T 0481/23 28-01-2025

1. Main request

Article 100(c) EPC

1.1 The subject-matter of claim 1 has been amended relative to claim 1 as filed inter alia through the addition of feature 1.8 which defines that

'in the non-stretchable region, an elongation at an elastic limit in the stretching and contracting direction is set to 120% or less'.

1.2 The respondent indicated the basis for this amendment to be claim 5, paragraph [0017], and paragraphs [0104] and [0108] of the application as filed.

1.3 Claim 5 as filed reads as follows:

'The absorbent article according to any one of claims 1 to 4, wherein

in the stretchable region, an elongation at an elastic limit in the stretching and contracting direction is set to 200% or more, and

in the non-stretchable region, an elongation at an elastic limit in the stretching and contracting direction is set to 120% or less'.

Claim 5 thus clearly recites the elongation at an elastic limit of the stretchable region and the non-stretchable region together. The claim seen alone therefore provides no basis for solely the elongation at an elastic limit of the non-stretchable region to be taken-up into claim 1 in isolation from the elastic limit of the stretchable region.

1.4 The respondent's argument that the claim explicitly recites that the elongations at an elastic limit for the two regions can be varied independently is not of relevance for the question whether the elastic limit in the non-stretchable region is disclosed in isolation from that in the stretchable region. Even though the elastic limits can be changed within the claimed ranges independently of one another, the elastic limit range of each region is disclosed in claim 5 solely in combination, the conjunction 'and' in claim 5 unambiguously providing the mandatory link between the two. Thus, claim 5 discloses a combination of the elongation at an elastic limit in the non-stretchable and the elongation at an elastic limit in the stretchable region.

1.5 The respondent's further reference to paragraph [0017] of the application as filed fails to provide the requisite direct and unambiguous disclosure for feature 1.8. Again the conjunction 'and' is used in paragraph [0017] to link appropriate determination of the elastic limits in both the stretchable region and the non-stretchable region. Nothing in this paragraph allows a conclusion to be drawn that the elongation at an elastic limit for the non-stretchable region alone may be taken-up into claim 1 in isolation of the elastic limit for the stretchable region.

1.6 The respondent's argument that paragraph [0108] also separately disclosed the elastic limit in the non-stretchable region and was not linked to the disclosure in paragraph [0104] of the elastic limit in the stretchable region is not accepted. As also pointed out by the appellant, both paragraph [0104] and paragraph [0108] belong to a 'first mode' of the invention or, in more usual terminology for patent specifications, a 'first embodiment' of the invention. Consequently the disclosures in paragraphs [0104] and [0108] would not be seen by the skilled person reading the description as isolated disclosures, but rather as a combined disclosure forming an integral part of the first embodiment of the invention. The respondent did not indicate any part of the application as filed which would suggest to the skilled person that these two paragraphs could be viewed separately from one another, nor can the Board find any such indication.

1.7 It is further noted that feature 1.4 of claim 1 defines a region having the elastic film stretchable structure to include a stretchable region and a non-stretchable region. The stretchable and non-stretchable regions are thus disclosed to be structurally linked at least insofar as they are both part of a common region having the elastic film stretchable structure. Omission of the elongation at an elastic limit of the stretchable region from claim 1 thus also lacks basis for this reason.

1.8 In summary, therefore, in view of all the points above, there is no disclosure in the application as filed of an elongation at an elastic limit of the non-stretchable region in isolation from an elongation at an elastic limit of the stretchable region. For at least this reason, the subject-matter of claim 1 thus extends beyond the content of the application as filed.

1.9 Consequently the ground for opposition under Article 100(c) EPC is prejudicial to the maintenance of the patent as granted.

2. Auxiliary request 10*

Article 123(2) EPC

2.1 Despite having been raised by the appellant already with respect to claim 1 of the main request, the objection in relation to features 1.5 and 1.7 did not have to be decided upon for the main request due to the Board's finding regarding added subject-matter with respect to feature 1.8 (see point 1.8 above). With claim 1 of auxiliary request 10* having overcome the objection relating to feature 1.8, features 1.5 and 1.7 must now be considered for this request.

2.2 Relative to claim 1 as filed, claim 1 of auxiliary request 10* has inter alia been amended in feature 1.5 to recite that the stretchable region has 'the through holes'. It thus follows unambiguously from the linguistic structure of claim 1 that 'the through holes' recited in feature 1.7 refer to the same through holes as those claimed in feature 1.5, i.e. the through holes in the stretchable region.

2.3 The respondent's argument that it was clear from features 1.3 and 1.4 of claim 1 that the through holes were located both in the stretchable and the non-stretchable regions is not accepted. While feature 1.3 indeed defines through holes penetrating the elastic film of the elastic film stretchable structure at sheet bond portions and feature 1.4 recites that the elastic film stretchable structure includes both a stretchable region and a non-stretchable region, this does not allow a conclusion to be reached that the through holes are necessarily located in both the stretchable and the non-stretchable regions. While such a possibility is not excluded, the claim is broader than this and encompasses the through holes being located in just the stretchable region, just the non-stretchable region, or even in neither of these regions.

2.4 As a consequence of the breadth of the claim being much broader than held by the respondent, its argument that the amended feature 1.5 addressed the through holes in the stretchable region whilst feature 1.7 necessarily addressed those in the non-stretchable region is not accepted. Again, the respondent's contention is a possibility not excluded by the claim, but it is not the sole possibility. Indeed, feature 1.5 unambiguously defines the presence of the through holes in the stretchable region, but feature 1.7 does not define the through holes additionally being present in the non-stretchable region (see point 2.2 above).

