T 2605/18 06-12-2021

Reasons for the Decision

1. Claim 1 of the patent as granted - lack of novelty over document D1

1.1 Document D1 discloses multiple ply tissue paper. The embodiment of Figure 2A of document D1 comprises two structured outer TAD (through air drying) plies 41A and 41B and one inner wet pressed ply 42 (see document D1, column 14, lines 21 to 30). This is not contested.

FORMULA/TABLE/GRAPHIC

1.2 The appellant argued that there was no disclosure regarding the orientation of the structured ply with respect to the at least two other plies. The board does not concur with the appellant's assertion but shares the view of the opposition division (see decision under appeal, Reasons, point 14.1). The structured ply of the patent comprises two different faces, a rough face 19 and a smooth face 18. So do the structured plies 41A and 41B in Figure 2A of document D1. The rough face, i.e. the side which is relatively highly textured, has outwardly facing protrusions in the form of the domes 184 (see document D1, Figure 2A, column 8, lines 51 to 59). The board notes that the cited passage refers to the embodiment shown in Figure 1B of document D1, which discloses two structured plies 31 and 32 (see document D1, Figure 1B; column 12, line 62 to column 13, line 3; and column 13, line 15 and lines 43 to 45) produced by TAD manufacturing. Since the plies 41A and 41B of Figure 2A of document D1 are also manufactured by TAD, the structured plies 31 and 32 of Figure 1B correspond, at least as far as their surface structure is concerned, to the structured plies 41A and 41B of Figure 2A. Consequently, the disclosure that the rough side has outwardly facing protrusions in the form of domes 184 for Figure 1B equally applies to the embodiment shown in Figure 2A. Figure 2A of document D1 clearly shows that the domes 184 of the structured plies 41A and 41B face inwardly. This means that the orientation - contrary to the appellant's assertion - is unambiguously disclosed in Figure 2A of document D1. As the rough side faces inwardly, it is a logical consequence that the functional feature "so as to dampen a two-sidedness effect related to the structured back face" is equally anticipated by the embodiment of Figure 2A of document D1.

1.3 Conclusion on novelty of claim 1 of the patent as granted (main request)

The subject-matter of claim 1 of the patent as granted is not new (Article 54 EPC).

2. Claim 1 of auxiliary request 1 - lack of inventive step over document D7

2.1 The opposition division considered the subject-matter of claim 1 to be obvious, inter alia, in view of document D7 alone (see decision under appeal, Reasons, points 15.1.1 and 15.1.2).

2.2 The board concurs with the opposition division that the subject-matter of claim 1 of auxiliary request 1 does not involve an inventive step over document D7 alone.

2.2.1 Document D7 relates to multi-ply tissues (see paragraph [0001] of document D7). There are either tissues with all plies being manufactured by a CWP (conventional wet press, see paragraph [0128] of document D7) or by a TAD technique (see paragraph [0130] of document D7), or the tissues are hybrid tissues and comprise both type of plies obtained according to the CWP and TAD techniques (see paragraph [0133] of document D7). One embodiment is given in paragraph [0134] of this document, also referred to in the opposition division's decision. The hybrid tissue consists of two outer plies of the TAD type and inside plies produced for instance by the CWP technique. The use of the plural for the inside plies indicates that there must be at least two plies. The table on page 4 of document D7 contains an example with five plies (1TAD + 3CWP + 1TAD). As correctly stated in the opposition division's decision and as agreed by the parties, document D7 is silent about the orientation of the structured ply with respect to the other plies. Thus, the subject-matter of claim 1 of auxiliary request 1 differs from the disclosure of document D7 in that the structured ply is positioned and orientated with respect to the at least two other plies such that the structured back face of the structured ply is facing the at least two other plies to dampen a two-sidedness effect related to the structured back face.

2.2.2 The objective technical problem can be formulated as finding a hybrid tissue with a soft surface. This was not disputed by the appellant.

2.2.3 Tissues manufactured with the TAD technique were generally known at the filing date of the patent. The two-sidedness is an inherent effect of this method, as can also be deduced from paragraph [0037] of the patent: "As a consequence of the through air drying TAD manufacturing method, in particular supporting the wet paper fibers on a fabric and drying by means of a current of hot air passing through the fabric and the paper fibers, the front face 18 is smooth and soft whereas the back face 19 is structured (reproducing the structure of the fabric) and rough."

Consequently, the person skilled in the art only had the two possibilities that the soft side faces either outwardly or inwardly. Paragraph [0134] of document D7 already mentions that the two outer TAD tissues result in a very soft feel. In accordance with the conclusion of the opposition division, the person skilled in the art would have turned the structured ply in such a way that its rough side, i.e. its structured back face, was facing inward.

