T 0252/02 07-12-2004

1. The appeal is admissible.

2. The main request

2.1. Amendments

Claim 1 differs from claim 1 as granted only by the replacement of the expression "0.0236 m3/s" by "15 m3/(m2.min)", the former being a wrong conversion in SI units of the porosity value of 50 scfm (defined both in claim 1 as granted, between parentheses, and in claim 1 of the application as filed) and the latter being the correct value. Since it consists in the correction of an obvious error, the amendment made does not give rise to objections under Article 123(2) or (3) EPC.

2.2. Sufficiency of disclosure (Article 83 EPC)

2.2.1. In order to carry out the invention, the skilled person must be in a position to establish whether a product falls within the area covered by the claim and to reliably prepare the claimed product (see e.g. T 256/87, point 10 of the reasons). In the present case, in which according to the definition of claim 1 the nonwoven fabric laminate must have a cup crush peak load value of no more than 150 grams and a cup crush energy value of no more than 2250 g/mm, this means that the skilled person must be in a position to establish whether the cup crush peak load value and the cup crush energy value which is measured for a given laminate can be effectively correlated to the respective limits of 150 grams and 2250 g/mm. This presupposes that the skilled person utilizes a method for determining said values which is either the same or one that gives essentially the same results as the method which has been used as a basis for arriving at establishing these limits in the patent in suit (see also T 387/01, point 2.2.1).

For determining the cup crush peak load value and the cup crush energy value of a given fabric laminate material there exists no standardized measurements procedure. In fact, none of these two parameters belonged to the skilled person's general knowledge at the priority date of the patent in suit. Since also the claim does not include any information about how to measure the two parameters, it is necessary to refer to the description of the patent in suit. The only passage describing the test procedure for determining the cup crush peak load value and the cup crush energy value is found on page 5, lines 32 to 38 of the patent in suit, where it is stated that "cup crush results were determined by measuring the peak load required for a 4.5. cm diameter hemispherically shaped foot to crush a 9"x9" piece of fabric shaped into an approximately 6.5. cm diameter opening by a 6.5 cm tall inverted cup while the cup shaped fabric was surrounded by an approximately 6.5 cm diameter cylinder to maintain a uniform deformation of the cup shaped fabric. The foot and the cup were aligned to avoid contact between the cup walls and the foot which could affect the peak load. The peak load was measured while the foot was descending at a rate of about 0.25 inch per second (15 inches per minute) utilizing a Model FTD-G-500 load cell (500 gram range) available from the Schaevitz Company, Tennsauken, N.J. which provides the energy value".

In accordance with this disclosure, when putting in practice the test procedure the skilled person must shape a piece of fabric into an approximately 6.5 cm diameter opening by a 6.5 cm tall inverted cup. However, no information is given in the patent in suit about how the piece of fabric is shaped. The skilled person would therefore need to find a manner of shaping the cup. Depending on the arbitrary choice of such a manner (e.g. by hand or with the help of a cup forming assembly consisting of two former cups as shown in E1, see page 53, lines 24 and 29 to 31), different geometrical forms are obtained (e.g. cylindrical, frustoconical, with rounded or flat top), with different amounts and arrangements of wrinkles and pleats in the walls of the cup (depending on how the fabric forming the walls is stretched and/or pleated). Since these factors affect the strength of the cup, different results are obtained for a given fabric depending on the arbitrary choice made by the skilled person. Furthermore, the test procedure requires the measurement of the load exerted by the cup onto the descending foot, on the basis of which the peak load value and the energy value are determined. However, the patent in suit is silent about where the cup shaped fabric and the surrounding cylinder are placed and the distance which the foot is allowed to descend. If the cup shaped fabric is placed on a flat supporting surface, then it is clear that the descending foot should be stopped short before arriving at the flat surface, otherwise the measured load is no longer the load necessary for crushing the cup, but consists of the load for compressing the fabric against the surface and/or the load due to the impact of the foot thereon. This view is supported by the disclosure of document E1 referred to in the communication annexed to the summons of oral proceedings, which does not make part of the prior art but shows (see pages 53 and 54) that, in a practical approach to the cup crush test procedure, the skilled person would stop the descending foot at a distance of 0.7 cm from the supporting surface in case of a 3.2 cm tall cup. Since the patent in suit does not disclose when the descent of the foot should be stopped, the measurements of the cup crush peak load value and of the cup crush energy value will depend on the arbitrary choice made by the skilled person to either compress the fabric onto the supporting surface or to stop the foot at a certain distance from the supporting surface. In the latter case, the further arbitrary choice of a distance at which to stop the foot also affects the results of the cup crush test.

2.2.2. The respondent submitted that the manner in which the inverted cup was shaped was irrelevant for the measurements, in particular because the measured load only became appreciable after the inverted cup had already started to collapse, i.e. when it had already lost its predefined shape.

