T 0540/02 19-10-2004

1. Admissibility of the appeal

The Board considers that on the issue of admissibility of appeals the case law in general requires the statement of grounds of appeal to specify the legal or factual reasons on which the case for setting aside the decision is based.

By presenting on appeal a new, further amended main request the appellant has given the factual reason for setting aside the decision under appeal, as claim 1 on which the revocation of the patent was based is no longer maintained. By arguing on the clarity of this amended claim in paragraphs 1-3 of page 2 of the statement of grounds of appeal the appellant has further presented the required reasoning against the decision under appeal.

T 220/83 does not appear to be applicable in the present case, as it concerns the absence of reasoning on inventive step in the statement of grounds of appeal against a decision revoking the patent on the basis of that ground of opposition.

T 213/85 neither appears to apply, as it concerns the absence of reasoning on the sufficiency of substantiation of the opposition in the statement of grounds of appeal against a decision rejecting the opposition as inadmissible for lack of substantiation.

Since also the other requirements regarding admissibility are fulfilled the appeal is admissible.

2. Order of the requests submitted by the Appellant for decision by the Board

2.1. The main request and the first, second and third auxiliary request consist of a set of claims having an independent claim for a product and an independent claim for a method for manufacturing a product, the product claim being more and more limited following the order of these requests. The fourth auxiliary request involves a set of claims which relates only to the method for producing the product, whereas the fifth auxiliary request presents a set of claims involving again an independent product claim as well as an independent method claim. The order of these two requests as filed with letter of 16. September 2004 was reversed by the Appellant during the oral proceedings.

2.2. According to Article 113(1) EPC the Board is bound to the requests of the applicant or the proprietor. In case of main and auxiliary requests this means that it is also bound to the order of these requests as requested by the party (see e.g. T 169/96 and T 488/94).

2.3. In any case, considering that according to Article 64(2) EPC the protection conferred by a patent relating to a process extends to the products directly obtained by such process, the product resulting from the method of manufacturing as presently claimed in claim 1 of the fourth auxiliary request is less limited in its technical features than the product claimed in claim 1 of the fifth auxiliary request. In the latter the elastic tape section is secured to the fastening tape not only at the ends of the elastic tape section, but also in intervals between these ends. Thus there is also a logical reason for this reversal in the order of the requests: the last auxiliary request relating to a product which is more limited in its technical features than the penultimate auxiliary request.

2.4. Thus the Board sees no reason to object to the reversal of the order of the fourth and fifth auxiliary request.

3. Amendments (Article 123(2) EPC)

3.1. Main request:

Claim 1 as granted has been amended (a.o.) in that the material of the fastening tape is "non-stretchable and non-elastic".

The Board notes that the application as originally filed mentions the fastening tape on a number of occasions in connection with a stretching property. Page 3, lines 15-19 states that "the material of the fastening tape is more or less non-stretchable and non- elastic under the conditions the fastening tape is used in the present context". Page 4, lines 27 and 28 mentions the fastening tape 10 as comprising an "elastically stretchable center portion 30 between the end portions 18, 20". Page 2, line 35 - page 3, line 2 and page 5, lines 1-13 refer to the central portion of the fastening tape and the tape section as separate entities which are moved together as a laminate through the gap of the ring rolls, by which process step both layers are stretched.

Even when taking account of the Appellant's argument that the fastening tape and the elastic tape section are two separate entities forming a laminate, the Board cannot conclude from these passages that the material of this fastening tape is directly and unambiguously derivable as being "non-stretchable". Neither its conditions of use nor those of the article are mentioned in claim 1, resulting in this claim lacking a relationship with this passage on page 3 of the application as filed. Further, the mentioned "more or less non-stretchable"-property cannot be equated to the presently claimed explicit "non-stretchable"-property of the fastening tape material. Finally, the end portions of the initially stretchable fastening tape, which have not been passed through the zigzag gap between the ring rolls, will in any case still be of "stretchable material", even when attached to a sanitary article, the attachment merely impeding, but not taking away the actual stretchability.

As a consequence claim 1 of the main request does not comply with the requirements of Article 123(2) EPC and therefore the main request is not allowable.