2.2.4 The appellant argued that document D7 did not teach the person skilled in the art how to achieve a soft product. The board points out that document D7 explicitly mentions a soft feel obtained by the embodiment in paragraph [0134] and further gives specific examples in the table on page 4. With respect to the two-sidedness as an inherent effect of a TAD ply, the board refers to paragraph [0037] of the patent (see point 2.2.3 above).

2.3 Conclusion on inventive step of claim 1 of auxiliary request 1

The subject-matter of claim 1 of auxiliary request 1 does not involve an inventive step over document D7 alone (Article 56 EPC).

3. Auxiliary request 2

3.1 Admittance of the respondent's submissions concerning auxiliary request 2 in view of documents D1 and D7

3.1.1 In accordance with Article 13(2) RPBA 2020, which applies by virtue of Article 25(1) RPBA 2020, any amendment to a party's appeal case made after the expiry of a period specified by the board in a communication under Rule 100(2) EPC or, where such a communication is not issued, after notification of a summons to oral proceedings is, in principle, not to be taken into account unless there are exceptional circumstances which have been justified with cogent reasons by the party concerned.

When applying Article 13(2) RPBA 2020, the first question is whether the submission objected to is an amendment to a party's appeal case. If that question is answered in the negative, the board has no discretion under Article 13(2) RPBA 2020 not to admit the submission.

3.1.2 In the case at hand, the respondent stated the following on page 1 of its reply to the statement of grounds of appeal with respect to auxiliary request 2:

"The reasoning of the opposition division with regard to the previous nine auxiliary requests is equally correct and even to the extent that these requests satisfy the requirements of Articles 123(2) and 84 EPC (which is not the case for at least some of the requests), each of these requests at least lacks inventive step in view of D1 when combined with D7. For instance, D7 precisely discloses at paragraph [0134] products containing outer TAD plies in combination with plies (plural) produced using a wet-pressed technique (see also paragraph [0128]). This teaching is evidently highly compatible with D1 and the proprietor's arguments in that respect should not be followed."

In view of this general reference to the findings in the decision under appeal, the appellant requested that any oral submission which went beyond the opposition division's arguments and were related to newly cited passages in document D7 not be admitted.

In the judgment of the board, the submissions presented by the respondent during the oral proceedings to which the appellant objected were all aimed at illustrating, refining or further developing the arguments of the decision under appeal and countering the arguments of the appellant made in the appeal proceedings. Any additional passages or figures referred to merely served this purpose. The board notes that no additional pieces of evidence were submitted. The board therefore takes the view that the respondent's submissions objected to by the appellant do not amount to an amendment of the respondent's appeal case. Therefore, the board has no discretion under Article 13(2) RPBA 2020 not to admit them into the proceedings.

The above approach takes account of the fact that oral proceedings form an important part of proceedings before the boards. Their prominence is underlined by the absolute right of a party to oral proceedings under Article 116 EPC. They serve to discuss matters pertinent to the decision of the board. Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments and of course the evidence, submitted in a timely fashion in the written proceedings (see decision T 247/20, Reasons, point 1.3).

3.2 Conclusion on admittance

The respondent's submissions concerning auxiliary request 2 in view of documents D1 and D7 do not constitute an amendment of the respondent's appeal case and thus form part of the proceedings.

3.3 Claim 1 of auxiliary request 2 - lack of inventive step over document D1 in combination with document D7

3.3.1 It is common ground between the parties that document D1 is a suitable starting point for assessing inventive step and that it discloses a multiple ply tissue paper (see document D1, Figure 2A), from which the subject-matter of claim 1 of auxiliary request 2 differs in that there are at least two wet pressed plies and in that a first wet pressed ply comprises a first microstructure pattern with first protuberances and a second wet pressed ply comprises a second microstructure pattern with second protuberances. The parties agreed with the opposition division's formulation of the objective technical problem, namely, to provide a soft multi-ply tissue paper product having good mechanical integrity.

3.3.2 The appellant took the view that the person skilled in the art would not have consulted the teaching of document D7 to arrive at the claimed invention. As paragraph [0015] of document D7 listed many advantages, among them that the tissue readily disintegrates, the person skilled in the art would have been led away from a tissue having good mechanical properties. The board cannot endorse this argument. Ready disintegration is not primarily related to mechanical integrity but to flushability of the tissue, as also elaborated on in paragraph [0087] of document D7. It is to be understood to mean that the tissue "readily breaks up in water". Document D7 explicitly mentions mechanical integrity in the general passage in paragraph [0015] (see "strong") and in paragraph [0054]. The latter paragraph states that "[t]his ply confers and gives the sheet thickness and a certain stiffness and good mechanical integrity". "This ply" relates to the second ply 2 or group of plies positioned inside the sheet and comprises coarse microembossing. Thus, the board concurs with the respondent that the person skilled in the art, starting from document D1, would have considered the teaching of document D7.