2.5 Such a linguistically clear interpretation of features 1.5 and 1.7 also makes technical sense to the skilled person.

2.5.1 Firstly, in this regard, it is noted that claim 1 defines the relationship between the stretchable region and the non-stretchable region of the elastic film stretchable structure in very broad terms; the non-stretchable region is merely defined to be located 'at least at one side of the stretchable region in a stretching and contracting direction'. No relative sizes of the two regions are defined, nor is any indication given of how many of each region there might be, simply 'a' stretchable region and 'a' non-stretchable region being claimed.

2.5.2 Secondly, it is noted that feature 1.7, rather than being drafted in terms of concrete physical features, defines the absence of linear continuity in the non-stretchable region as being 'due to presence of the through holes'. Precisely how this condition is achieved is left open by the claim but, as a consequence of the chosen wording of feature 1.7 effectively claiming a result to be achieved, the through holes in the stretchable region would not unreasonably be interpreted by the skilled person as having an influence on the ability for the non-stretchable region to have no section in which the elastic film linearly continues along the stretching and contracting direction. The respondent's contention that this was a non-sensical interpretation of the claim is not accepted. As already explained above, claim 1 does not unambiguously define what the respondent wishes the reader to understand. Rather the claim has been drafted more broadly which allows the technically reasonable interpretation that the through holes in the stretchable region result in the lack of a section in the non-stretchable region in which the elastic film linearly continues along the stretching and contracting direction.

2.5.3 The breadth of claim resulting from at least the above two factors would thus allow the skilled person to technically reasonably understand features 1.5 and 1.7 of claim 1 in precisely the manner that the wording of claim 1 defines.

2.5.4 With the skilled person being able to technically understand claim 1 based on the wording of the claim alone, the respondent's reference to Figs. 9 and 11 and paragraphs [0100] to [0102] of the application as filed, in order to interpret claim 1 in a more limited way by considering features which are not present in the claim, is not appropriate. This would be against the established principle according to which features which are only present in the description and not in the claim cannot be read into a patent claim to limit its subject-matter.

2.6 Claim 1 as amended, through the addition of 'the through holes' in feature 1.5, thus defines in feature 1.7 that, due to the presence of the through holes (in the stretchable region), the non-stretchable region does not have a section in which the elastic film linearly continues along the stretching and contracting direction. This lacks basis in the application as filed. The respondent did not contest this conclusion.

2.7 Consequently the subject-matter of claim 1 does not meet the requirement of Article 123(2) EPC. Thus, irrespective of any issue regarding admittance, auxiliary request 10* is not allowable.

3. Auxiliary requests 10A to 10I

Article 13(2) RPBA

3.1 According to Article 13(2) RPBA, any amendment to a party's appeal case made after notification of a communication under Article 15, paragraph 1, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

Auxiliary requests 10A to 10I were indeed filed by the respondent after notification of the Board's communication under Article 15(1) RPBA, so the conditions of Article 13(2) RPBA apply to these requests.

3.2 Auxiliary request 10A

The respondent's argument that point 1.1.2 of the Board's communication under Article 15(1) RPBA introduced a new interpretation of the presence or not of through holes in the non-stretchable region, which had not been raised by either party, is not accepted. In point 1.1.2, the Board concludes that 'there seems to be no definition of the through holes being present in the non-stretchable region'. This is precisely the appellant's contention in the first five paragraphs on page 5 of its grounds of appeal i.e. that the through holes recited in feature 1.7 of claim 1 are those through holes recited in feature 1.5. It thus follows that, in its preliminary opinion, the Board simply agreed with the appellant's arguments on this issue and did not introduce a new interpretation of claim 1. Consequently no exceptional circumstances existed justifying auxiliary request 10A being taken into account.

3.3 Auxiliary request 10B

3.3.1 The respondent's argument that, contrary to both parties, the Board had found D1 to disclose feature 1.4 and that this presented an exceptional circumstance justifying admittance of auxiliary request 10B is also not accepted.

3.3.2 While the Board's preliminary opinion addressed the issue of novelty of the subject-matter of claim 1 of the main request over D1, the eventual decision on all higher ranking requests to auxiliary request 10B has been based on objections of added subject-matter. It thus follows that no causality exists between the newly raised aspect (i.e. how the Board interpreted D1 with respect to the disclosure of feature 1.4) and the final conclusion of the Board regarding the main request or auxiliary requests 10* and 10A. The newly raised aspect can thus not qualify as an exceptional circumstance according to Article 13(2) RPBA.

3.3.3 As similarly found in T 2352/19, Reasons 2.5.2, the mere fact that the filing of the respondent's request was triggered by the Board's preliminary opinion, i.e. that the raising of the new aspect was causal for the filing of the request, does not necessarily result in this request being taken into account. The request might well have been submitted as a legitimate attempt to address the newly raised aspect but the legitimacy of the attempt ceases to exist if the newly raised aspect does not become relevant for the decision.

3.3.4 Consequently, no exceptional circumstances justified auxiliary request 10B being taken into account.

3.4 Auxiliary requests 10C to 10I

3.4.1 The subject-matter of claim 1 of each of these lower ranking auxiliary requests is based on claim 1 of auxiliary request 10A and/or 10B in combination with features taken from dependent claims. The respondent gave no exceptional circumstances justifying their being taken into account going beyond those presented for auxiliary requests 10A and 10B.

3.4.2 Absent any exceptional circumstances justifying the admittance of auxiliary requests 10C to 10I, the Board exercised its discretion not to take these auxiliary requests into account.