T 0575/05 24-04-2007

1. Main request

Article 100(b) EPC

Claim 1 defines a thickness range of "0.3 mm to 5 mm", without any test method being stated regarding the way in which the thickness parameter is measured. The lack of a disclosed method in the patent itself is undisputed.

Materials which may be used to form the absorbent sheet in claim 1, as specified for example in paragraph [0025] of the patent, include compressible materials. Fluff pulp sheets or certain other fibrous sheets, particularly those including high loft material, are well known to be highly compressible. The pressure used in any test method for measuring thickness of easily compressible products is thus of the utmost importance, because the thickness varies inversely with the pressure applied. Confirmation of this well known fact can for example be found in D11, item 5.3, which notes that "the thickness values of most nonwoven fabrics will vary considerably depending on the pressure applied to the specimen" and that "it is essential that the pressure be specified when discussing or listing any thickness value".

Furthermore, the invention as defined in claim 1 has a lower end point of thickness of 0.3 mm. Thus the lower limit of the thickness range concerns a very small thickness dimension, the measurement of which requires substantial measurement accuracy. If the pressure used in the measurement method is unknown, the skilled person is unable to determine whether an article is within the scope of claim 1 or not(see also e.g. T 387/01, item 2.2.1; T 611/02, item 3). Particularly at the lower end of the claimed range, this determination would be particularly problematic. Thus, while the Board acknowledges that some degree of measurement value variation will occur in all measurement methods and is to be included within the measurement value, the complete lack of information as to what load is to be applied when measuring a compressible sheet leads to a degree of uncertainty which is entirely unacceptable for a skilled person trying to establish which sheets might fall within the claims.

The respondent has argued that the disclosure of a specific method is not needed, and has referred to the Guidelines for Examination C-III, 4.10a(ii). This section states that, "(t)he method of and means for measurement of the parameter values need not however be in the claims when: (ii) a person skilled in the art would know which method to employ, e.g. because there is only one method, or because a particular method is commonly used;". However, it should be noted first that the Guidelines in this section relate to what is required in the claims, and not to what is required in the specification as a whole to meet the requirements of Article 83 EPC. Even if it were accepted arguendo that the same requirements would apply equally to the description, the skilled person is still unable to know, due to the lack of guidance from the description, which method he should employ amongst the many commonly used methods available. D9 and D11, relating to standardised test procedures, are merely two examples of several recognised standard methods. Even between these two methods, a considerably different pressure is used, D9 using an undefined pressure of some value below 1kPa and D11 using approximately 4.14 kPa. Still further methods exist in this technical field, such as those using optical measurement in an uncompressed state or methods involving applying a pressure corresponding to that expected during use of the product (such as adult or infant users of absorbent articles).

The respondent asserts that the ISO standard as stated in D9 would be used because the present case concerns a European patent and the ISO standard is a European standard. The Board however does not concur with the respondent. Firstly, the mere fact that a European patent is involved does not mean that a European standard was ever intended to be read into the disclosure, in particular because the industry, also the absorbent article industry in Europe, recognises a variety of different methods for such testing. Albeit of secondary importance, the fact that the applicant was a Japanese company and that it filed the application as a PCT application covering not only the designation "EP" but also "US", does not support the respondent's conclusion regarding the implicit disclosure of a European standard. Additionally, even if the ISO standard according to D9 were to be applied, this ISO standard itself states in item 3.1 that the thickness is to be measured with a pressure of 1kPa or less ("ein Druck von 1 kPa oder weniger"). This latter statement in D9 leaves the skilled person with a choice to make as to which pressure is to be used. Without guidance in the patent, the skilled person is unable to make such a determination.

In section 8.1 of D9, a recommended pressure of 1±0.01 kPa is mentioned, but this is not a definitive value for the test method, as the standard states that any value below 1 kPa can be used and the test report ("Prüfbericht") in item 10d) specifically requires the applied pressure to be stated. Thus, the Board's findings in this matter remain unchanged by the respondent's arguments. The Board also cannot agree with the respondent's further argument that no appreciable difference would result when applying pressures anywhere up to 1 kPa, since this is contrary to the common general knowledge that highly compressible materials in this technical field are compressed to a very high degree even at low pressures.

