T 0340/04 () of 22.9.2005

Summary of Facts and Submissions

I. European patent No. 0 831 760 granted on application No. 96 917 070.3 was maintained in amended form by decision of the opposition division posted on 27 January 2004.

The opposition division was of the opinion that the subject-matter of the independent claims 1 and 14 in accordance with the patent proprietor's main request complied with the requirements of the EPC. In particular, the subject-matter of claims 1 and 14 was disclosed in a manner sufficiently clear and complete to enable it to be carried out by a skilled person (Article 83 EPC), it was novel (Article 54 EPC) and involved an inventive step (Article 56 EPC) when compared to the prior art disclosed in documents

E1 JP-A-3 139 329 (with English translation)

E2 US-A-3 860 003

E3 US-A-4 897 084

E4 US-A-4 050 462

E5 JP-A-08 024 291

E6 WO-A-95/06451

E7 WO-A-96/23477

E8 EP-A-0 487 921

E9 FR-A-2 177 425.

II. The appellant (opponent) filed a notice of appeal against this decision and paid the appeal fee, both on 5 March 2004. On 26 May 2004 the statement of grounds of appeal was filed, accompanied by document

E10 EP-A-0 183 662.

The objections in respect of novelty and inventive step under Article 100(a) EPC and in respect of sufficiency under Article 100(b) EPC and Article 83 EPC were maintained and an objection under Article 123(2) EPC was raised in respect to the amended claims.

III. Oral proceedings were held on 22 September 2005.

The appellant requested that the decision under appeal be set aside and that the European patent be revoked.

The respondent (patentee) requested that the patent be maintained with claims 1 and 14 as filed with letter of 22 August 2005.

Claim 1 of this request reads:

"A garment blank subassembly (10) having a front body portion (16), a back body portion (20), and a crotch portion (24) intermediate of and extending from the front body portion (16) to the back body portion (20) and between a pair of leg openings (44, 46) in a disposable garment to be assembled from the garment blank subassembly, the front body portion (16) having first and second front leg edge portions along the leg openings (44, 46), a front end (22) opposite the first and second front leg edge portions and first and second front sides, the back body portion (20) having first and second back leg edge portions along the leg openings (44, 46), a back end opposite the first and second back leg edge portions and first and second back sides, the crotch portion (24) having first and second crotch edge portions on opposing sides thereof along the leg openings, the garment blank subassembly (10) having a length extending between the front and back ends, width extending between the first and second sides and a longitudinal centerline (AA) between the first and second front and back sides, a center zone (33) extending from the front end (22) to the back end (18) of the subassembly (10) and delineated by a first line (27) parallel to the longitudinal centerline (AA) of the subassembly (10) extending through a point on the first crotch edge (52) closest to the longitudinal centerline (AA) and a second line (29) parallel to the longitudinal centerline (AA) of the subassembly (10) extending through a point on the second crotch edge (52) closest to the longitudinal centerline (AA), a crotch zone (31) within the center zone (33) configured as a square extending from the first parallel line (27) to the second parallel line (29) and having a centerpoint located such that a majority of the crotch zone (31) falls in the front half of the subassembly (10),

the garment blank subassembly comprising:

(a) a first elastic (48) attached to the back body portion (20) and extending from a first locus adjacent the first back side, as a first section of the first elastic, along the width of the garment blank subassembly (10) generally following the first back leg edge portion toward the center zone (33), as a second section of the first elastic (48) across the center zone (33), and as a third section of the first elastic (48) generally following the second back leg edge portion, to a second locus adjacent the second back side, the second section of the first elastic (48) having the same tension as the first and third sections of the first elastic (48), when the subassembly is laid out flat,

(b) the contractive force vector perpendicular to the longitudinal centerline (AA) of the second section of the first elastic (48) being greater than the contractive force vector parallel to the longitudinal centerline (AA) of the second section of the first elastic (48), when the subassembly is laid out flat;

the subassembly (10) comprising additionally a third elastic (51) along the first crotch edge (52) portion and a fourth elastic (51) along the second crotch edge (52) portion."

Independent claim 14 refers to a garment black subassembly with the same characteristics as set out in claim 1 with the exception of the first elastic being attached to the front portion instead of being attached to the back body portion.

