T 0423/00 04-04-2003

Reasons for the Decision

1. The appeal is admissible.

2. Main request - amendments - clarity (Article 84 EPC)

2.1. Claim 1 as granted has been amended on appeal so as to include the feature that the "individual bonded areas are spaced further apart than the apertures, measured in the shortest distance between the bonded areas".

The description of the patent in suit, column 16, lines 29 to 34; column 21, lines 12 to 41 and Figures 13B to 13D refer to embodiments in which the bonded areas are in the form of continuous lines which intersect. With such bonded areas the indication of a spacing as claimed has no meaning, as such a spacing does not exist, nor is there a "shortest distance" between such lines.

2.2. The Appellant argued that Figures 13B to 13D were to be considered graphic representations of intermittent lines, i.e. consisting of individual bonded areas disposed along a line. In that case there would be support for the claimed feature in the description and the claim would be clear.

The Appellant overlooks the fact that the relevant passage in column 20, line 58 to column 21, line 3 of the patent in suit only mentions intermittent lines as one of the possible embodiments, which also may involve geometrical shapes, graphical patterns, curved or straight lines, etc. There is, however, no indication available that the lines shown in the embodiments of Figure 13 are to be considered such intermittent lines. According to the description and the figures the invention, when relating to the bonded areas being arranged in the form of a line, is therefore not limited to an intermittent line, providing individual bonded areas as claimed. The subject-matter of claim 1 of the main request is therefore unclear when read in conjunction with the description (Article 84 EPC).

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

3.1. The question also arises whether this amendment in claim 1 as granted ("... individual bonded areas are spaced further apart than the apertures, measured in the shortest distance between the bonded areas...") fulfils the requirements of Article 123(2) EPC.

The original application documents, page 26, second paragraph, provide the only mention of the bonded areas being spaced further apart than the apertures: "The bonds 44 are typically spaced further apart than the apertures 29 in the topsheet 28." The spacing being measured in the shortest distance between the bonded areas finds its origin in the first paragraph of page 26: "This spacing is measured in the direction of the shortest distance between the bonds". However, in the view of the Board these two features do not stand on their own, but relate directly to the mention in the sentence preceding the latter phrase: "The bonds are preferably spaced between about 5 mm and about 16 mm apart, more preferably between about 5 mm and about 8 mm apart."

3.2. According to the case law of the Boards of Appeal, see e.g. T 1067/97 (not published in OJ EPO) and T 284/94 (OJ EPO 1999, 464), it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which has originally been disclosed in combination for a certain embodiment, except where there was no clearly recognisable functional or structural relationship among said features.

In the present case the essence of the invention lies in the average peel strength of the topsheet and the underlying layer being above a certain level. In such a case it is evident that there is a functional and structural relationship between the feature of the bonds being spaced further apart than the apertures and of the specific size of the spacing. Such features essential to the invention cannot be separated.

3.3. Claim 1 of the main request therefore fulfils neither the requirements of Article 123(2) nor of Article 84 EPC.

For the reasons mentioned above the main request is therefore not allowable.

4. Auxiliary request - Amendments- Article 123(2) and (3) and Article 84 EPC

4.1. According to the auxiliary request the following features (in bold) have been added to claim 1 as granted, which are in accordance with the requirements of Article 123(2) EPC (in brackets the basis in the original application documents):

... liquid pervious apertured thermoplastic film topsheet, having apertures (page 10, second paragraph and page 45, fourth paragraph);

... said topsheet is directly fused to said underlying layer at individual bonded areas (page 16, last paragraph and page 24, last paragraph); ... said underlying layer (34) is a fibrous acquisition layer (34) (page 13, second paragraph - page 22, first paragraph);

said topsheet (28) and said underlying layer (34) have an average peel strength when measured on a sample of 2,5 cm x 15 cm (1 inch x 6 inches) of at least 50. g/2,54 cm (g/inch), and preferably of at least 65. g/2,54 cm (g/inch) (page 24, fourth paragraph);

said individual bonded areas (44) have a circular plan view shape and are spaced apart between 5 mm and 16 mm, this spacing being measured in the direction of the shortest distance between individual bonded areas, and said individual bonded areas are spaced further apart than the apertures (29) (page 25, first paragraph - page 26, second paragraph).

