T 0655/96 27-10-1999

Summary of Facts and Submissions

I. The appellant (opponent III) lodged an appeal, received on 12 July 1996, against the decision of the Opposition Division of 24 May 1996 to maintain the patent No. 0 176 305 in amended form and paid the appeal fee on the same day. The statement setting out the grounds of appeal was received on 23 September 1996.

II. The Opposition division held that the patent disclosed the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC) and that the cited prior art did not prejudice the novelty and the inventive step of the subject-matter of the patent as amended (Article 100(a) EPC).

With its grounds of appeal, the appellant only maintained its objection of insufficient disclosure (Article 100(b) EPC) challenging the finding of the Opposition Division, that suitable techniques for carrying out the invention were generally known to a person skilled in the art, e.g. from the documents

(D2) DE-A-1 560 871

(D3) DE-C-2 835 822

(D4) US-A-3 111 948

(D6) US-A-4 147 580 (cited in the patent application, page 2, line 8).

III. Oral proceedings were held on 27 October 1999 at which only the appellant and the respondent (proprietor) were represented. At the end of the oral proceedings the requests of the parties were as follows:

The appellant (opponent III) requested that the decision under appeal be set aside and the patent be revoked.

The respondent (patentee) requested that the appeal be dismissed and that the patent be maintained in the form approved by the opposition division (main request), or be maintained in the form of, in sequence, the auxiliary requests set out in its letter of 18 January 1996.

IV. Claim 1 according to the main request reads as follows:

"A disposable waste-containment garment comprising a liquid impermeable backsheet (27), a liquid permeable lamina (21, 22) and an absorbent core (23) disposed between the backsheet (27) and lamina (21, 22), said absorbent core comprising a mass of fibers substantially devoid of interfiber bonds, characterized in that the liquid permeable lamina is selected from a) a topsheet (21) and b) a wet strength tissue (22) overlain, on the face thereof remote from the backsheet, by a topsheet (21), and in that core slumping and core roping is reduced by adhesive that extends over the adjoining faces of the absorbent core (23) and the lamina (21, 22) so as to secure them in face to face relationship, the adhesive being in the form of an open pattern (49) that is a reticulated network of filaments."

V. The appellant argued essentially as follows.

The patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC).

- The patent in suit was silent about how to make reticulated networks of filaments. The patent specification never differentiated between filaments and globules, or glue beads, see description, column 5, from line 24. Throughout the application there was no word to teach what had to be done to deposit the glue in form of filaments instead of globules.

The submission of 7 January 1994, page 2, by the patentee that the skilled person "must be presumed" or "would know" how to perform the invention or that "the skilled person ... would have no difficulty whatsoever ...in selecting the application conditions ..." (last paragraph under the heading "insufficiency" in the above cited submission) had to be regarded as a vague statement, which could not make up for a lack of a positive disclosure. Also the decision of the Board of Appeal T 219/85 stated that vague statements, such as: "in such a manner that" or: "under the condition that" did not enable on their own a skilled person to establish the conditions required to achieve the desired result.

- The reference to other patent specifications was not sufficient alone to take them as common general knowledge. Contrary to the statement made in the decision under appeal (page 5, first paragraph), other patent specifications - including those considered as closest prior art (such as document (D6) cited in the description of the patent in suit) - could not normally compensate for insufficiency of the disclosure and did not become part of the common general knowledge. See decision of the Board of Appeal, T 171/84.

- In any case, the cited prior art documents did not disclose methods to make reticulated networks of filaments:

(a) Document (D6) disclosed only globules and not, like the patent in suit, reticulated networks of filaments. That the disclosure of document (D6) was useless in assessing the feasibility of the invention was also acknowledged in the decision under appeal (point 4.3, first and last paragraph) in the following terms: "the adhesive being in the form of an open pattern that is a reticulated network of filaments, cannot be derived from ... D6" and "the skilled person could not start with the knowledge of D6 and end up with the subject-matter of the patent in suit".

