (18) being divided into an upper area (31) lying adjacent to said waist-opening and a lower area (32) lying adjacent to said crotch region"
1.2 Paragraph [0017] of the published application describes that the upper area (of the rear waist main section) is "lying on the side of the outer end of the rear waist panel", which is not the same as lying adjacent to the "waist opening", as defined in claim 1 of the main request.
Further, paragraph [0014] describes that the rear waist panel and the front waist panel are attached through seam spots arranged intermittently in the longitudinal direction forming a waist opening and a pair of leg portions.
1.3 There is thus only a disclosure for the upper area of the rear waist section lying on the side of the outer end of the rear waist panel. The expression "lying on the side of the outer end of the rear waist panel" implies a rather general location (i.e. somewhere unspecific on the side) whereas the expression "lying adjacent to the waist opening" implies a more specific relative position and distance.
Thus, as argued for example by opponent 2, the expression in paragraph [0017] does not exclude that the rear waist panel comprises further sections other than the rear waist main section and the buttocks covering section, including further sections adjacent to the waist opening. It cannot thus be inferred that an upper area "lying on the side of the outer end of the rear waist panel" (as disclosed in paragraph [0017]) is necessarily "adjacent to the waist opening" as defined in claim 1.
1.4 The proprietor argued that the amended feature was a direct definition of the arrangement of the upper and the lower area and that the Figures also provided a basis for this amendment. It also argued that it was the examining division that requested this amendment to overcome a clarity problem.
These arguments are not convincing. Whilst Figures 1, 2, 5 and 6 show a rear waist panel 18 having an upper area 31 that a skilled person might indeed consider as adjacent to the waist opening, they in fact show a far more specific arrangement, wherein, for example, the rear waist panel 17 as well as the upper and lower areas 31 and 32 respectively have a rectangular shape (as described in e.g. paragraph [0013]) and the lower area 32 is smaller than the upper area 31 (as also described in paragraph [0017]). The Board therefore sees no reason why a skilled person would directly and unambiguously derive from the Figures specifically that the rear waist main section has an upper area lying adjacent to said waist-opening and omit the other features regarding the arrangement of the lower and upper area such as their their shapes and different sizes.
As to the suggestion that the proposal for claim amendment was "requested and accepted" by the examining division, the Board notes that under Article 113(2) EPC the text must be submitted, or agreed to, by the applicant, i.e. the (now) patent proprietor is exclusively responsible for determining the text to be examined and decided upon. In addition, Article 123(2) EPC does not foresee any lex specialis for amendments proposed by the examining division. It is thus irrelevant for the considerations of the Board whether the amendment was proposed by the examining division or by the applicant.
1.5 The ground for opposition under Article 100(c) EPC therefore prejudices maintenance of the patent as granted (main request).
2. Auxiliary requests 1-5 - Article 123(2) EPC
2.1 Leaving aside the question of possible exclusion of the auxiliary requests 1 to 4A from the proceedings under Article 12(4) RPBA 2017, claim 1 of each of the auxiliary requests 1 to 5 also comprises the amended feature discussed above under item 1, found to extend the subject-matter of claim 1 of the main request beyond the content of the application as filed.
2.2 The Board stated in items 5.4 and 6.2 of its preliminary opinion that it did not consider that the amendments made to claim 1 of any of the auxiliary requests 1-5 overcame the objections regarding Article 100(c) EPC made against the main request.
2.3 None of the features added to claim 1 of the auxiliary requests 1-5 changes or further specifies the feature that the upper area of the rear waist main section lies adjacent to the waist-opening. In fact, none of the amendments concerns the upper area of the rear waist main section at all. The proprietor also did not argue that they did. The amendments as such are merely directed towards other features visible in the Figures.
2.4 Since no further arguments than the ones made in regard to the main request were made by the proprietor in reply to the Board's preliminary opinion, nor during the oral proceedings on this matter, the Board sees no reason to alter its preliminary opinion in this regard, and thus confirms the same herewith.
2.5 Therefore, none of the amendments made to auxiliary requests 1 to 5 overcomes the deficiency in the main request such that the subject-matter of claim 1 of each of auxiliary requests 1 to 5 does not fulfil the requirement of Article 123(2) EPC. The auxiliary requests 1 to 5 are therefore also not allowable.
3. Absent any text which meets the requirements of the EPC, the European patent must be revoked.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.