4.2. In claim 1 has been deleted the word "preferably" in the phrase "the underlying layer having a thickness and preferably being liquid pervious", which makes a previously optional feature now an obligatory feature. This does not infringe Article 123(2) EPC either.

The amendments all amount to a further limitation of the subject-matter of claim 1, thus also the conditions of Article 123(3) EPC are fulfilled.

The amendment to the underlying layer being a fibrous acquisition layer as well as the reintroduction of the word "and" in the phrase "... penetrate the topsheet and at least part of the way into the topsheet.." both overcome objections of the opposition division which led to the decision under appeal. The inclusion of the specific size of the spacing between bonded areas overcomes the objection made by the Board against the main request (see point 3.1 above).

4.3. In the decision under appeal the opposition division had objected to the inclusion of feature of the 5 to 16 mm spacing between the individual bonds, their circular plan view shape and the fact that individual bonded areas were spaced further apart than the apertures as infringing Article 123(2) EPC, as these features had only been disclosed in combination with other features. This combination was namely the embodiment of Figures 1, 2 and 8, i.e. "an absorbent article having a plurality of bonds arranged in a pattern, having smaller and larger bonds, wherein the bonds have a certain diameter etc. (see column 16, line 35 to column 29)". In view of the same objection having been raised twice in the decision under appeal, the second time referring to column 16, line 35 to column 17, line 29 of the patent in suit, the Board assumes that the latter reference is the correct reference, the alternative being a reference to subject-matter spanning more than 13 columns.

The Respondents argued along the same lines, adding that the pattern in question should be further limited to a regular pattern in which the bonds were arranged in diagonal lines.

4.4. The Board cannot support the view of the opposition division nor that of the Respondents in this respect. From the original application documents as well as the patent it is clear that the arrangement of the bonded areas is not limited to the embodiment of Figures 1, 2 and 8 referred to. This is derivable from pages 25, 26 and 31 of the original application documents, which refer to each of these allegedly missing features: regular pattern, the bonds in diagonal lines, the bonds being large as well as small, the bonds having certain diameters, etc. as preferred embodiments of the invention, without being linked functionally or structurally with the features now included in claim 1.

4.5. In the decision under appeal the opposition division also found the amendments to be infringing Article 84 EPC in respect of the range of values for the spacing between the bonded areas which did not clearly define the configuration of the bonded areas nor of the manner in which this distance should be measured.

The Board finds that since the manner of measurement is now defined as being in the direction of the shortest distance between individual bonded areas, this objection is no longer valid. This distance is measured in the direction of the shortest distance, i.e. between the rims of the bonded areas/apertures. In this respect the reference to US-A-4 772 444 is no longer relevant.

In point 4.4 it has already been explained that the invention is not limited to a pattern, i.e. a specific configuration, of the bonded areas. For the sake of clarity it is also not necessary to incorporate this in the claim, as the present wording is clear: each and every shortest distance between the rims of two adjacent bonded areas should be in the range claimed and all bonded areas should be spaced further apart than the apertures.

4.6. The presently claimed circular plan view shape of the bonded areas excludes all embodiments which involve bonded areas in the form of continuous lines as shown in Figure 13. Thus the claim is now clear. The question of consistency between the wording of the claims and the description (Article 84 EPC) caused by this amendment is to be addressed if the patent is to be maintained in amended form, with an adapted description. The Appellant has indicated its willingness to such modifications (see point V, "Auxiliary request").

4.7. The amendments to the dependent claims 2 to 6 involve mere clarifications which have a basis in the original application documents, without extending the protection conferred. All amendments to the claims therefore fulfil the requirements of Article 123(2) and (3). The claims in their amended form fulfil the requirements of Article 84 EPC.

5. Sufficiency of disclosure - Article 83 EPC

5.1. Since the spacing between bonded areas/apertures is now measured in the direction of the shortest distance between individual bonded areas, which implies for the skilled person that the spacing of the apertures is measured in the same way, the invention is disclosed in the patent in suit in a manner sufficiently clear for it to be carried out by the skilled person.