IV. In support of its request the appellant essentially relied upon the following submissions:

According to the wording of claim 1 each of the features

"the second section of the first elastic (48) having the same tension as the first and third sections of the first elastic (48)" and

"the contractive force vector perpendicular to the longitudinal centerline (AA) of the second section of the first elastic (48) being greater than the contractive force vector parallel to the longitudinal centerline (AA) of the second section of the first elastic (48)"

were subject to the condition "when the subassembly is laid out flat". It was not explained in the patent in suit or otherwise apparent to the skilled person exactly what condition was meant by the expression "laid out flat" and how the respective tensions and force vectors should be determined when this condition applied. In so far the patent did not fulfil the requirements of Article 83 EPC.

With respect to the wording "the same tension" there was no basis for this in the application as originally filed (Article 123(2) EPC). The citations on page 3, lines 15 to 17, and page 5, lines 13 to 16, of the application as originally filed referred to a general disclosure but not to the specific meaning as now read into this passage.

E1 disclosed all the features of claim 1. In particular, the provision of an even tension in the elastics corresponded to a result achieved by the common manufacturing practice and therefore was implicitly present in the garment of E1. Furthermore, when considering in particular figures 1 and 2, E1 disclosed a shallow curve of the elastics in the region which was the "second section" defined in claim 1 and which would inevitably lead to the claimed characteristic concerning the contractive force vector in part (b) of claim 1. The fact that it was common manufacturing practice to apply elastics under constant tension to the blank assembly was documented by E9. E9 disclosed a manufacturing method for garment blanks with the application of elastics under constant tension which would be appropriate for the manufacturing of an article disclosed in E1.

Even if it was novel, the garment blank subassembly as claimed according to claim 1 did not involve an inventive step. E9 could be considered as the closest prior art.

Starting from the garment blank as manufactured according to the disclosure of E9, all features of claim 1 of the patent in suit were known with the exception of the feature whereby the elastic sections were fixed to the laid out flat blank with constant tension over their length. E9 disclosed additionally that the extension of the elastic members just before their application to the non-elastic support should be chosen according to predetermined values (page 2, line 15). There was no suggestion as to how these values should be predetermined but the skilled person would recognize that due to the different curvature of the elastics on the roller, and the related constant velocity of the feed rollers of the elastics during feed by the rollers, variations in the tension of the elastics would be obtained.

The resulting objective problem to be solved could only be regarded as the optimization of the fit at the leg edge. The skilled person would easily recognize that the fit of the article of E9 needed to be improved and that the bad fit came from an uneven tension in the elastic members.

The skilled person would take into account the disclosure of E1. In E1 there was no mentioning of any difference in tension of the first elastics. Therefore, the application of an even tension in all sections provided the only alternative possible to the uneven tension disclosed in E9.

Starting from the disclosure of E9, the skilled person could alternatively take into account E8. E8 referred to disposable diapers with elasticized leg portions. In E8 the tension of the elastics was not mentioned and the conclusion could only be that the same tension should be applied for all elastic sections. Thus, no inventive activity was present.

The description in column 8, lines 49 to 52, should be either clarified or deleted in view of the amended claim. The wording concerning the leg elastics 48 and 50 being "applied in multiple segments, with the amount of elongation of each segment while being incorporated into the subassembly 10 being determined according to the position to be occupied by the respective segment" could mean that embodiments outside of the scope of claim 1 were covered.

V. In support of its request the respondent essentially relied upon the following submissions:

The skilled person knew how to "lay out flat" a garment blank and this should be considered equivalent to laying out the garment blank without gathers. The skilled person also knew that the simplest method to determine the different tensions would be with a ruler, measuring the garment blank with and without gathers and thus seeing whether the different sections of the garment blank all have the same tension. Paragraph 0008 of the patent in suit allowed any appropriate method to be applied for the determination of the contractive force vector average. According to claim 1 the contractive force vector had to be determined only for the second section of the first elastic and the skilled person could see via the angle in a plan view of the garment blank whether this feature was present or not.

With respect to the objections under Article 123(2) EPC, the application as originally filed, particularly page 5, line 14, referred to two possibilities. One of them referred to the tension of the elastics in the different sections being "equal to" each other. The other possibility, which referred to the tension in the second section being greater than in the first and third section, was deleted. Hence, the meaning of "the same tension" was clear and unambiguous, and was based on one of two possibilities given in the original application.

