T 0976/03 26-01-2006

Reasons for the Decision

1. The appeals are admissible.

2. Objection under Article 100(c) (main request)

2.1 In the general description ("Summary of the Invention") of the application as filed it is disclosed (page 3, lines 30 to 35) that "an important parameter of the present invention is that the fibrous nonwoven web separation layer be lofty in nature so as to allow the combination aperture film and separation layer to have good penetration rates for absorbed fluids and low rewet values so that the fluid, once absorbed, does not flow back to the surface of the product". The importance of achieving low penetration rate and rewet values is further emphasized by the statement in the description of Example 3 (page 19, lines 12 to 15) according to which "improved penetration rates and rewet properties are achievable with the present invention when compared to conventional nonwoven covers and film covers alone".

However, there is no mention in the application as filed of any preferred penetration rate and/or rewet values. In fact, the general teaching according to the disclosure of the application as filed consists in achieving an improvement of penetration rate and rewet by combining, in a body side liner, specific apertured film and separation layers, not however, in achieving specific low values of penetration rate and rewet.

2.2 In the examples (pages 16 to 20 of the application as filed), different samples of body side liners placed on top of but not glued to a Kotex® Maxi Pad chassis have been prepared and the values of penetration rate and rewet have been measured (Tables I to III) according to the test method described on pages 12 and 13 of the application as filed. Sample 1b of Example 1 consists of an apertured Sultex film (see page 6, lines 23 to 27) and a 41 gsm through-air bonded bicomponent spunbond web separation layer referred to as Bico SB, made from 3 denier polyethylene/polypropylene side-by-side fibres (page 16, lines 30 to 32). For this sample 1b, a penetration rate of 12 s and a rewet of 0.1 gms are indicated in Table I. For sample 2b of Example 2, which is identical to sample 1b of Example 1, different values are indicated in Table II, namely a penetration rate of 11.7 s and a rewet of 0.03 gsm. For the other samples of Example 2 in accordance with the invention (samples 2c, 2e, 2f, 2h, 2i) different combinations of materials are used (sample 2c is a Sultex film with a 27 gsm through air bonded carded web referred to as TABCW, sample 2e is a Mitsui film with the Bico SB separation layer, sample 2f is the Mitsui film with the TABCW separation layer, sample 2h is a AET film with the Bico SB separation layer, and sample 2i is the AET film with the TABCW separation layer), and different values of penetration rate and rewet are indicated for them in Table II. Among the samples of Example 3 only samples 3b and 3c are in accordance with the invention. Although they correspond to samples 2b and 2c of Example 2, different results of penetration rate and rewet are indicated in Table III. However, a different version of the Kotex® Maxi Pad chassis is used in Example 3, namely the European version (see page 19, line 22) rather than the U.S. version as in Examples 1 and 2 (page 16, line 26; page 18, line 4).

Therefore, it is clear from the examples that the values of penetration rate and rewet depend on the materials of which the components (apertured film layer and separation layer) of the body side liner are made, and on the support used (in particular on whether the U.S. or the European version of the Kotex® Maxi Pad is used).

2.3 Accordingly, having regard to both the general disclosure and the examples of the application as filed, the skilled person would come to the conclusion that the specific values of 12 s for the penetration rate and of 0.1 g for the rewet are closely associated with the features of sample 1b, namely a body side liner consisting of a combination Sultex apertured film and 41 gsm through-air bonded bicomponent spunbond web separation layer, and with the features of the test procedures for determining the penetration rate and the rewet, in particular the feature concerning the use of a Kotex® Maxi Pad chassis (U.S. version). Consequently, the skilled person would consider that the specific values of 12 s for the penetration rate and of 0.1 g for the rewet cannot be detached from these features to form a basis for a generalized definition of claim 1 in which (in accordance with the undisputed reading of claim 1 made by the appellant-patentee's) said specific values are not associated to any particular apertured film and separation layer among the many possible selections allowed by the wording of claim 1 (which requires a film layer having a percent open area of between 10 and 30 per cent, and a separation layer comprising a fibrous nonwoven web having a bulk of between about 0.76 and 3.8 millimetres, a basis weight of between about 17 and 85 grams per square meter and an average pore size of between about 100 and 400 mym).

For this reason, the subject-matter of claim 1 extends beyond the content of the application as filed.

2.4 The Board notes that the specific values of 12 s for the penetration rate and of 0.1 g for the rewet in claim 1 are not associated either with any features of the test procedures for determining the penetration rate and the rewet. However, since the claim already falls for the above-mentioned reason, it is unnecessary to consider the argument submitted by the appellant-patentee in respect of this latter issue, namely that the claim must be interpreted on the basis of the description as including the features of the test procedures, in particular the use of a Kotex® Maxi Pad chassis.