The method of determining the peel strength can be found in columns 32 to 34 of the patent in suit. The embodiments involving the bonded areas in the form of lines no longer fall under the terms of claim 1 (see point V and 4.6 above), thus the objection of Respondent 02 that the peel strength measurement was rendered useless in case of bonded areas in the form of a line or lines is no longer relevant.

5.2. The disclosure of the manner of cutting of the samples was insufficient, according to the Respondents, because the patent did not state how the samples should be cut in connection with the location of the bonded areas. They could be cut in any kind of manner, thus including none, one or even a plurality of bonded areas. The skilled person would end up with greatly differing results, thus without any proper indication of whether he actually had arrived at the product claimed.

The Board agrees with the Appellant in that on the basis of the information in the patent in suit a skilled person would firstly choose a regular pattern of individual bonded areas and secondly would make sure that each and every sample would have the same number of bonds, located at the same place in each sample, otherwise the peel strength test would not make sense. The direction in which the samples are to be cut is not arbitrary, having been described as being either in the cross-(CD) or in the machine-direction (MD).

5.3. Respondent 02 presented the argument that the very large number of possible combinations of topsheet and underlying layer, as mentioned in the patent in suit, combined with the indication that all fusion bonding techniques were suitable, made it implausible that the claimed peel strength could be arrived at for all these combinations.

Present claim 1 is limited to a liquid pervious apertured thermoplastic film topsheet having apertures, which excludes:

- woven and nonwoven materials,

- apertured plastic films,

- hydro-formed films,

- porous foams,

- reticulated foams,

- thermoplastic scrims, (see column 6, lines 43 to 55, column 7, line 17 to column 9, line 10), as they do not result in an apertured thermoplastic film topsheet having apertures going through and through the topsheet;

- an apertured thermoplastic film covered on the body side with an (unapertured) nonwoven material, see column 7, lines 27 to 32 and Figure 16, as it results in a topsheet without the apertures going through and through the topsheet;

- the above materials insofar as discussed in the patents referred to in column 7, lines 17 to 27 and 32 to 37;

- the fiber entangling of the thermoplastic film as discussed in column 7, line 38 to column 9, line 10, as the apertures are not going through and through the topsheet;

- the scrim with hydro-entangled nonwoven fibers as discussed in column 15, line 21;

- the unapertured film of column 30, lines 20, 21 of the patent in suit.

Thus the number of possible topsheet materials is already considerably reduced.

5.4. The claim further specifies the underlying layer as being a fibrous acquisition layer, to which the topsheet is directly fused to arrive at the claimed peel strength. This excludes the following materials:

- loose fibers, which lack consistency (column 10, line 21 and line 56 to column 11, line 5) and cannot be tested with the peel strength testing method as described;

- which are indirectly fused to the topsheet (column 11, line 11);

- which are part of the topsheet (column 11, line 17 and column 22, lines 32 to 35), or

- which are simple meltblown or carded nonwovens (i.e. without additional bonding of the nonwovens themselves), see column 14, lines 45 to 54;

- which are not capable of being fused or are not fused to the topsheet (column 12, line 55, column 15, lines 38 to 40).

The above limits the number of possible materials for the acquisition layer.

5.5. The fusion bonding methods discussed in the patent in suit are methods known to the skilled person.

Specific materials for the topsheet and the acquisition layer have been mentioned in the patent in suit, see the patents mentioned in column 7, lines 17 to 27, insofar as they relate to apertured thermoplastic films or apertured formed thermoplastic films for the topsheet and the patents mentioned in columns 12 and 13 for the acquisition layer.

In view of the above the Board is of the opinion that the skilled person will be able to carry out the invention on the basis of the information in the patent in suit.

5.6. The requirements of Article 83 EPC are thus fulfilled for the invention as claimed in claim 1.

6. Substantive examination

In the decision under appeal the Opposition Division came to the conclusion that none of the requests presented during the opposition proceedings were acceptable, as they did not comply with the requirements of either Article 123, Article 84 or Article 54 EPC.