E1 did not disclose any teaching about the tensions in the different sections of the elastics and disclosed in figure 4 two semicircles of elastic which did not meet the characteristic concerning the contractive force vectors as required according to claim 1 of the patent in suit. Only figure 4 represented a "laid out flat" condition. The other figures represented only diagrammatic sketches and could not be used to interpret whether the characteristics relating to the contractive force vectors were met.

With respect to inventive step, the starting point for the evaluation of inventive step should be E1.

The general object of the patent in suit was to improve the fit characteristics of such articles. This general object applied to all such articles. Considered more specifically, the problem was related to garment blank subassemblies and particularly the layout, design and construction of the crotch portion with respect to the elastics.

In E1, this specific problem was not recognized. The only teaching regarding the elastic members in the relevant area was to be found in the wording of claim 1 and on page 5 of the description of E1. Both passages were not specific enough to give the skilled reader a real teaching in the direction as claimed in the patent in suit. Even a teaching in a direction away from the subject-matter as claimed was conceivable.

E9 was silent with regard to tensions but the garment blank produced as shown in figure 2 could only be interpreted as disclosing different tensions of the elastics, since according to the description of figure 1 the elastic threads had to be applied under constant velocity. Thus, in E9 the tension in the side regions of the elastics would necessarily be higher than in the centre region. Combining the teaching of E9 with E1 or vice versa always would result in an article having elastics with sections having different tensions.

E8 did not refer to transverse elastic members and therefore was not relevant for considerations in relation to the tension of such elastic members.

The combination of the teaching of documents E9 with E1, or E9 with E8, did not give any indication to the skilled person which would lead to the claimed subject-matter. This could only be seen with hindsight.

The description in column 8, lines 49 to 52, was not in contradiction with what was claimed in claims 1 and 14. Even accepting that this wording on its own could have a broader meaning, the wording of claim 1 defined the scope of the invention and this passage had to be interpreted accordingly.

Reasons for the Decision

1. The appeal is admissible.

2. Article 123(2) EPC

The amendment in claim 1 concerning "the second section of the first elastic having the same tension as the first and third sections of the first elastic" lacks a literal basis in the original application. The original application states on page 3, lines 15 to 17:

- "Preferably, the first and third sections of elastics are stretched..., and the second section of elastic is tensioned to a degree generally equivalent to, or greater than, the elastic in the first and third sections"

and on page 5, lines 13 to 16:

- "A second section of the elastic extends across the crotch with a tension equal to or greater than the elastic tension in the first and third sections,.."

The meaning of "equivalent to" or "equal to" is identical to the meaning of "the same tension". Therefore, the amendment is one in which one alternative as originally filed is maintained, while the other alternative is deleted. Consequently, there are no objections under Article 123(2) EPC to this amendment.

3. Sufficiency of disclosure

3.1 In claim 1 the condition "when the subassembly is laid out flat" is linked both to the tension defined in point (a) and to the contractive force vector defined in point (b) of the characterising portion of claim 1. The appellant submitted that the patent failed to give any indication as to how the tensions and contractive forces are to be measured and furthermore no clear indication was given of the precise condition of the elastics at the time of measurement. In this respect "laying out flat" was too indeterminate.

3.2 It is true that, neither an explanation of the expression "when the subassembly is laid out flat" nor a determination method for the tension is expressis verbis available in the patent in suit. Therefore, it has to be asked whether the skilled person nevertheless would derive sufficient information from the patent specification to be able to apply its teaching.

Considering the condition "when laid out flat", the Board draws attention to the fact that the skilled person is aware of the manufacturing methods of garment blanks, which are usually assembled on a conveyor belt or a drum starting with a backsheet or a topsheet in a "laid out flat" condition, which method is shown in numerous corresponding patent specifications. The condition "when the subassembly is laid out flat" also implies that the elastics are applied to the assembly in a pre-stretched state. In such a manufacturing process the backsheet or the topsheet is laid out flat without gathers in order to allow the application of further layers (absorbents, superabsorbents, surge layers) and of the stretched elastic members. This "laid out flat" configuration without gathers is represented by the plan view usually shown in figures of the prior art as depicted in figure 4 of E1, figure 6 in E2, figure 1 in E4, figures 3 to 5 in E5, figure 1 in E6, figures 1 and 2 in E7, figures 1 and 3 in E8 and figure 1 in E10. Hence, the Board is of the opinion that the skilled person had no difficulty with the interpretation of the "laid out flat" condition in the context of the patent in suit.

