T 1746/12 (Water-disintegratable cleaning paper/KAO) 08-12-2014

Reasons for the Decision

Admissibility of the requests at issue

1. The main request at issue (maintenance of the patent as granted) being dealt with in the decision under appeal, its admissibility is out of question.

2. The auxiliary claims requests 1 and 2 were filed for the first time with the statement of grounds of appeal.

The board accepts

- that auxiliary request 1 was filed in reaction to the detailed reasoning given in the decision under appeal as regards the issue of sufficiency in respect of claim 1 as granted and constitutes an attempt to overcome said particular objection; and

- that the filing of auxiliary request 2 was a reasonable precautionary measure considering an objection under Article 100(c) EPC that had been raised in the first instance proceedings but decided in favour of the patent proprietor.

Considering also that the adverse party did not object to the filing of these auxiliary requests, the board decided to admit auxiliary request 1 and 2 into the proceedings (Article 114(2) EPC and Article 12(4) RPBA).

Main request

3. Subject-matter extending beyond the content of the application as filed - Claim 1

3.1 As pointed out by Respondent 1, claim 1 as granted is, according to one alternative, directed to a cleaning article comprising in combination, at least one "water swellable binder" selected from a list of specific binders with an "aqueous agent" containing a "binder insolubilizing component" selected from "water soluble organic solvents, acids or electrolytes".

It was in dispute whether, or not, such articles were disclosed in the application as filed.

3.2 The appellant essentially held that such articles were disclosed in the application as filed, specifically in claim 1 taken in combination with the description on page 7, lines 14/15, page 8, lines 14/15, and page 9, first two paragraphs.

3.2.1 The appellant furthermore argued that the skilled person could derive from the description that the insolubilizing component and the swelling suppressing component, contained in the aqueous agent, may be the same (see letter 8 July 2014, page 4, 4**(th) paragraph), e.g. boric acid and its salts or divalent metal cations, which may be used for both purposes (page 8, first paragraph and page 9, first two paragraphs of the application as filed; boric acid containing composition B used in the examples with fibrous PVA binder).

3.2.2 Therefore, the skilled person, considering the whole content of the application as filed, could gather from the description the teaching that according to one embodiment of the invention, a water swellable binder may be used in combination with one of the listed binder insolubilising agents, i.e. water soluble organic solvents, acids or electrolytes, in the fabrication of the claimed cleaning article.

3.3 For the board, it is not, however, derivable from the application as filed that the insolubilising component and the swell suppressing component may be used interchangeably. Throughout the description and in the claims of the application as filed these two expressions are used to refer, respectively, to two distinct classes of components suitable for different purposes (see in particular claim 10, but also page 7, first full paragraph, and the paragraph bridging pages 7/8 as well as page 9, first paragraph, of the application as filed).

The board accepts that some specific "aqueous agents" may serve for both purposes, depending on the combination of components considered. This is, however, only disclosed in respect of boric acid (and its salts) and of divalent metal ions, which may be used to prevent solubilisation/swelling of polyvinyl alcohol and carboxy methyl/ethyl cellulose, respectively (see page 8, first paragraph, page 9, first paragraph of the application as filed).

3.3.1 For the board, a teaching that the insolubilising component and the swell suppressing component may generally be used interchangeably, or that a water soluble organic solvent, acid or electrolyte may always be used as swell suppressing component, is thus not directly and unambiguously derivable from the application as filed.

3.3.2 Therefore, in the board's judgement, there is no fair basis in the application as filed for claim 1 as granted insofar as it is directed to the alternative identified under 3.1 supra, i.e. containing one of the water-swellable binders listed in combination with any insolubilizing component of the three types listed in claim 1.

3.3.3 Hence, claim 1 at issue being directed to subject-matter extending beyond the content of the application as filed, the patent as granted is objectionable under Article 100(c) EPC.

3.4 Therefore, the appellant's main request is not allowable.

First auxiliary request

4. Subject-matter extending beyond the content of the application as filed

4.1 As conceded by the appellant at the oral proceedings, the features additionally comprised in claim 1 of the first auxiliary request (see V supra) have no bearing on considerations regarding the question addressed under points 3.1ff above.