3.2. First auxiliary request:

The added feature of the fastening tape determining the maximum extension of the stretchable elastic tape section so as to avoid rupture thereof has been disclosed solely on page 2, lines 10-13 and page 5, lines 15-20 of the application as originally filed. In these passages, however, the fastening tape is non- elastic. This is mentioned explicitly on page 2, line 11 and it can be derived from the context of the indicated passage on page 5, which relates to the central portion of the fastening tape and the elastic tape section as being moved through the zigzag gap of the ring rolls, whereby the fastening tape is stretched but does not return to its original shape, due to its non-elastic property.

According to the consistent case law of the Boards of Appeal it is not permissible to extract isolated features from a set of features which have originally been disclosed in combination (see e.g. T 1067/97 and T 1110/97, Special Edition No. 3 of the OJ EPO 2001, 39 and 40). The present wording of claim 1 not involving the limitation of the fastening tape being non-elastic thus amounts to an extension of subject-matter, contrary to Article 123(2) EPC.

The first auxiliary request is therefore refused.

3.3. Second, third and fifth auxiliary request:

Claim 1 as granted has been amended according to the second and the third auxiliary request in that it is now clarified that the elastic tape section is secured to the fastening tape at least at both ends of the elastic stretchable tape section and not at both ends of the fastening tape.

According to the fifth auxiliary request claim 1 as granted has been amended in that it is now clarified that the elastic tape section is secured to the fastening tape at least at both ends of the elastic stretchable tape section as well as in intervals between the ends of the tape of elastic material.

The question whether these amendments can qualify as a response to a ground of opposition (Rule 57a EPC) and comply with the requirements of Article 123 EPC needs not to be dealt with in view of the conclusions of the Board in respect of the novelty of the subject-matter of claim 1 of these requests (see below), when accepting the position taken by the Appellant that the requirements of Article 123(2) EPC are fulfilled.

3.4. Fourth auxiliary request:

The question whether the amendments to claim 8 as granted (forming the sole independent claim 1 in this request) comply with the requirements of Article 123 EPC needs no discussion in view of the conclusions of the Board in respect of clarity of this claim (see point 4 below).

3.5. Fifth auxiliary request:

The question whether the amendments to claim 1 as granted comply with the requirements of Article 123 EPC needs no discussion in view of the conclusions of the Board in respect of novelty of this claim (see point 5 below), when following the position taken by the Appellant.

4. Clarity (Article 84 EPC)

Fourth auxiliary request:

4.1. Claim 8 as granted concerns a "Method for manufacturing a fastening tape according to one of claims 1 to 7, characterized in that the elastic tape section (32) is secured at least at the ends (32a, 32b) thereof to the fastening tape to bridge a central portion thereof and that the laminate comprising the fastening tape and the elastic tape section being inserted into a zigzag-shaped gap of two dies".

Claim 1 as granted related to a "Fastening tape for a sanitary article, particularly disposable diaper, for fastening of the article on the body of a person, the fastening tape being attached to the article at one of its end portions (18) and being provided with a fastening means (22) on one surface of the other end portion (20), a stretchable elastic portion (30) being provided between the end portions, a tape section (32) of a stretchable elastic material being secured to the fastening tape (10) at least at both ends (32a, 32b) thereof, to bridge a section of the fastening tape (10) which is longer than the stretchable elastic tape section (32), characterized in that said section of the fastening tape (10) being longer than the stretchable elastic tape section (32) is provided with zigzag- shaped folding extending laterally with respect to the length of the fastening tape".

4.2. Claim 1 of the present fourth auxiliary request (see point V above) is unclear (Article 84 EPC) because of the amendment incorporating into it the features of product claim 1 as granted (see above).

The phrases starting with "being" ("being attached to the article ....", "being provided with a fastening means ....." and "being provided between the end portions......") now define specific method steps of the manufacturing method. In claim 8 as granted, with the mention of "the fastening tape according to one of claims 1-7", these expressions concerned only the technical characteristics of the fastening tape itself and its use, not the manner in which it had been produced.

The present wording, however, does not disclose any of the features of these method steps, nor of the means employed therein.