Furthermore, regarding the appellant's second objection, namely that it would not be clear how to determine the tensions and the contractive force vectors in the first elastics, the Board agrees with the respondent's argument that in order to evaluate in the finished article whether the different sections of the garment blank have the same tension, the length of each of the three sections without gathers (i.e. with stretched elastics - "laid out flat") can be determined with a ruler or tape measure and comparing this result with the length of each of the three sections with gathers (relaxed elastics) measured in the same way. The first elastic is used throughout the three sections and its elongation should be the same in all three sections. No direct measurement of the tension is therefore necessary.

The same is true as regards the evaluation whether the contractive force vectors in the second section meet the characteristics set out in part (b) of the claim. It is sufficient to consider the shape of the curve of the second section of the first elastic under this condition. In order to guarantee that the contractive force vector in the direction perpendicular to the longitudinal centreline will be higher than the contractive force vector parallel to the longitudinal centreline, this curve must not have parts which are steeper than 45° in the transverse view, which means it will remain relatively flat or shallow. Thus, the skilled person can verify the claimed condition for the contractive force vector by simple measurements carried out on the "laid out flat" blank. Further methods - as the one suggested in paragraph 0008 involving five points within the centre zone - are also appropriate.

3.3 Therefore, no absolute measurements are necessary to establish the condition of the claim "when the subassembly is laid out flat" and no undue burden of carrying out the subject-matter claimed is posed on the skilled person. Hence, the requirements of Article 83 EPC are met.

3.4 In its written submissions the appellant also raised the objection that the feature "the subassembly comprising additionally a third elastic along the first crotch edge portion and a fourth elastic along the second crotch end portion" could not be carried out by the skilled person because this feature implicitly required a second elastic which was not defined in claim 1. The skilled person interpreting the claim was therefore required to include a second elastic about which there was no information.

However, the conclusion drawn by the appellant, i.e. that because first and third elastics are defined a second elastic should also be present in the garment sub-assembly of claim 1, cannot be accepted by the Board.

The terms "first", "second" and "third" are used merely to facilitate distinguishing between a number of different elastics present in the product disclosed in the patent in suit, which elastics are at least further individually specified as to their position in the garment blank. The patentee is free to define the garment blank in general form with a particular number of elastics or in a more restricted form in accordance with preferred embodiments in which more elastics are present, as long as these different combinations of features are supported by the original disclosure. Since, in the present case, the order of the different elastics indicated by "first", "second" and "third" has no bearing on the technical content of the claim, any order of the terms "first" "second" or "third" could in fact be used without leading to objections either under Article 83 EPC (sufficiency) or Article 84 EPC (clarity).

4. Novelty

E1 discloses a disposable absorbent garment. In its figures 2 and 4 it shows how the garment is constructed. In the plan view of figure 4, the continuous resilient members 6 are provided on an intermediate sheet 11 which is bonded to the back sheet 10. The resilient members 6 are provided in a transverse direction of the article across the cross section. The centre sections of the resilient members 6 are curved in semi-circles so as to oppose each other (i.e., inwardly). The general layout is thus comparable to the design of the garment of the patent in suit.

It was argued that two characteristics of claim 1 of the patent in suit, namely that referring to the same tension in all sections and, that referring to the contractive force vectors in the second section, were not present in this prior art garment. Therefore, these two features are discussed separately in the following.

4.1 With respect to the feature "the second section of the first elastic has the same tension as the first and third sections", elastic means are disclosed in E1 in the form of resilient extendable members 6 and these are applied to the garment blank in a pre-stretched condition with the intended function that they resiliently bring the crotch section of the product into pressing contact with areas before and after the crotch of the wearer (page 5, lines 3 to 5 of E1). There is neither a disclosure available with respect to differently applied forces over the length of the elastic means nor with respect to differentiation into first, second and third sections.