4.2 Thus, the conclusions drawn supra apply mutatis mutandis to claim 1 of the first auxiliary request.

Claim 1 at issue is thus also directed, in one alternative, to subject-matter extending beyond the content of the application as filed and is, therefore, objectionable under Article 123(2) EPC.

4.3 Therefore, the appellant's first auxiliary request is not allowable either.

Second auxiliary request

5. Allowability of the amendments

5.1 Claims 1, 3, 4, 5 and 8 of the second auxiliary request are no longer directed to the alternative according to which the "water dispersible fibrous sheet" may contain only a "water swellable binder" and no water soluble binder, since all previous references to the presence of a "water swellable binder" were deleted.

Therefore, the claims at issue are not objectionable on the ground raised by respondent 1 and addressed supra.

5.2 The board is satisfied that the claims at issue find a fair basis in the application as filed.

Claim 1 finds basis in claim 1 and on page 6, lines 19 to 22, and page 7, lines 14/15, of the application as filed.

Claim 5 finds basis in claim 5 and on page 6, lines 19 to 22 of the application as filed.

Amended Claims 3, 4 and 8 at issue find their basis in claims 3, 4 and 8 of the application as filed.

Claim 6 at issue finds basis in claim 6 and on page 7, lines 14/15, of the application as filed.

Claims 2, 7, 9,10 and 11 find basis in claims 2, 7, 9, and 12 of the application as filed.

5.3 The claims according to the second auxiliary request thus meet the requirement of Article 123(2) EPC.

6. Sufficiency of disclosure

6.1 In substantiation of its objection regarding the alleged insufficiency of disclosure, respondent 1 presented the two following lines of argument:

a) The water-soluble binder and the binder insolubilising components were only described in the patent in suit in very general terms. As no guidance was given on how to select suitable combinations of these compounds, it would require undue experimentation to prepare cleaning articles as defined by claim 1.

b) No method was disclosed for the measuring of the thicknesses T1 and T2 referred to in claim 1. Moreover, it was left open whether the measurement had to be carried out in a wet or a dry state of the cleaning article.

6.2 Ad argumentation a)

With regard to the amount of experimentation allegedly needed to identify a combination of ingredients suitable for putting the invention into effect across the full scope of claim 1 as granted, the board observes the following:

6.2.1 On the one hand, the description of the patent in suit comprises general indications concerning materials which may be used as suitable water dispersible fibers, water soluble binders and aqueous agents containing a binder insolubilising water soluble organic solvent, acid or electrolyte (see paragraphs [0017] to [0021]).

Specific combinations are suggested in paragraphs [0021] and [0025] to [0027].

Paragraph [0021] moreover mentions "salting-out" and "crosslinking" as possible insolubilisation mechanisms, and suggests suitable combinations of water soluble binders and suitable insolubilising agents.

6.2.2 A very specific combination of a water soluble CMC binder and an aqueous agent A containing water soluble organic solvent and electrolyte (see paragraph [0064]) is described in examples 1 to 10 of the patent in suit.

It was not in dispute that that these specific examples can be reproduced by the skilled person.

6.2.3 On the other hand, respondent 1 did not provide any proof in support of its allegation that, based on the disclosure of the patent in suit, the claimed cleaning article could not be prepared, or that an undue amount of experimentation was needed to identify further operable combinations of water soluble binder and insolubilising agent.

6.2.4 For the board, a shift of the burden of proof to the proprietor of the patent it is not justified in the present case considering that the patent in suit (passages quoted under point 6.2.1 supra) provides the skilled person with guidance on how to select, based on its knowledge of the properties of the suggested components and of chemical principles to be applied to achieve the desired insolubilisation, further combinations of components which are suitable for being used in the preparation of the claimed water-disintegratable cleaning article.

6.2.5 By merely alleging a lack of guidance and invoking an undue burden without providing verifiable facts supporting this objection, for instance regarding the undue amount of experimentation allegedly required, respondent 1 did not discharge the burden of proof resting on it.

6.3 Regarding argumentation b)

6.3.1 The board accepts that apparatuses/methods for measuring the thickness of paper under a given load were generally known at the effective filing date if the patent and that a skilled person was thus be able to perform the required measurements.

For instance, document D11 referred to by the appellant illustrates common general knowledge regarding (dry) paper thickness measurements and mentions important factors to be considered when measuring thickness, primarily the load applied to the paper by means of the pressure plates (paragraph bridging pages 276/277).

