T 1343/05 06-03-2007

Summary of Facts and Submissions

I. European Patent Nr. 0 815 820, granted on application Nr. 9304539.6, was revoked by the opposition division by decision posted on 8 July 2005. The opposition division came to the conclusion that the invention was sufficiently disclosed, that the subject-matter of claim 1 of the main request met the requirements of Article 123(2) EPC and 84 EPC, and was novel over the disclosure in

D3 EP-A-0 732 094

but did not involve an inventive step having regard to the third and second embodiments disclosed in D3. The auxiliary request filed at the end of the oral proceedings was late filed and comprised additional features from the description. It was not allowed in view of a further search being considered necessary in order to assess the patentability of this request.

II. The appellant (patentee) filed a notice of appeal against this decision on 7 September 2005, and paid the appeal fee simultaneously. On 18 November 2005 the statement of grounds of appeal was filed, accompanied by new sets of claims in accordance with a main request and an auxiliary request.

III. With a communication dated 9 November 2006, accompanying the summons to oral proceedings, the board set out its preliminary opinion. Further discussion was indicated as being needed as to whether the current claim 1 comprised all the features of the embodiment described in relation to Figure 2 to fulfil the requirements of Articles 123(2) EPC. Furthermore, D3 appeared to be prior art under Article 54(3) EPC and therefore did not appear a suitable starting point for the discussion of inventive step.

IV. Oral proceedings were held on 6 March 2007.

The appellant requested that the decision under appeal be set aside and the patent be maintained on the basis of the main request filed with the grounds of appeal, alternatively on the basis of the first auxiliary request filed with letter dated 6 February 2007 alternatively on the basis of the second, third or fourth auxiliary requests filed during the oral proceedings.

The respondent (opponent) requested that the appeal be dismissed.

Claim 1 according to the main request reads as follows:

"A disposable body fluids absorbent article comprising

a) a topsheet (2) on a skin-contactable side,

b) a backsheet (3) on a non-skin-contactable side,

c) and a tape fastener (21) adapted to fasten the body fluids absorbent article soiled with excretions in a rolled up condition thereof in a predetermined direction, characterised in that

d) said tape fastener is unfolded in its un-used condition and comprises:

e) a lower end member (22),

f) an upper end member (23) and

g) an intermediate member (24) between the lower and upper member,

h) wherein the substantially non-stretchable fixed end portion (22) secured to an outer surface of said backsheet,

i) a substantially non-stretchable free end portion (32) of the upper end member longitudinally opposite to said fixed end portion (22) and

j) adapted to be held by the user's fingers,

k) an elastically stretchable portion (24) longitudinally extending in an unstretched condition from said fixed end portion (22) towards said free end portion (32) and

l) a substantially non-stretchable adhesive portion (28) longitudinally extending between said free end portion (32) and said elastically stretchable portion (24)

m) with an inner surface of said adhesive portion (28) facing the outer surface of said backsheet (3) and releasably directly bonded to said outer surface,

n) the members (22, 23) are formed by stripes provided separately of the intermediate member (24)."

Claim 1 according to the 1st auxiliary request reads as follows:

"A disposable body fluids absorbent article comprising

- a topsheet (2) on a skin-contactable side,

- a backsheet (3) on a non-skin-contactable side,

- and a tape fastener (21) adapted to fasten the body fluids absorbent article soiled with excretions in a rolled up condition thereof in a predetermined direction,

- said tape fastener is unfolded in its un-used condition,

- characterised in that said tape fastener (21) comprises:

- a substantially non-stretchable fixed lower end member (22), secured to an outer surface of said backsheet,

- a substantially non-stretchable upper end member (23)

- and an intermediate member (24) extending between the lower and upper member (22, 23),

- a substantially non-stretchable free end portion (32) longitudinally opposite to said fixed lower end member (22) and

- adapted to be held by the user's fingers,

- wherein the intermediate member (24) having an elastically stretchable portion (31) longitudinally extending in an unstretched condition from said fixed lower end member (22) towards said free end portion (32), and

- a substantially non-stretchable adhesive portion (28) longitudinally extending between said free end portion (32) and said elastically stretchable portion (24)

- with an inner surface of said adhesive portion (28) facing the outer surface of said backsheet (3) and releasably directly bonded to said outer surface, wherein

- the members (22, 23) are formed by the strips provided separately of the intermediate member (24)."

