T 0047/98 03-05-2001

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the main and second auxiliary requests

2.1. It is a matter of general principle that a patentee ought to file amendments at the earliest opportunity and that the Board, exercising its discretionary power, may disregard late filed requests for amendment. The criteria for exercising the discretionary power have been the subject of several decisions of the Boards of appeal (reference is made, for instance, to decisions T 153/85, OJ 1988, 1, reasons 2.1; T 406/86, OJ 1989, 302; T 833/90, unpublished, point 2 of the reasons). In accordance therewith, amended claims filed during oral proceedings may be disregarded in order to avoid unacceptable delays in the appeal proceedings, that would affect the rights of third parties. However, they may be taken into consideration when they are bona fide attempts to overcome objections raised and their examination does not present difficulties that would slow down the proceedings.

2.2. The main request was filed during the oral proceedings but in response to discussions held during the oral proceedings concerning the lateral tensioning of the absorbent member and in a bona fide attempt to restrict the subject-matter of the claims to exclude embodiments not leading to such a technical effect. Moreover, the amendments do not substantially modify the subject-matter claimed and could have been expected in view of the objections raised. For these reasons the Board considers the late filing of the main request acceptable.

2.3. The claims of the second auxiliary request were filed at a very late stage during the oral proceedings without any particular justifications. In the Board's view, the argument submitted by Respondent II, that it was obvious to provide a further elastic member exerting a lower tensioning force when it did not have a sealing function (gasket), appears to seriously put into question the inventiveness of the subject-matter of claim 1. Consequently, although claim 1 results from the combination of claims already present in the patent as granted, allowing the second auxiliary request would entail examining the claims in the light of Article 56 EPC, which would delay the proceedings further. In application of the above mentioned criteria, the Board exercises its discretionary power and does not allow the introduction of the second auxiliary request into the appeal proceedings.

3. Request for referral of two questions to the Enlarged Board of Appeal

3.1. Since the Board, in principle, accepted introduction of the amended claims in accordance with the main request, respondent I's request for referral of two questions to the Enlarged Board of Appeal has to be considered.

3.2. In accordance with Article 112(1)(a) EPC a case shall be referred to the Enlarged Board of Appeal if the Board of Appeal considers that a decision is required in order to ensure uniform application of the law or if an important point of law arises.

According to the case law of the Boards of Appeal, introduction into the proceedings of late filed claims is sometimes accepted and sometimes not. This does not mean that there is no uniform application of the law, as submitted by respondent I, since the different conclusions on the admissibility of late-filed claims are reached by the Boards of Appeal while exercising due discretion having regard to the specific circumstances of each individual case and in application of specific criteria developed by the Boards of Appeal (see point 2.1 above). Moreover, those criteria are now established in the case law so that no important point of law arises.

3.3. In view of these considerations the Board comes to the conclusion that none of the prerequisites for referral of a question to the Enlarged Board of Appeal according to Article 112 (1) EPC is met. Consequently, the request for referral to the Enlarged Board of appeal is refused.

4. Amendments

4.1. The subject-matter of claim 1 of the main request has been limited to the embodiments in which the further elastic member is located over at least both side portions of the waist portion whilst claim 1 as granted left open where the further elastic member was located in the surrounding direction of the waist portion; and the subject-matter of claim 1 of the first auxiliary request has been limited to the combination of features of granted claims 1, 2 and 4.

4.2. The combination of features defined in claim 1 of the main and first auxiliary request can be directly derived from claims 1, 3 and claims 1 to 4, respectively, and from Figures 3 to 6 of the originally filed application.

4.3. Therefore, no objection arises under the requirements of Article 123(2) or (3) EPC.

5. Novelty

5.1. Document D11, which alone has been brought forward for attacking novelty, discloses a disposable diaper according to the preamble of claim 1, namely a disposable diaper of a shorts type having a liquid permeable top sheet (21), a liquid impermeable backsheet (22), and an absorbent member (23) interposed therebetween, said top sheet (21), said back sheet (22) and said absorbent member (23) forming an integrated body unit, said body unit being divided into a stomach portion (24) which, when in wear, is located on a wearer's stomach side and a back portion (25) which, when in wear, is located on his back side, said stomach portion (24) and said back portion (25) being connected and fixed together at both side edge portions, respectively, of said stomach and back portions to form a pair of leg opening portions (13), a unitary waist opening portion (12), and a waist portion located between said waist opening portion (12) and said leg opening portions (13), said waist opening portion (12) and a pair of leg opening portions (13) being provided around entire peripheral edges thereof with elastic members (30, 70) forming substantially continuous gathers.

5.2. The subject-matter of claim 1 of the main request is distinguished from the diaper known from D11 by the features defined in the characterizing portion, namely by a further elastic member attached to said integrated body unit between said waist opening elastic members and said leg opening elastic members located over at least both side portions of the waist portion for forming gathers in the surrounding direction of said waist portion.

5.3. Respondent I argued that, since in D11 a plurality of spaced elastic members were provided in the surrounding direction of the waist opening, some of these elastic members were to be regarded as elasticizing the waist opening and others as providing the same function of the further elastic member of claim 1.

Although document D11 shows a plurality of spaced elastic members in the surrounding direction of the waist opening (see e.g. page 10, lines 1 to 3), this document only discloses that the elastic members have the function of elasticizing the waist opening.

The Board therefore comes to the conclusion that the interpretation given to D11 by respondent I is artificial, and that the plurality of spaced elastic members according to D11 can only be construed as constituting waist opening elastic members.

5.4. Since also the other documents cited do not disclose the combination of features of claim 1 of the main request, its subject-matter is novel.