(b) Documents D2 and D3 disclosed printing techniques, see decision under appeal, page 5 first paragraph. In particular document D2 disclosed a cylinder with deep grooves ("tiefgeätzter Muster", column 5, lines 2, 3) which deposited glue on the surface of the garment. The pattern obtained was clearly different from the filaments of the invention, which were - in comparison - very tiny. Furthermore the material used in a garment according to document D2 had low viscosity (column 5, line 22) which meant low adhesive capacity, not suitable for filaments.

(c) Document D4 employed a spraying technique (see decision under appeal, page 5) to deposit glue material in crossing lines (column 3, line 29).

- According to the case law of the Boards of Appeal the same level of skill had to be applied when, for the same invention, the two questions of sufficient disclosure and inventive step had to be considered. Moreover, the skilled person in the art should be able to reproduce the invention without any additional inventive activity. The decision under appeal, however, stated that the invention was feasible on the basis of document D6 and at the same time that it was inventive having regard to the same document. These were two contradictory statements.

- During the opposition proceedings on 2 September 1994 the opponent and present appellant filed a declaration by Urban Widlund together with microphotographies taken from products which had been made with the machine disclosed in document D6 (see column 2, from line 37: hot-melt adhesive to be wiped from the slot extrusion orifice of a glue nozzle). The attached photos clearly showed that the result was the coating of the underlying fibers and not a reticulated network of filaments. This was confirmed also by the appealed decision, see page 6, second and third paragraph. The decision under appeal, page 7, recognized further that the patent in suit required the presence of filaments of adhesive standing alone. As it was proved by the above declaration, the outcome by using the technique disclosed by document D6 was not a reticulated network of adhesive filaments. That meant that the skilled man in the art with the knowledge of the techniques of document D6 was not in the position to carry out the invention without an undue burden, as required by the case law of the Boards of Appeal.

VI. The respondent submitted the following arguments:

The patent specification disclosed the preferred type of adhesive (column 5, lines 25 to 40) and the quantity to be used to produce the filaments (claims 4 and 5). On the basis of the general knowledge, documented by document D6, and of the above cited data, the person skilled in the art was capable of modifying the process of document D6 in order to produce filaments instead of globules as required by the claimed invention. The main claim in suit was a product claim. The fact that the process to obtain the product was part of the common general knowledge, as acknowledged in the background part of the closest prior art document D6, did not imply that the product itself was obvious. According to the jurisprudence of the Boards of Appeal, in assessing feasibility the whole content of the patent specification must be taken into account. The microphotographies presented by the appellant referred to a garment made with a method which differed in several aspects from the examples disclosed in the description of the patent in suit and therefore they could not be considered as such as representative of the method described in the examples of the invention. Conseqently, they could not be used for demonstrating whether or not the modes described in the description were sufficiently clear and complete for it to be carried out by a person skilled in the art. Article 100(b) EPC is in fact not only directed to the claims but also to the whole description. In order to prove the insufficiency of the disclosure it was necessary to follow all the conditions laid down in the description regarding the best mode of carrying out the invention. The burden of proof laid on the party who was challenging the patent.

The micrographs submitted by the appellant in annex to the declaration of Mr Widlund referred to a product for which it was not specified that the adhesive used was of the type disclosed in column 5 of the patent specification nor that the quantity of adhesive used corresponded to that disclosed in the patent specification. The appellant stated that a machine such as described in document D6 had been used, however document D6 was silent about the features of the machine used. The choice of a suitable adhesive was on the other hand very important in order to produce filaments.

Finally, Mr Widlund's tests were not carried out with the intention to produce a reticulated network as claimed by the patent in suit; his declaration only states that the garments submitted had been made using the method of document D6. In this connection it had to be considered that this declaration was based on tests which were carried out before the priority date of the patent in suit. Under these conditions the benefit of the doubt was on the side of the respondent (see T 219/83).