3.3.3 The appellant argued that even if the person skilled in the art had turned to document D7, they would not have arrived at the claimed solution. It asserted that the person skilled in the art would not have embossed a TAD ply because it was already inherently structured. Therefore, the embodiment in paragraph [0134] of document D7 was incompatible with the embodiment in paragraph [0054] and Figure 1 of the same document.

The board does not share the appellant's view. The embodiment in paragraph [0134] of document D7 comprises two outer plies of the TAD type and inner plies produced by CWP. There is an example in the table on page 4 of document D7 which consists of five plies, two outer TAD plies and three inner CWP plies. This example is reflected in claim 39 depending on claim 37. Therefore, the person skilled in the art would have replaced the inner CWP ply of Figure 2A of document D1 with at least two wet pressed plies as disclosed in document D7.

In paragraphs [0053] to [0055], document D7 discloses that each ply or group of plies is embossed independently. The outer ply has a decorative pattern, the inner ply has a coarse microembossing, and the third ply has a different microembossing. This embodiment and the arrangement shown in Figure 1 is fully compatible with the embodiment of paragraph [0134].

According to paragraph [0132], the plies, including the plies of the TAD type described in paragraph [0130], may be associated using an installation as in Figure 2 of document D7.

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In view of this disclosure, the appellant's argument that the skilled person would not have used TAD-type plies as exterior layers because plies of the TAD type were generally not embossed does not hold.

Reference is also made to claims 37 and 39 depending on claim 36 of document D7, according to which the at least three interior plies are joined together by mechanical bonding. This necessarily implies that they are embossed.

The appellant's argument that mechanical ply bonding should be distinguished from regular embossing is not convincing since the function or purpose of the microstructure pattern is not a feature of current product claim 1. It defines a microstructure pattern and does not make any reference to a manufacturing method.

3.3.4 Conclusion on inventive step of the subject-matter of claim 1 of auxiliary request 2

The above findings confirm the opposition division's conclusion that the subject-matter of claim 1 is rendered obvious by document D1 in combination with document D7. The requirements of Article 56 EPC are therefore not met.

4. Claim 1 of auxiliary requests 3, 4 and 5 - lack of clarity

4.1 In the decision under appeal, claim 1 of auxiliary requests 3, 4 and 5 was found not to meet the requirements of Article 84 EPC since amended claim 1 covers, on the one hand, the possibility of having only one wet pressed ply ("at least one ply is a wet pressed ply"), while requiring, on the other hand, the presence of a plurality of wet pressed plies (see decision under appeal, Reasons, points 17, 18 and 19). The board shares this view, which remained uncontested by the appellant.

4.2 Conclusion on clarity

Claim 1 of auxiliary requests 3, 4 and 5 is not clear (Article 84 EPC).

5. Claim 1 of auxiliary request 3' - lack of inventive step over document D1 in combination with document D7

5.1 The parties agreed that document D1 was a suitable starting point for assessing inventive step, the distinguishing features and the objective technical problem. The distinguishing features are the at least two wet pressed plies and that the wet pressed plies are bonded together according to a nested flat internal ply manufacturing process. The objective technical problem is to provide a soft multi-ply tissue paper product having good mechanical integrity. As document D7 discloses in Figure 1 that the (groups of) plies 1, 2 and 3 are bonded together in a nested configuration of the plies, and because this association is made using the manufacturing process according to Figure 2 (see document D7, paragraphs [0128], [0129] and [0132]), the same arguments apply as for auxiliary request 2 (see points 3.3.2 and 3.3.3 above).

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The fact that the embodiment disclosed in paragraph [0134] of document D7 was produced by a method according to Figure 2 was discussed for auxiliary request 2. The board thus concurs with the opposition division's considerations set out in the decision under appeal (Reasons, point 17.1).

5.2 Conclusion on inventive step of the subject-matter of claim 1 of auxiliary request 3'

The subject-matter of claim 1 of auxiliary request 3' does not involve an inventive step over document D1 in combination with document D7 (Article 56 EPC).