Claim 1 according to the 2nd auxiliary request is based upon claim 1 of the main request, claim 1 according to the 3rd auxiliary request is based upon claim 1 of the 1st auxiliary request. Claim 1 of the 2nd auxiliary request as well as claim 1 of the 3rd auxiliary request contain additionally the following features which are specified as features o) and p) in claim 1 according to the 2nd auxiliary request and without the letters o) and p) in claim 1 according to the 3rd auxiliary request:

"o) wherein the lower end member (22) having its entire inner surface applied with a first adhesive (26) so that the lower end member (22) is bonded to a lower end portion (27) of the intermediate member (24) over a second applied zone (26B) of the first adhesive (26) and to the outer surface of the backsheet (3) over a first adhesive zone (26A) of the first adhesive (26),

p) and the upper end member (23) having its inner surface applied with second adhesive (28) so that the upper end member (23) is bonded to an upper end portion (29) of the intermediate member (24) over a third adhesive zone (28A) of the second adhesive (28) and to the outer surface of the backsheet (3) over a fourth adhesive zone (28B) of the second adhesive (28)."

Claim 1 according to the 4th auxiliary request is based on claim 1 of the 2nd auxiliary request. It differs from this latter claim 1:

- in feature g) the word "extending" is added between "an intermediate member (24)" and "between"

- in features h) and i) the reference number (22) is deleted

- in features k) and l) the reference number (24) is changed to (31)

- in feature m) the word "directly" is deleted

- in feature p) at the end the wording is added "and to a film member (35) to be held by the user's fingers over a fifth adhesive zone (28C) of the second adhesive (28),"

- in additionally containing the following features:

"q) wherein all the adhesive zones (26A, 26B, 28A, 28C) except the fourth adhesive zone (26B) bond to the members (22, 23, 24, 35) and the backsheet (3) to those opposed to them, respectively, so firmly that these members and the backsheet cannot be separated from one another and

r) wherein over the fourth adhesive zone (28B) the tape fastener (21) is releasably bonded to the backsheet (3) by means of applying the outer surface of the backsheet (3) with a mold release agent and/or regulating an adhesive power of the second adhesive (28), and

s) wherein the intermediate member (24) has the elastically stretchable portion (31) of a predetermined length between the lower end member (22) and the upper end member (23)."

V. The appellant argued essentially as follows:

With respect to the main request, the features added to the subject-matter of the granted claim 1 could be identified in Figure 2 of the patent in suit and they were clear in themselves. Since the skilled person would recognize that various options existed for the embodiment disclosed it was not necessary to include each and every feature of the embodiment of Figure 2. Originally filed claim 1 had a much broader scope and therefore, the present wording of the claim represented a restriction of the scope of protection. Hence, the requirements of Article 123(2) and (3) EPC were met.

With respect to the 1st auxiliary request, the features of its claim 1 corresponded to the features of claim 1 of the main request. The amendments concerned the wording "portion" and "member". Hence, this request was made in order to overcome the clarity objections.

The 2nd auxiliary request should be admitted into the proceedings. Further features relating to the embodiment shown in Figure 2 were inserted into claim 1. These features related to the adhesive zones in the upper and lower end members and clarified the location of their different portions. Again, therefore, the clarity objections raised were dealt with. It was not necessary to insert the feature relating to the film member of the free end portion since this feature was not related to the inventive concept of the patent in suit. No new search was necessary in respect of this claim because the features were in close identity with the features already searched in the existing search report. The features limited the scope of protection of the claim and thus the request should be admitted.