Additionally, it may be added that the materials to which the test of D9 applies are textiles and textile products, yet examples of the materials intended to be covered in the patent (see e.g. paragraph [0025]) include inter alia "absorbent paper" and "a sheet obtained by interposing superabsorbent polymer between paper or nonwoven fabric in an overlaid configuration", not falling within such a category. The ISO standard test of D9 was thus not intended for such materials.

Summarising, a skilled person cannot know, from the disclosure in the patent, which measurement method should be employed to establish the claimed thickness parameter, nor which measurement conditions might be used for any chosen method.

The burden on the skilled person in trying to carry out the invention as claimed based on the content of the patent as granted is therefore undue, since the skilled person is unable, with any reasonable degree of certainty, to know when an article would lie within the scope of the claim, since without the disclosure of a test method for its measurement, the defined parameter has no sufficiently defined technical meaning within the technical field concerned.

The respondent's further argument that Article 100(b) EPC was not at issue here, but instead that the appellant's arguments related merely to whether third party products could be shown to fall within the claim or not, does not convince the Board. Whilst it may be correct that the burden of proof is on a proprietor in certain circumstances to show that a product falls within the claims in an infringement proceedings and thus fulfils the thickness parameter feature of claim 1, this does not release the proprietor from its burden of providing sufficient disclosure in the patent itself to allow the skilled person to carry out the invention at least with reasonable certainty.

Lastly, the respondent's argument that the patent at column 6, lines 17 to 29 (paragraph [0022]) gives additional information for arriving at a material sheet within the claims by means of the intended function and which does not rely on parameters, does not assist the respondent's case further. This portion of the description merely explains that if the thickness is less than 0.3 mm, it is difficult to provide improved fitting and increased absorption capacity, and if it is greater than 5 mm the rigidity of the sheet would be increased such that the fitting is spoiled. This consequently does not add anything but entirely subjective and vague requirements for the sheet, which would be fulfilled both by more of less highly compressed sheets. There is also no indication of the way in which these subjective criteria could guide the skilled person in deciding which particular thickness test should be applied in order that the products would or would not correspond to the thickness parameter requirements in claim 1.

The main request is thus not allowable with respect to Article 100(b) EPC.

2. First auxiliary request

This request was filed during the oral proceedings. The request is thus late-filed, in particular because the objection which the amendment serves to overcome was already made in the appellant's appeal grounds and was also mentioned in the Board of Appeal's annex to the summons. Thus, when deciding on whether or not to admit the request into proceedings, the Board must first decide whether such a late-filed request, in accordance with established case law of the Boards of Appeal, would appear to be immediately allowable. If such is not the case, the request should not be admitted.

In the present case, the requirements of Article 123(2) EPC are not met by the subject matter of claim 1 of this request.

The terminology concerning the test method which is introduced into claim 1 by way of this request, limits the thickness parameter to that measured by a specific method. The terminology thus appears to provide the thickness parameter with sufficient technical meaning for a skilled person to carry out the invention as claimed. The introduced terminology however has no explicit basis in the application as filed; neither the method nor the stated pressure are explicitly disclosed. The respondent has not disputed the lack of an explicit disclosure but instead argued that the method to be used is, necessarily and implicitly, the European standard (as in D9) due to the fact that a "European" patent is under consideration. In the respondent's view, a disclosure of the introduced terminology is consequently to be understood as being implicitly within the content of the filed application. As already explained above in item 1 however, the mere fact that a European patent is being dealt with does not automatically provide a presumption that a European standardised measurement method should apply. Indeed, the Board concludes that a skilled person has no means of identifying, from the disclosure within the content of the filed application, which measurement method of those known is to be applied, nor which pressure should be used in any such method, as no method and no method conditions at all are disclosed and several different methods using different pressures (e.g. the methods of D10 and D11) are available. Thus, there is no unambiguous explicit or implicit basis in the application as filed for introduction of the specific method according to EN ISO 5084 of 1996.