Document D12 (page 61, last paragraph) referred to by respondent 1 in its letter of 12 February 2013 (page 2, point 10), illustrates that it was also known to perform measurements on embossed fibrous webs using pressure plates, said method giving an "average thickness" (at the macroscopic level) irrespective of a varying "local thickness".

6.3.2 The board does not accept the respondent's further argument that the skilled person would not know where to measure on the embossed sheet the thicknesses T1 and T2.

Claim 1 unequivocally refers to the thickness(es) of "bulky, water-disintegratable cleaning article", as illustrated by Figure 1, under two different defined loads, and not to the thickness of the "water disintegratable paper" sheet as such or the dimensions of individual protrusions or depressions.

This understanding of T1 and T2 is consistent with paragraph [0012] of the patent in suit, where thickness T1 is defined as "the distance from the apices of protrusions 2 on the first side 1a to the apices of protrusions 2 on the second side 1b". For the board, this definition must also apply to the thickness T2 , since the indication of a thickness ratio T2 to T1 (see paragraph [0014] of the patent in suit) is technically sensible only if the measurement is carried out out under identical conditions, except for the different loads.

6.3.3 Concerning the remaining question whether the thickness of the article is to be measured in its dry or wet state, the board observes the following:

i) Claim 1 refers to a a bulky, water-disintegratable cleaning article containing 100% to 500% by weight of an aqueous agent, i.e. an article which is in a wetted condition and contains a specific amount of aqueous agent.

For the board, the wording of claim 1 in no way suggests that the cleaning article should be in a dry state when measuring T1 and T2.

ii) In paragraph [0013], third sentence, it is explicitly stated, in accordance with the implicit meaning of the wording of claim 1, that the measurement is done on the water-disintegratable cleaning article impregnated with an aqueous agent: "When the bulky, water-disintegratable cleaning article (impregnated with an aqueous agent) has a thickness T2 of ..."

Likewise, according to examples 1-8 of the patent in suit, the determination of the T1 and T2 values is done subsequently to the impregnation of the paper (see paragraph [0060]). Moreover, as pointed out by the appellant, the references to dry thickness measurements in the patent in suit (see e.g. page 9, line 27/28) concern the disintegratable paper sheet, not the impregnated wet cleaning article.

iii) Respondent 1 relied in particular on a passage of paragraph [0015] of the description reading as follows: "The T1 and T2 values are not greatly affected by the amount and the composition of the impregnating aqueous agent so that the aqueous agent content is not included in the conditions of measuring T1 and T2. If the amount of the aqueous agent is to be included in the measuring conditions, double the dry weight of the water-disintegratable paper, which is typical in the present invention, would be a suitable condition."

For the board, paragraph [0015] merely indicates that the T1 and T2 values are not strongly dependent on the amount of an aqueous agent contained in the article, and can be understood to recommend, in the context of the remaining disclosure, measuring T1 and T2 using a content of aqueous agent which is double the dry weight of the water-disintegratable paper.

6.3.4 The board concludes that the arguments put forward by respondent 1 in connection with the alleged lack of clear information regarding the measurement of T1 and T2 are not sufficient to raise doubts as regards the ability of the skilled person to carry out said measurements and, hence, to reliably provide a cleaning article with the features of claim 1. Although, therefore, the burden of proof was on respondent 1 in this respect, it did not submit proof of the contrary, let alone in the form of verifiable facts.

6.4 Hence, in the board's judgement, none of the two lines of arguments put forward by the respondent convincingly shows that the invention as claimed according to the request at issue is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

6.5 Therefore, the ground of opposition of Article 100(b) EPC does not prejudice the maintenance of the patent on the basis of the claims according to the second auxiliary request.

7. Remittal

7.1 As pointed out by the appellant, the impugned decision addresses the issues of novelty and inventive step with regard to process claims only, not with regard to the product claims of the patent which were found to be objectionable on the grounds of Article 100(b) EPC. The latter finding is not, however, confirmed by the board in the present decision.

7.2 Therefore, although the appellant has no absolute right to have each individual issue considered by two instances, and despite the late submission of its request, the board considers it justified in the present case to allow the appellant's request for remittal pursuant to Article 111(1) EPC, in particular to give the parties the possibility of defending their case at two levels of jurisdiction also with respect to the product claims.