Claim 1 of the 3rd auxiliary request corresponded in its features and amendments to claim 1 of the 2nd auxiliary request and thus the arguments set out for claim 1 of the 2nd auxiliary request applied as well. It was filed having regard to the clarity issues and in conformity with the filing of the main and 1st auxiliary requests.

Concerning the 4th auxiliary request, its claim 1 was based upon claim 1 of the 2nd auxiliary request. All features of the embodiment shown in Figure 2 were specified by the additional features o) to s). Furthermore, feature g) of the claim was amended with a view to clarity (i) by the addition of the word "extending", (ii) by partly deleting and partly changing the reference numbers in features h), i), k), l), and (iii) by deletion of the word "directly" which was objected to in feature m). In particular the added features o) to s) referring to the end members, the adhesive zones, the film member and the intermediate member restricted the scope of claim 1 to the subject-matter of the embodiment shown in Figure 2.

No necessity for a new search arose due to the subject-matter of claim 1 of this request. Mould release agents and agents for regulating the adhesive power of an adhesive did not concern the inventive idea of the claimed subject-matter which related to the design of the fastener and furthermore, were well-known to the skilled person.

VI. The respondent argued essentially as follows:

Claim 1 of the main request contained features which could only be derived from the embodiment shown in Figure 2, for example features e) to g) and the reference in feature m) to the backsheet being "directly" bonded. Since these features were disclosed only in a specific combination it was necessary to insert all the other features of this embodiment. Therefore, the requirements of Article 123(2) EPC were not met. Neither was the claim clear. The terms "portion" and "member" were used such that they seemingly referred to different "portions" or "members".

With respect to claim 1 of the 1st auxiliary request, the amendments concerned the wording in relation to "portion" and "member" and the term "fixed end portion" which was present in claim 1 as granted, was omitted. However, due to this omission, the scope of protection of claim 1 was extended (Article 123(3) EPC). In any event, the amendments neither overcame the clarity objections nor had the effect of meeting the objections under Article 123(2) EPC already made with respect to the main request.

With respect to the 2nd and 3rd auxiliary requests, these requests were late filed. They should not be admitted. When considering claim 1 of these requests, the claim still did not include all features of the embodiment shown in Figure 2. Particularly with respect to the upper end member it was not specified that there had to be a film member 35 over a fifth adhesive zone 32 in order to establish the free end portion which should be adapted to be held by a user's fingers. Other possibilities were now within the scope of the claim for example nonwoven or folded end portions. However, these options were neither disclosed in combination with Figure 2 nor in combination with any other embodiment (Article 123(2) EPC). The clarity issues indicated for claim 1 of the main request persisted in claim 1 of the 2nd auxiliary request. The omission of the term "fixed end portion" and the related objection set out for the 1st auxiliary request remained an issue with regard to claim 1 of the 3rd auxiliary request. Hence, both requests could not be considered as being prima facie allowable.

With respect to the 4th auxiliary request, this request was filed at the last possible moment during the oral proceedings. For it to be admitted it was necessary that it prima facie met the requirements of Article 123(2) EPC which was not the case. In the embodiment shown in Figure 2, the intermediate member (24) was identical to the elastically stretchable portion (31). According to the inserted feature s) no such identity was required. Even the appellant was of the view that Figure 2 disclosed only one material for the intermediate member (24), whereas the claim now included further options in this respect. This led not only to an intermediate generalisation of the embodiment shown in Figure 2 (Article 123(2) EPC) but also to a lack of clarity with respect to the location of the elastically stretchable portion (Article 84 EPC).

Furthermore, in the originally filed application the wording of feature q) also included the term "these members and the backsheet practically cannot be separated from one another" [emphasis added]. The omission of the term "practically" resulted in an extension of the content of the application as filed (Article 123(2) EPC). Further objections with regard to Articles 84 and 83 EPC could be raised in particular with regard to feature r) which included the application of "a mold release agent and/or regulating an adhesive power of the second adhesive" without indicating how this was done. Furthermore, this feature was taken from the description and the search had probably had not covered this aspect. For all these reasons, this request was not prima facie allowable and should not be admitted into the proceedings.