Thus present claim 1 lacks the features necessary for its comprehension (Article 84 EPC) and therefore the fourth auxiliary request is not allowable.

5. Novelty (Article 54 EPC) - Second and third auxiliary request

5.1. D3 discloses a sanitary article in combination with a fastening tape (11b2 or 11b3) attached thereto at one of its end portions and having a fastening means (adhesive portion 11a) on one surface of the other end portion. A stretchable elastic tape section (tape like elastic body 11b1) is secured at both its ends (see figure 7) to the fastening tape, together forming an elastic portion between the end portions of the fastening tape. The section of the fastening tape which is bridged by the elastic tape section is longer than the stretchable elastic tape section and is provided with zigzag- shaped folding extending laterally with respect to the length of the fastening tape (see figure 7 and column 2, line 58: "gathered portion").

5.2. The Appellant argued that the end portion of the fastening tape fixed to the sanitary article as disclosed in D3 also served as the fixation point of one end of the elastic tape section, thus the elastic portion would not be provided "between" the end portions of the fastening tape and that furthermore the mention of a "gathered portion" in D3 was not necessarily identical with the claimed zigzag-shaped folding of the section of the fastening tape in the elastic portion.

However, claim 1 in its present form does not define the end portions of the fastening tape in terms of a certain longitudinal extension. It states in this respect: "the fastening tape being attached to the article at one of its end portions" (emphasis added by the Board). Thus, the elastic portion, apart from the fact that it is mentioned in isolation in claim 1, i.e. without being explicitly linked to the elastic tape section or the longer fastening tape section bridged by the elastic tape section, can easily be provided between the end portions of the fastening tape. Finally, the fixation of the elastic tape section to the fastening tape tends to make it non-elastic at those locations, thus the elastic portion, if determined by the extent of elastic material between its fixations to the fastening tape, would in any case be situated between the end portions.

5.3. A zigzag-shaped folding of the fastening tape not necessarily means that the fastening tape has sharp folds at the turns in its course, as shown in figures 1, 3 and 4 of the patent in suit; it merely means that the tape makes a series of short sharp turns, which can, however, have a radius of curvature. That kind of arrangement is covered by the term "gathered portion" as employed in D3. This is all the more so as the patent in suit, in its paragraph 0013, refers to another possibility of manufacturing the combination of the fastening tape with the elastic tape section, namely by securing the elastic tape section in a pre-stretched condition to the fastening tape and connecting them at intervals. There is no information in the patent in suit or elsewhere as to why the result of that measure will not be a "gathered portion".

Thus all features of the combination of the fastening tape and the sanitary article of claim 1 are disclosed in D3. The subject-matter of claim 1 according to the second auxiliary request thus lacks novelty (Article 54 EPC).

5.4. As the third auxiliary request only differs from the second auxiliary request in that the sanitary article is more explicitly referred to as a diaper and D3 relates specifically to a diaper, the above reasoning equally applies to claim 1 of the third auxiliary request.

The second and third auxiliary requests are therefore not allowable.

6. Novelty (Article 54 EPC) - Fifth auxiliary request

6.1. The subject-matter of claim 1 according to this request is further limited in respect of claim 1 of the second auxiliary request by the feature of the tape section of stretchable elastic material being secured to the fastening tape, not only at both ends of the elastic tape section, but also in intervals between these ends.

It cannot be seen how the tape-like elastic body 11b1 can be fixed to the nonwoven fastening tape 11b2 or 11b3 so as to form a "gathered portion", as disclosed in D3, other than by fixing the elastic tape-like body to it also in intervals between its ends. If this is not done, the elastic tape will hang loose on the fastening tape and can hardly perform its function. The Board considers this is what the skilled person would be bound to do, when applying the teaching of D3.

6.2. The Appellant has not produced any evidence in support of its argument that gathers ("micro-gathers") could also be arrived at by securing the elastic tape section 11b1 over its whole surface to the fastening tape 11b2 or 11b3.

In view of the above, claim 1 according to the fifth auxiliary request does not involve novelty (Article 54 EPC), the request is therefore not allowable.

6.3. None of the requests being allowable the appeal is to be dismissed.