6. Claim 1 of auxiliary request 4' - lack of inventive step over document D1 in combination with document D7

6.1 Claim 1 of auxiliary request 4' comprises the additional features "wherein a first wet pressed ply and/or a second wet pressed ply comprises a first microstructure pattern with first protuberances (8, 9); and wherein the microstructure patterns comprise a combination of protuberances (8) with a first height (h1) and other protuberances (9) with a second height (h2)".

6.2 It is disputed how the second of these added features is to be interpreted and whether it covers the possibility that the first and second heights are identical. As argued by the respondent, claim 1 does not exclude the first height and the second height having the same value. The second height is not specified in relation to the first height.

Dependent claim 2 defines the second height with respect to the first height. But this further limitation is optional and does not, hence, justify a different, more restricted interpretation of the clear wording of claim 1.

The interpretation by the board is not changed when considering dependent claims 4 and 5 as filed, which were referred to by the appellant. Claim 4 as originally filed claims microstructure patterns comprising protuberances of substantially identical heights, while claim 5 as originally filed claims that the microstructure patterns comprise a combination of protuberances with a first height and other protuberances with a second height. The fact that claim 5 as filed did not depend on claim 4 as filed does not allow coming to a conclusion on the subject-matter of claim 5 as filed or on claim 1 of auxiliary request 4'.

6.3 Even if the feature were interpreted to mean that the heights had to be different, Figure 1 of document D7 shows protuberances having different heights. Figure 1 also relates to the embodiment disclosed in paragraph [0134] of document D7 as discussed above under point 3.3 for auxiliary request 2.

6.4 As document D7 discloses two wet pressed plies, each having a microstructure of a certain height, the arguments set out above for auxiliary request 3' apply also for auxiliary request 4' (see point 5. above).

6.5 Conclusion on inventive step of the subject-matter of claim 1 of auxiliary request 4'

Consequently, the subject-matter of claim 1 of auxiliary request 4' does not involve an inventive step over a combination of documents D1 and D7 (Article 56 EPC).

7. Claim 1 of auxiliary request 5' - lack of inventive step over document D1 in combination with document D7

7.1 Compared with claim 1 of auxiliary request 4', claim 1 of auxiliary request 5' specifies the second height, "which is up to two times greater than the first height". The board shares the respondent's view that this feature defines an upper limit for the second height. No lower limit is specified. Thus, it is not excluded that the first and second heights are identical.

7.2 The appellant's argument that the second height is not equal to the first height as otherwise the term "greater" would be meaningless cannot be accepted by the board. In view of the wording "up to two times greater", the claim clearly covers the possibility of the first and second heights being equal. This understanding is in line with the description of the patent (see paragraph [0019]), according to which the second height may be from approximately one to two times greater than the first height. As argued by the respondent, the expression "1 times greater" means "multiplied by 1" and thus that the first and second heights are equal. By the same token, "2 times greater" means "multiplied by 2" and therefore twice the height.

Because the wording of claim 1 of auxiliary request 5' does not exclude that the first and second heights are identical, the above considerations regarding inventive step of the subject-matter of claim 1 of auxiliary request 4' equally apply to claim 1 of auxiliary request 5'.

7.3 Conclusion on inventive step of the subject-matter of claim 1 of auxiliary request 5'

The subject-matter of claim 1 of auxiliary request 5' does not involve an inventive step over a combination of documents D1 and D7 (Article 56 EPC).

8. Claim 1 of auxiliary requests 6, 7 and 9 - lack of clarity

8.1 The respondent objected to the term "unhandled" as being unclear in the context of claim 1. This term "unhandled" had no general meaning in the art and would be understood as "not processed". However, in the description it was defined as "not embossed". Due to the different meanings, the term was ambiguous and, thus, rendered claim 1 unclear.

8.2 In the decision under appeal, it was concluded that claim 1 of auxiliary request 7 (corresponding to claim 1 of auxiliary request 6) was not clear because the term "unhandled" was vague and unclear (see decision under appeal, Reasons, point 20.1, page 11, first paragraph).

8.3 The appellant objected to the opposition division's conclusion. The definition of the word "unhandled" had a generally accepted meaning and was explained as being synonymous with "not embossed" throughout the description.

8.4 The board concurs with the opposition division's findings and the respondent's arguments. No evidence was filed on a possible generally accepted meaning of the term "unhandled" in the field of tissue paper products. Moreover, the fact that the person skilled in the art would have had to consult the description to figure out what the term "unhandled" in claim 1 could possibly mean, and what limitations it could imply, leads the board to the conclusion that the amendment of claim 1 according to auxiliary request 6 is not per se clear.

8.5 The appellant essentially argued that a patent constituted its own dictionary and that the description consistently presented the term "unhandled" as meaning "not embossed".