It can be accepted that the lowest values of the load are measured in the initial phase of the descent of the foot. However, as stated above, the formation of the cylindrical wall of the cup, and in particular the stretching that the fabric undergoes and the formation of longitudinal wrinkles and pleats thereon, depends on the manner of shaping the inverted cup. Since both the amount of stretching and the wrinkles affect the cup structural resistance, it is clear that the measured load values depend on the manner of shaping the inverted cup.

Furthermore, the respondent submitted that any compression of the fabric taking place just before reaching the endpoint of the measuring distance did not affect the measured values in an appreciable manner, because a fabric of the kind according to the patent in suit was very thin and compressible.

However, even if it can be accepted that the fabrics referred to in claim 1 of the patent in suit are generally "thin", it is clear that if the foot is driven such as to contact the supporting surface, then the measured load will be affected by the compression of the fabric and/or the impact of the foot onto the supporting surface. Because of such an impact, damage of the foot might effectively occur as submitted by the appellant (see Attachment T, page 3, first paragraph referring to Trial 1).

The respondent further argued that in case the skilled person realized that the descending foot could be damaged when reaching the endpoint, he would obviously modify the set-up, e.g. by providing a base plate having a recess with the shape of the foot. However, the skilled person could also consider to stop the descent of the foot at a distance from the supporting surface, as explained above, in order to avoid this problem. Different values of the cup crush peak load and of the cup crush energy values are obtained depending on which alternative is chosen, in particular because the deformation of the cup in the presence of a recess in the supporting surface is different from that in absence thereof. In fact, the fabric can slip into the recess before the foot reaches the endpoint, in analogy with the description of trial 2 of attachment T, where to allow foot run at 65 mm an additional cylinder was placed below the 65 mm tall cylinder surrounding the inverted cup.

2.2.3. The respondent referred to the statement of Dr Roger Barker dated 23 October 2001 and the declaration of Henning Roettger dated 4 November 2004 filed in appeal proceedings. In both declarations there is essentially stated that the skilled person would have no difficulties to carry out the cup crush test. However, this is not the point at issue, and in fact the Board concurs with the declarations that the skilled person would be able to find a manner of carrying out the cup crush test. The essential point is whether such a manner, which determination as explained above involves some arbitrary choices, always leads to the same results in a reliable manner, and in this respect the declarations are silent. Furthermore, the declarations do not address the question of whether the skilled person effectively had no difficulties to carry out the cup crush test prior to the relevant date of the patent in suit, as additional information (such as e.g. the disclosure of E1) might have been available to the skilled person at the time of writing the declarations.

2.2.4. As regards the statement of the Opposition Division in the decision under appeal according to which the opponent did not credibly demonstrate that the results of the test for measuring the cup crush peak load value and the cup crush energy value were affected by the absence in the patent specification of precise instructions on how to carry out the test, the following remarks are made. In accordance with established case law, in opposition proceedings the burden of proving that the objections raised under Article 100 have been substantiated normally lays with the opponent-appellant (see e.g. T 585/92, OJ 1996, 129). However, in the presence of serious doubts, such as those raised by the appellant and by the Board in its communication accompanying the summons to oral proceedings, based both on theoretical considerations and on factual evidence (Attachment T filed by the appellant and E1 referred to by the Board), it is justified to shift the burden of proof to the patentee- respondent (see e.g. T 109/91, unpublished). In the present case, the respondent's contrary assertions were neither supported by theoretical consideration nor by direct evidence but only by allegations of what was "believed" to occur when performing the cup crush test.

Finally, the Opposition Division noted that the parameters "cup crush peak load value" and "cup crush energy values" were known in the art as such, as shown for example by document D0. It is true that D0 refers to the cup crush test (see column 13, lines 4 to 13 and table 1); its disclosure in respect of the manner of carrying out the cup crush test suffers however of the same deficiencies mentioned above in respect of the patent in suit. D0 is therefore irrelevant for the question of sufficiency of disclosure dealt with in this decision.

2.2.5. Therefore, since the results of the cup crush test depend from arbitrary choices, the skilled person is not in a position to establish whether the cup crush peak load value and the cup crush energy value which are measured for a given laminate can be effectively correlated to the respective limits of 150 grams and 2250 g/mm defined in claim 1 of the patent in suit. Accordingly, the skilled person is not in a position to know with certainty, and for any given laminate, whether he is working within the area covered by the claim, and therefore the disclosure of the patent in suit is to be regarded as insufficient within the meaning of Article 83 EPC.

3. The auxiliary requests

Claim 1 of all the auxiliary requests includes the requirement of claim 1 of the main request that the laminate has a cup crush peak load value of no more than 150 grams and a cup crush energy value of no more than 2250 g/mm. Since the main request is considered to be not allowable because of the presence of this requirement in claim 1, all the auxiliary requests are consequently not allowable under Article 83 for the same reasons given above in respect of the main request.