T 0522/11 24-04-2015

Reasons for the Decision

1. Respondent's sole request - claim 1 - Article 100(c) EPC

1.1 Claim 1 is a combination of the features defined in originally filed claims 1, 3 and 5, together with the additional feature "the fastening components and mating fastening components forming refastenable side seams (88) allowing the article to be either pulled on like a pant or applied like a diaper", which is taken from the final paragraph on page 2 of the application as filed.

1.2 Originally filed claims 3 and 5 are each dependent only on claim 1. Claim 5 reads: "The absorbent article of claim 1, further comprising leg elastic members longitudinally aligned along each side edge in the crotch region, the leg elastic members having front terminal points located adjacent longitudinally innermost parts of the front side panels and back terminal points located adjacent longitudinally innermost parts of the back side panels." There is no disclosure in the originally filed application which links the disclosure of leg elastic members as generally defined in claim 5 as filed to a general disclosure of the combination of features defined in claims 1 and 3.

1.3 The respondent's position is that (granted) claim 1 is essentially a combination of claims 1 and 5 as filed, and that the features of claim 3 are implicit in claim 1 as filed, since originally filed claim 3 merely requires that each of the side panels comprises an elastomeric material, which is already the case in claim 1 due to the side panels being defined in that claim as being elastomeric.

Accordingly, the issue around which this objection under Article 100(c) EPC revolves is whether there is a difference between the side panels being elastomeric and the side panels comprising an elastomeric material.

1.4 The Board concludes that the side panels "being elastomeric" concerns a behavioural property of the side panels, whereas the side panels comprising an elastomeric material refers to the side panels which include a component, the raw material of which is itself elastomeric. The skilled person is aware of the possibility of providing elastomeric properties without using elastomeric materials, as it is well known in the art that such properties can be provided for example by necked and stabilized nonwoven webs which have elastomeric properties although not themselves elastomeric (raw) materials. Accordingly, the provision of side panels being elastomeric differs from the provision of side panels comprising an elastomeric material.

1.5 The respondent argued that the skilled person would consider any material as being possible under the heading of "elastomeric material" as long as it had the characteristics defined in the application as filed (page 8, lines 1 to 5) concerning elongation and recovery. In particular, the "material" would not be understood as meaning the "raw" material but would be understood as the material which makes up the side panel.

1.6 The Board however considers that "material" is disclosed in the sense of "raw" material, in contrast to the side panels which are disclosed as including various portions or materials. This is in line with the following passages in the originally filed application:

1.6.1 The definitions in the application as filed with regard to "elastic" (page 7, lines 33 to 35) and "elastomeric" (page 8,lines 1 to 6) refer to "elastic" as concerning generally the property of a material or composite, whereas "elastomeric" refers specifically to the material or composite having a defined minimal elongation (25 %) and recovery (100 %) (see page 7, lines 33 to 35 and page 8, lines 1 to 3).

1.6.2 The definitions in the application as filed with regard to "stretch bonded" and "stretch bonded laminate" (page 10, lines 4 to 12) refer generally to members or composites having at least two layers/members but not specifically to either "raw" material or side panels. Hence, these definitions do not support the view of the respondent.

1.6.3 In reference to Figure 7, it is disclosed (page 18, lines 21 - 24) that each of the side panels can include one or more individual, distinct pieces of material. As illustrated in Figure 7, the side panels include separate first, second and third members. According to the description on page 25, lines 1 to 6, these distinct members are attached to each other at seams and one of the members may comprise a non-elastomeric material as well as panels of elastomeric materials. Hence, this embodiment exemplifies that it is the "raw" material of the specific part of the component which is being identified.

1.6.4 The respondent argued that page 19, lines 4 to 17 gave a definition of the term "material" and that this should be applied to the terminology "elastomeric material". A skilled person would thus recognise that the term "material" was not being used in the sense of "raw material".

1.6.5 However, this section of the description does not give a definition of the term "material", let alone a definition of "elastomeric material". Instead, it merely refers to elastic materials and how these can be constructed in certain embodiments. At most, this section gives a description of laminate materials in the sense of these laminates being the raw material.

1.7 In respect of the respondent's line of argument based on the allegedly allowable combination of features in claims 1, 3 and 5 as filed, the Board notes that originally filed claims 3 and 5 are not only formally each separately dependent on claim 1, but concern entirely distinct subject-matters. The subject-matter of claim 3 as filed relates to the specific material comprised in the side panels and also to the behavioural characteristics of the side panels. The subject-matter of claim 5 concerns the leg elastic members and their points of attachment. Accordingly, from the claims alone the skilled person would not unambiguously consider the subject-matter of these dependent claims as being linked in some way.

1.8 The respondent argued that the skilled person would not view the single dependency of claims 3 and 5 in the application as filed as being a restrictive disclosure, and would instead understand implicitly that these separate features could readily be combined.

1.9 The Board however does not accept this. The claims define subject-matter which is to enjoy protection, and it is the applicant's choice how the claims are formulated. If protection is desired for a particular combination of features, for example if such combination provides some inventive structure, then the applicant when filing the application has the possibility of defining such a combination unambiguously. Claim 3 and claim 5 as filed in fact contain very general definitions of the side panel material and behaviour on the one hand, and the location and extent of the leg elastics on the other. Nowhere in the application as filed can support be found to indicate, let alone unambiguously disclose, that such general product features should be combined to achieve any particular technical purpose. Instead, when referring to leg elastics (see e.g. page 13, line 4 et seq of the application as filed), the leg elastics are simply one amongst many other features which are disclosed in combination belonging to the specific embodiment disclosed with regard to Figures 1 to 3. Thus a skilled person has no basis upon which the combination of features in claims 3 and 5 as filed can be unambiguously extracted in isolation from the other features of the embodiment. Also, the elastomeric material in the side panels (i.e. as defined in claim 3 as filed) does not even form part of that disclosed embodiment.

1.10 It may be added that whilst nothing would seemingly prevent the combination of the features in claims 3 and 5 from a technical viewpoint, this is not the standard which is to be applied when deciding on the issue of a direct and unambiguous disclosure of the combination of these features. Therefore, the respondent's argument that a skilled person would not view the disclosure provided by dependent claims 3 and 5 in such a restrictive manner that their single dependency has to be strictly adhered to, is merely a supposition which is unsupported by the disclosure in the application as filed.

1.11 Thus, to summarise, no part of the application as filed provides a direct and unambiguous disclosure of the combination of the leg elastics and the elastomeric material of the side panels in the general manner defined in claims 3 and 5.

1.12 Accordingly, originally filed claim 1 can only unambiguously be understood to concern generally the fact that the side panels are elastomeric in terms of their behaviour, albeit without defining to what extent, whereas originally filed claim 3 additionally requires the side panels to comprise an elastomeric material.

1.13 Consequently, there is no disclosure in the application as filed which would support the view that the subject-matter of originally filed claim 3 was inherently already present in originally filed claim 1.

1.14 In view of the foregoing, there is no disclosure in the originally filed application of subject-matter comprising the combination of features in granted claim 1. The requirement of Article 123(2) EPC is thus not met. Since the respondent's sole request is not allowable, the patent has to be revoked.