Additionally, as also mentioned in item 1 above, the pressure to be used in the EN ISO 5084 test (D9) is stated as being 1kPa or less ("1kPa oder weniger"), thus allowing a range of pressures below 1kPa from which to select. The selection of the pressure 1±0.01 kPa thus relates to a selection from the quoted method, for which selection there is also no unambiguous basis. The fact that a pressure of 1±0.01 kPa is mentioned as being recommended does not mean that this pressure must be used, nor that it would even be implicitly suitable for all material sheets (covered by claim 1) which are to be measured.

The respondent further argues that the requirements of Article 123(2) EPC are met because the amendment introduced is merely limiting for the scope of claim 1, but in itself provides no technical contribution to the claim and thus should be allowed in accordance with the findings as stated in G1/93 (see e.g. headnote, item 2).

Firstly, regarding the lack of technical contribution provided by the amendment, the Board is not convinced by the respondent's argument. The introduced terminology is the only terminology which gives sufficient technical meaning to the thickness parameter for a skilled person to carry out the invention as claimed. Thus it makes a technical contribution to the claimed subject matter. For this reason alone, G1/93 would not be applicable to the present case.

Secondly, nothing in decision G1/93 indicates that its findings should relate generally to cases where an introduced feature lacks a technical contribution and merely limits claim scope. Instead, G1/93 is specifically related to cases where a granted claim contains a feature which was not within the content of the filed application. This does not correspond to the facts of the present case which is instead concerned with amendments being made to a granted patent by the introduction of a feature that was not disclosed in the filed application.

Thus, the findings made in G1/93 cannot change the Board's conclusions on the matter of Article 123(2) EPC.

Since the subject matter of proposed claim 1 would therefore fail to meet at least the requirements of Article 123(2) EPC, the request is not admitted into proceedings for the reasons that it is late-filed and is not immediately allowable.

3. Second auxiliary request

The Board concludes that the conditions in Article 112(1) EPC for referring the question, posed in the respondent's second auxiliary request, to the Enlarged Board of Appeal, are not met for the following reasons:

One of two conditions must exist to justify the referral of a question to the Enlarged Board, these being stated in the opening paragraph of Article 112(1) EPC, namely "in order to ensure a uniform application of the law" or "if an important point of law arises".

As regards the first of these conditions, the respondent's formulated question itself does not need to be answered to ensure uniform application of the law. No contradictory decisions or the like have been cited which would support such an argument, nor can the Board see that any exist.

As regards the second of these conditions, no important point of law arises. Even if the respondent's proposed question were to be answered in the positive, this would not assist the respondent's case as regards e.g. the first auxiliary request, because the Board has already concluded that a technical contribution is indeed provided by the introduced terminology. Further, the Board in any event sees no reason which could lead to an interpretation that the Enlarged Board of Appeal's findings in G1/93 should apply to cases in opposition appeal proceedings where the proprietor is seeking to introduce wording for which there is no basis within the content of the application as filed. Merely because the Enlarged Board of Appeal decision did not exclude this possibility is irrelevant; the Enlarged Board dealt with an entirely different situation. In the matter dealt with in G1/93, the Enlarged Board of Appeal was faced with a different set of legal circumstances, namely a situation where a feature which had not been within the content of the application as filed had already been introduced into a claim before grant and could not, after grant, simply be removed, due to the requirements of Article 123(3) EPC. The respondent's interpretation of G1/93 that it should in some way extend to cases such as the present one is thus without basis.

The request for referral of a question to the Enlarged Board is thus rejected.

4. Third to fifth auxiliary requests:

In response to the objection under Article 100(b) EPC, the respondent relied on the same arguments as presented with regard to the main request. The conclusions reached in respect of the main request thus apply equally to the claims of the third, fourth and fifth auxiliary requests, since the thickness parameter "0.3 mm to 5 mm" is still present in all these requests.

It may be added that although further amendments to claim 1 have been introduced by way of the third and fourth auxiliary requests, those amendments do not serve to further define or limit the thickness parameter as defined in granted claim 1 and thus cannot affect the finding on Article 100(b) EPC.

The third to fifth auxiliary requests are therefore not allowable with respect to Article 100(b) EPC.