In this regard, the board first observes that according to established case law of the boards of appeal, the claims have to be clear in themselves, without there being any need for the person skilled in the art to refer to the description (see Case Law of the Boards of Appeal of the European Patent Office, "Case Law", 9th edition, 2019, II.A.3.1). Also, the Enlarged Board of Appeal has emphasised that the meaning of claim features should be clear for the person skilled in the art from the wording of the claim alone (see G 1/04, OJ EPO 2006, 334, Reasons, point 6.2). While it is correct that, under exceptional circumstances, a patent may be its own dictionary, the use of the description and drawings in the examination relating to the clarity requirement under Article 84 EPC is limited. This is particularly the case if the unclear feature was meant to delimit the claimed subject-matter from the state of the art (see "Case Law", II.A.3.1 and II.A.6.3.5). In accordance with decision T 56/04 (see Reasons, point 2.10), the requirements of Article 84 EPC can exceptionally be considered met if the precise definition of a vague or unclear technical claim feature is unambiguously and directly identifiable by the person skilled in the art from the description but cannot be incorporated into the claim.

8.6 In the current case, the board acknowledges that throughout the description the term "unhandled" is equated with the term "not embossed" (see patent, such as paragraphs [0045], [0050], [0051] and [0056]). However, this definition is only present in the description. The board sees no reason why it could not have been incorporated into claim 1 to clearly define the matter for which protection is sought. Under these circumstances, the lack of clarity of the wording of claim 1 cannot be rectified by the description potentially helping the person skilled in the art to understand the technical subject-matter that the claim was intended to define.

8.7 Conclusion on clarity of claim 1 of auxiliary requests 6, 7 and 9

Consequently, claim 1 of auxiliary request 6 does not fulfil the requirements of Article 84 EPC. This conclusion also applies to claim 1 of auxiliary requests 7 and 9, which also contains the unclear term "unhandled".

9. Auxiliary request 6', 7' and 9' - lack of clarity

9.1 Claim 1 of auxiliary requests 6', 7' and 9' has been amended by adding a feature in brackets " (i.e. unembossed)" after the term "unhandled". It is generally accepted that expressions put in brackets in a claim are not suitable for clearly defining the matter for which protection is sought and for limiting the scope of the claim. Thus, for claim 1 of auxiliary requests 6', 7' and 9', the same objections apply as for claim 1 of auxiliary requests 6, 7 and 9, respectively.

9.2 Conclusion on clarity of auxiliary requests 6', 7' and 9'

Claim 1 of auxiliary requests 6', 7' and 9' does not fulfil the requirements of Article 84 EPC.

10. Claim 1 of auxiliary request 8 - lack of inventive step over document D7 alone

10.1 It was not contested by the parties that document D7 formed a suitable starting point for assessing inventive step. The example tissue with five plies disclosed in the table on page 4 consists of two outer TAD plies and three inner CWP plies. Thus, the subject-matter of claim 1 of auxiliary request 8 differs from this example in that the structured ply is positioned and orientated with respect to the three wet pressed plies such that the structured back face of the structured ply is facing the three wet pressed plies to dampen a two-sidedness effect related to the structured back face. In fact, the only structural difference of the subject-matter of claim 1 from this example is that document D7 is silent about the orientation of the structured ply. Consequently, the subject-matter of claim 1 of auxiliary request 8 is not inventive over document D7 alone for the same reasons as explained above for the subject-matter of claim 1 of auxiliary request 1 (see points2.2.1 to 2.2.4 above).

10.2 The subject-matter of claim 1 of auxiliary request 8 is directed to a hybrid multi-ply tissue having at least four plies. The hybrid multi-ply tissue with five plies of the example of document D7 (see table on page 4 of document D7) is covered by claim 1 because the claim does not exclude the presence of a second outer TAD ply as in this example. Moreover, document D7 is not mainly directed to CWP, as argued by the appellant, since hybrid multi-layer tissues are explicitly mentioned in paragraphs [0133] and [0134]. In view of the fact that document D7 discloses specific examples of such tissues in the table on page 4 of document D7, the board cannot share the appellant's view that there is no specific teaching in document D7.

10.3 Conclusion on inventive step of the subject-matter of claim 1 of auxiliary request 8

The subject-matter of claim 1 of auxiliary request 8 is not inventive (Article 56 EPC).

11. Overall conclusion

The appellant failed to convince the board that claim 1 as granted is new and that the claims as amended according to auxiliary requests 1, 2, 3, 3', 4, 4', 5, 5', 6, 6', 7, 7', 8, 9 and 9' meet the requirements of the EPC. The appeal must therefore be dismissed.