T 0288/12 11-02-2016

Reasons for the Decision

1. The claimed subject-matter

The claim request relevant to the present decision is the request annexed to the opposition division's decision (sole request). Claim 6 of this request relates to a laminated foam article and claim 1 to a method of manufacturing it (for the wording of these claims, see point III above). The laminated foam article can be visualised as follows:

polyurethane-based two-component elastomeric coating with a thickness of 10-50 mym

layer of a plastic dispersion

polyurethane-based thermoplastic film with a thickness of 2-8 mym

polyurethane-based foam substrate

2. Sufficiency of disclosure (Article 100(b) EPC)

2.1 All three appellants argued that it was not possible to prepare a laminated foam article as required in independent claims 1 and 6 with a polyurethane-based thermoplastic film having the specified thickness, namely 2 to 8 µm.

2.2 Appellants 1 and 3 relied in this respect on D18 and D19. These documents were filed at the earliest possible time during the appeal proceedings, namely with appellant 1's and 3's statements of grounds of appeal, and are used to pursue a sufficiency attack already put forward during the opposition proceedings (see point IV above). Furthermore, as will be shown below, they are prima facie relevant. In view of this, and in the absence of any request from the respondent to the contrary, these documents are admitted into the proceedings.

2.3 The experimental report D19 of appellant 3 describes four experiments in which films of the polyurethane SikaSense**(®)-3560/01, corresponding to the polyurethane-based thermoplastic film in claims 1 and 6, were provided on polyurethane foam substrates ("PU-Schaum" in photograph 1 of D19), corresponding to the polyurethane-based foam substrate of claims 1 and 6. The films were formed by coating the foam substrates with four different coating weights of SikaSense**(®)-3560/01, namely 30 g/m², 60 g/m², 150 g/m² and 230 g/m². The resulting samples 1 to 4 were observed through an optical microscope and the average thicknesses of the films were determined. Photographs of the samples are shown on pages 4 and 5 and the thickness values are provided in table 1 of D19. As can be seen in this table, the average thickness of the films increases with the coating weight applied and already the lowest value of 43.4 µm obtained with the sample with the lowest coating weight (sample 1) is far above the claimed upper limit of 8 mym. In fact, in samples 1 and 2 (samples with the lowest and second lowest coating weights), it is highly doubtful that any film is present at all, since the corresponding photographs show only some spots of coating material rather than a film. The first sample where a film is clearly present is sample 3, in which the average thickness is as high as 98.8 µm, i.e. even further above the claimed upper limit.

A similar result was obtained by appellant 1 in D18, where a film of SikaSense**(®)-3560/01 was provided on a polyurethane foam substrate by coating the foam substrate with three different coating weights of SikaSense**(®)-3560/01, namely a "low" ("WS--"), "normal" ("WS") and "high" ("WS++") amount. The resulting samples were analysed with scanning electron microscopy. It was found that the SikaSense**(®)-3560/01 forms a network of fibres on top of the polyurethane foam. The higher the amount of SikaSense**(®)-3560/01, the denser the network and the more these fibres start to coalesce to form a layer with holes and finally a continuous film. The thickness of the fibres was found to range from about 4 mym to about 26 mym and the film thickness obtained with the normal amount of SikaSense**(®)-3560/01 (WS) was between 30 mym and up to more than 100 mym and for the high amount (W++) 55 mym to more than 100 mym. Hence, also in D18, the film thickness is far above the claimed upper limit.

D18 and D19 thus prove that with the thermoplastic polyurethane SikaSense**(®)-3560/01, no thermoplastic film with the thickness required by claims 1 and 6 can be obtained. From this, it can be concluded that at the very least not all thermoplastic polyurethanes allow the formation of thermoplastic films with the thickness required by claims 1 and 6.

2.4 The patent does not provide any guidance as to which polyurethane-based thermoplastic material has to be chosen and/or how it has to be applied in order to obtain the required thickness. In fact, the patent does not give a single example of a polyurethane-based thermoplastic material. Therefore, the patent does not put the skilled person in a position to obtain polyurethane-based thermoplastic films with the thickness required by claims 1 and 6. Thus for this reason alone, sufficiency of disclosure has to be denied.

3. In view of the above, there is no need to address the appellants' further insufficiency objection in relation to the feature of "a layer of a plastic dispersion". There is furthermore no need to deal with the appellants' inventive-step attack.

4. Reimbursement of the appeal fee (Rule 103(1)(a) EPC)

4.1 As set out above (point IV), during the opposition proceedings the opponents already objected that it was impossible to apply a polyurethane-based thermoplastic film with the thickness of 2-8 mym required by claims 1 and 6. Nevertheless, the opposition division did not issue a reasoned decision on this objection (see point IV above), so in this respect its decision is not reasoned as required by Rule 111(2) EPC. This amounts to a substantial procedural violation (see e.g. T 763/04, point 4.4). In view of the fact that on the basis of this objection the board in the present decision comes to the conclusion that sufficiency has to be denied, it is equitable to order the reimbursement of the appeal fees.

4.2 In view of this, there is no need to decide on the appellants' request that the appeal fees be reimbursed for another reason, namely because the opposition division's decision was not based on the ultimately valid claims. Thus, the opposition division referred in point 7 ii) of its decision to the thickness of the plastic dispersion layer of 20 to 100 µm as a distinguishing feature over D1. The independent claims of the main request (sole request) annexed to the decision did however not contain this feature. In fact the only claim request submitted during the opposition proceedings that contained this feature in the independent claims appears to have been the main request filed with letter dated 29 April 2010.

However, the various requests filed during the opposition proceedings were in the end replaced by the sole request filed during the oral proceedings before the opposition division, i.e. the main request annexed to the decision of the opposition division, which were the ultimately valid claims in these proceedings.