5.5. The subject-matter of claim 1 of the first auxiliary request, additionally requiring a plurality of such further elastic members, is also novel.

6. Inventive step - main request

6.1. Starting from the closest prior art disclosed by document D11, it is an objective of the patent in suit to provide a disposable diaper capable of surely preventing the leakage of waste material, reducing the costs, and allowing the diaper to be smoothly put on or taken off (see page 2, lines 4 and 46, 47 of the granted patent).

6.2. This objective is achieved by the features of the characterising portion of claim 1.

The Board is satisfied that leakage prevention is indeed achieved because the further elastic member provides a closer fit of the diaper, since it acts on the waist portion so that no gap is formed between the diaper and its wearer (see page 3, lines 6 to 9 of the granted patent).

The definition of claim 1 covers both the embodiment of Figures 1, 2 and that of Figures 3, 4. In the first embodiment (Figures 1 and 2), the further elastic members 16a, 16b are arranged to continuously surround the waist portion, whilst in the second embodiment (Figures 1 and 2) they are arranged only over both side portions.

If the further elastic members are arranged to surround the waist portion as in the first embodiment, then, in use, they press the diaper against the body of the wearer, since they are in a stretched state (see page 5, lines 49 to 55 of the granted patent). That is, the further elastic members act in the same manner as the waist and leg opening elastic members. Under these circumstances, the further elastic members in the first embodiment will apply lateral compressive stresses to the absorbent member. Thus, the Board cannot follow the appellant's argument that the further elastic members provide a lateral tensioning of the absorbent member in the first embodiment, although such lateral tensioning is indeed achieved in the second embodiment. However, in the first embodiment the further elastic members still provide a closer fit of the diaper over the waist portion, by pressing it against the body and thus reducing the gap therebetween.

6.3. Document E1 discloses the use of a support band in the front and rear panel of a flat type disposable diaper (see column 8, lines 45 to 47; column 10, lines 27 to 29. and 43 to 48) for holding the diaper in position better with less front panel drop, i.e. for obtaining a closer fit of the diaper.

Although E1 does not explicitly disclose that the purpose of the support band is to improve leakage prevention, as pointed out by the appellant, the skilled person is aware that a diaper closely fitting the body will have a better performance, in terms of leakage prevention, than one which does not fit well to the body of the wearer.

Furthermore, the skilled person would recognize that the support band provides the same effect if used on a diaper of a shorts type. Also there, the support band presses the diaper, and hence the absorbent member, against the body of the wearer for better fit.

Therefore, the Board comes to the conclusion that document E1 teaches the person skilled in the art to improve the fit and thus also the closely related leakage prevention of a disposable diaper by providing such support bands.

6.4. When applying this teaching of E1 to the shorts type diaper of D11, the skilled person would directly attach the support bands (constituting further elastic members) to the integrated body unit between the waist opening elastic members and the leg opening elastic members in both the front and rear waist portions of the diaper. By doing so the support bands would inevitably be located over at least both side portions of the waist portion in the surrounding direction of said waist portion, because the length of the support bands is such that they will at least partially extend over the side portions, as shown in Figure 4 of E1 for the support band of the front panel.

Therefore, applying the teaching of E1 to the diaper of D11 inevitably leads to the subject-matter of claim 1.

6.5. The appellant argued that claim 1 was to be interpreted as defining a diaper in which either the further elastic member surrounded completely the waist portion as in the embodiment of Figures 1 and 2, or it was extending over the side portions only as in the embodiment of Figures 3 and 4.

In the present case claim 1 is not clearly limited only to the embodiments of Figures 1 to 4 of the granted patent, but includes also an embodiment where the further elastic means extend over the side portions only partially, i.e. with a gap between a further elastic member located on the front waist portion and a further elastic member located on the rear waist portion, which embodiment is the direct result of the combination of D11 and E1 outlined above.

Anyway, the embodiment of Figures 1 and 2 of the granted patent is also obvious in view of this combination. Indeed, the use of one continuous elastic band surrounding the waist portion would be immediately apparent to the skilled person putting into practice the teaching of E1, in particular because the diaper of D11 already has continuous elastic bands (70) surrounding the waist opening (see D11, Figures 1 and 7).

6.6. In these circumstances, the appellant's main request is not allowable as the subject-matter of claim 1 lacks inventive step pursuant to Article 56 EPC.

7. Inventive step - first auxiliary request

7.1. The subject-matter of claim 1 is distinguished from the disposable diaper of the closest prior art D11 by the features defined in the characterizing portion.

7.2. As explained in connection with claim 1 of the main request (see points 5.3 to 5.5 above), the skilled person would regard it as obvious, in order to solve the problem of improving leakage prevention, to include the following features in the diaper of D11:

a further elastic member attached to said integrated body unit between said waist opening elastic members and said leg opening elastic members for continuously forming a gather in the surrounding direction of said waist portion.

7.3. In order to assess whether the subject-matter of claim 1 involves an inventive step, it remains thus to consider whether the skilled person would have been led by the prior art to provide a plurality of such further elastic members, arranged in juxtaposed relation at spaces.

Document D11 discloses that the waist opening can be elasticized with either a single elastic member (flat tape-like elastic member) or with a plurality of spaced elastic members (page 9, lines 6 to 8 and page 10, lines 1 to 5). When applying the teaching of E1 to the diaper of D11, following the obvious route described above (see points 6.3 to 6.5 above), the skilled person is therefore directly led by the teaching of D11 to consider the possibility of using a plurality of further spaced elastic members rather than one single further elastic member.

7.4. Therefore, also the appellant's first auxiliary request is not allowable as the subject-matter of claim 1 lacks inventive step pursuant to Article 56 EPC.