2.5 The above discussion is based on the assumption that Example 1 effectively discloses, in connection with sample 1b, a penetration rate of 12 seconds and a rewet of 0.1 grams. However, as mentioned above (point 2.2), the application as filed discloses different values of penetration rate and rewet for the identical sample 2b of Example 2. In particular, sample 2b has a rewet of 0.03 g which is substantially different from the rewet of 0.1 g of sample 1b. The appellant-patentee submitted that the values given for sample 2b were erroneous and that this would be readily recognized by a skilled person. However, the Board cannot find any basis in the application as filed which would allow to objectively recognize for which of samples 1b and 2b erroneous values of penetration rate and rewet are indicated in the application as filed. This ambiguity in the values of penetration rate and rewet for identical samples implies that there is also no clear and unambiguous disclosure in the application as filed for the association of the values of penetration rate of 12 seconds and rewet of 0.1 grams with the specific apertured film and separation layers of sample 1b.

2.6 Therefore, the ground for opposition under Article 100(c) prejudices the maintenance of the European patent in the form as granted.

3. The auxiliary requests I to III

3.1 Since auxiliary request II corresponds to the patent in the form as maintained by the Opposition Division and the amendments to the claims according to the auxiliary requests I and III, which were filed sufficiently in advance of the oral proceedings, were made in reaction to the objections raised by the Board in the communication accompanying the summons for oral proceedings, these requests are admitted in the present appeal proceedings.

3.2 Claim 1 according to all the auxiliary requests I to III includes the feature of claim 1 of the patent as granted according to which "said apertured film layer and said separation layer when used as a body side liner for a personal care absorbent article yielding a penetration rate of 12 seconds or less and a rewet which does not exceed 0.1 grams". Since, as explained above, the values of 12 s for the penetration rate and of 0.1 g for the rewet cannot be detached from the specific features of the examples to form a basis for a generalized definition in which said specific values are not associated to any particular apertured film and separation layer amongst the various possibilities falling within the scope of claim 1, as it is the case for claim 1 according to all the auxiliary request, the subject-matter of this claim extends beyond the content of the application as filed. Accordingly, the auxiliary requests do not meet the requirements of Article 123(2) EPC and are therefore not allowable.

4. The auxiliary requests IV to VI

In view of the fact that they were filed at a late stage during the oral proceedings and of the fact that they are not clearly allowable (the amendments made do not remove the cause of non-compliance with the requirements of Article 123(2) EPC since the feature concerning a penetration rate of 12 seconds or less and a rewet which does not exceed 0.1 g is still present in claim 1 of all these requests), auxiliary requests IV to VI are not admitted in the appeal proceedings in application of Rule 10b of the Rules of procedure of the Boards of Appeal (OJ 3/2003).

5. Referral of a question to the Enlarged Board of Appeal

5.1 Although the wording of the question which the appellant-patentee's requested to refer to the Enlarged Board of Appeal pursuant to Article 112(1)(a) EPC is somewhat unclear, it is clear from the written text accompanying the question, in particular the reference to decision T 1104/04, and from the appellant-patentee's submissions during oral proceedings, that the question concerns the issue of whether it is allowable to generalise a specific value of an example to create a generic range therefrom.

However, the relevant issue in the present case is whether it is allowable to isolate a specific value from the concrete context of an example in which it is disclosed in combination with particular features to form a basis for a generalized limit in a claim without taking into consideration those particular features. Accordingly, since the relevant issue in the present case is not specific to the creation of a generic range in a claim on the basis of a specific value disclosed in an example, the question submitted by the appellant-patentee is irrelevant to the present decision.

5.2 Finally, the Board notes that the present decision is not in contrast with other decisions of the boards of appeal, in particular decision T 343/90 referred to by the appellant-patentee. In decision T 343/90 (see point 2.2 of the reasons), the Board took the view that the values of viscosity taken from the examples could be isolated from the other data given in the examples because they were not to be seen only in the context of these other data. The factual situation in the present case is different, because the values of penetration rate of 12 s and of rewet of 0.1 g can only be seen in the context of the specific data of Example 1b. A similar situation arose for example in case T 1004/01 (see in particular point 3.4 of the reasons), where the Board took the view that a specific value of a parameter (peel strength) could not be detached from the exemplified products to form a basis for a generalized lower limit of the claimed parameter range.

As regards the decision T 1104/04 of 13 January 2006 referred to by the appellant-patentee, a written decision was not yet available when the decision in the present case was pronounced. However, it could be inferred from the appellant-patentee's submissions that the Board in that case allowed the value of a parameter disclosed in an example to be used as the lower limit of a range in the independent claim. However, as explained above, this is not the issue in question in the present case. Nor is the Board in the present case arguing that, as a general rule, the value of a parameter taken from the examples cannot be isolated from the other data given in the examples. In fact, this might be allowable under certain circumstances, such as those underlying decision T 343/90.

5.3 Therefore, the request to refer a question to the Enlarged Board of Appeal is refused.