Since a complete substantive examination has not yet been carried out, the Board considers that it should make use of its powers pursuant to Article 111(1) EPC to remit the case to the first instance for further prosecution, if a set of claims is available which overcomes the objections raised in the decision under appeal.

In respect of the examination as to novelty (Article 54 EPC) the Opposition Division found D5 as well as D12 novelty destroying for the subject-matter of claim 1 of the first auxiliary request then on file. The Board will therefore limit the examination of novelty of the subject-matter of claim 1 to these two documents, to allow for a two-instance examination of the issue of novelty in respect of the other state of the art in the file as well as of inventive step.

7. Novelty of the subject-matter of claim 1 in respect of D5 and D12 - Article 54 EPC

7.1. The absorbent article of D12 involves a liquid pervious apertured thermoplastic film (polyethylene) topsheet which is apertured, fixed to an underlying layer of nonwoven material by the melting of the EVA layer, coextruded with the polyethylene layer. Thus there is no direct fusing of the topsheet to the underlying layer. The further differences between the subject- matter claimed in claim 1 and this disclosure are:

- the circular plan view shape of the bonded areas;

- the size of the claimed spacing.

Contrary to the Appellant the Board finds there is a backsheet present, either in the form of the protective release strip 20, or by the backsheet of the sanitary napkin to which the liner of D12 will be attached.

7.2. As concerns D5, this document discloses the claimed requirement of the peel strength between the topsheet and the underlying layer only for the film layer 5 and the fiber layer 6, not for a perforated topsheet comprising film layer 5 together with fiber layer 6, fixed to an underlying fiber layer 7.

According to D5, the film layer 5 and the fiber layer 6 should be integrated with each other as firmly as possible to achieve this peel strength (page 8, lines 30 to 34). This integration can be achieved in two ways (page 6, lines 47 to 55):

- integrating a film free of openings with a fiber layer by means of thermal adhesion and perforating the resulting integral structure,

- perforating the film layer first to create a three dimensional side pore film and integrating the fiber layer with such a layer by thermal adhesion.

7.3. In the first mentioned process the film and the fiber layer are integrated in the step of melt-extruding a starting resin to prepare a film. This is done by "dry thermal adhesion", see page 22, line 7, thus the topsheet is fused over its entire surface to the underlying fiber layer.

According to D5 the perforation is thereafter done by embossing rollers (page 22, lines 6 to 9) to form a predetermined opening region. This results in individual areas which penetrate the topsheet and the underlying layer without penetrating the garment facing face of the backsheet of the absorbent article to which this topsheet and underlying layer are fixed. These areas provide structures with drainage passageways for liquids to pass through to said underlying layer. as the two layers are bonded together these areas are individual bonded areas as claimed in claim 1. According to Figures 11 to 13 they have a circular plan view shape.

What D5 does not disclose or imply is the spacing of these individual bonded areas, thus also does not allow an assessment whether the spacing of the bonded areas is larger than the spacing of the apertures provided by the perforation.

7.4. How exactly the underlying fiber layer is connected to the three dimensional perforated film layer resulting from the second mentioned process is not disclosed in D5. The only mention is to thermal adhesion (page 6, line 54). Thus it is not clear whether individual bonded areas which penetrate at least part of the way into the underlying fiber layer will result as claimed. Even if that were the case, the claimed spacing is not disclosed nor implied, nor is there any information about the spacing of the apertures achieved by perforation so as to compare it with the spacing of the bonded areas.

7.5. Thus the subject-matter of claim 1 is novel over D5 as well as D12.

The subject-matter of dependent claims 2 to 8 is for preferred embodiments of the absorbent article of claim 1 (Rule 29(3) EPC), thus also fulfils the requirements as to novelty in respect of these two documents. Independent claim 9 has not been addressed in the decision under appeal, is therefore not under examination of the Board.

The claims of the auxiliary request overcome the objections raised in the decision under appeal, thus the case is to be remitted to the opposition division for further prosecution.

8. If in this further prosecution a version of the claims ensues, which allows maintenance of the patent in amended form, the opposition division should ensure that the changes which are necessary (see points V, 4.2, 5.4 and 5.5), to bring the description in line with the claims insofar as these have been discussed in this decision, are carried out by the Appellant.