The appellant's submission that the elastics with the numeral 6 in figure 4 of E1 must necessarily have a constant tension along their length cannot be accepted. The assertion that constant tension is the common and usual manufacturing process as shown by for example E9 is not correct, as is demonstrated by the fact that E9 clearly does not disclose a manufacturing process implying such constant tension to the elastics, for the following reasons.

E9 discloses generally a manufacturing method which would be appropriate for the manufacture of an article such as the one disclosed in E1. E9 explicitly refers to a constant velocity being used throughout the application of the elastic elements. According to figure 1 of E9, the speed of the feed rollers 18 is lower than the speed of the application rollers 8 but the speed of both rollers is disclosed as being changed during the application of the elastics. The manufacturing velocity being constant must lead in the manufacturing method of E9 to different tensions in the sections of the elastic member applied in the form of elastic threads 13 and 13'. The tension in the side regions of the elastics (equivalent to the first and third sections) is necessarily higher than in the centre region (equivalent to the second section) of the elastics. Therefore, the argument that the tension of the elastics will be the same in all related parts cannot be correct and the manufacturing method according to E9 would not lead to a garment in which "the second section of the first elastic has the same tension as the first and third sections".

Therefore, even reading the teaching of E9 into E1, the elastic would not be under constant tension but under different tensions and so go against the requirements of the patent in suit.

For this reason alone, the subject-matter of claim 1 is novel. For the sake of completeness, however, the second characteristic in dispute is dealt with as well.

4.2 With respect to the feature "the contractive force vector perpendicular to the longitudinal centerline of the second section of the first elastic is greater than the contractive force vector parallel to the longitudinal centerline of the second section of the first elastic" only figure 4 of E1 represents a "laid out flat" condition. The other figures represent diagrammatic sketches and cannot be used to assess whether or not the characteristics relating to the contractive force vector are met. Figure 4 of E1 shows that the elastic members in the second section form two semicircles, which cannot be considered as representing "shallow curves" or having a curvature that clearly and unambiguously excludes parts with an angle of 45° or more in the transverse direction. Thus the elastics in this section cannot meet the characteristic concerning the contractive force vector as required by claim 1 of the patent in suit. For this reason also, the subject-matter of claim 1 is novel.

5. Inventive step

5.1 Because of their similarity with the claimed subject-matter both E1 or E9 can be taken as the closest prior art.

As set out under novelty, see points 4.1 and 4.2 above, E1 does not disclose the features of claim 1 referring to

"the second section of the first elastic (48) having the same tension as the first and third sections of the first elastic (48), when the subassembly is laid out flat" and

"the contractive force vector perpendicular to the longitudinal centerline (AA) of the second section of the first elastic (48) being greater than the contractive force vector parallel to the longitudinal centerline (AA) of the second section of the first elastic (48), when the subassembly is laid out flat".

These features lead to an improved fit ensuring a cup shape in the crotch region by the combination of the transverse elastics having the same tension in all sections and being designed in the second section to follow a smooth curve.

5.2 E1 refers to the finished article but also gives in these figures detailed information about the design of the garment blank and the shape of the elastics. The transverse elastics in semicircles in combination with - an unspecified - tension are designed to bring the centre section of the product into pressing contact with a wearer. In the wording of claim 1 and on page 5 of the description of E1 general reference to the elastics is made. Both passages are not specific enough to give the skilled reader a teaching as to how the design in semicircles or the applied tension can influence the fit of the finished article. This known garment blank subassembly has thus been developed to the point where the elastics in the crotch portion are transversely applied with a certain tension in all sections of these elastics.

Faced with the problem of providing an improved fit of the crotch portion, the skilled person must, first, define the suitable design of the elastics and, second, define the tension relations within the elastics.

Starting from E1, the skilled person could have investigated related manufacturing techniques. If it was not already the one applied, the manufacturing technique as known from E9 would lead to differing tensions in the sections of the transverse elastics, as explained under point 4.1 above. Therefore, the combination of the disclosure of documents E1 and E9 would lead to a different solution to the one claimed with respect to tension of the elastics, and certainly does not contain a teaching to improve the fit by means of their modification. Whether the design of curvature according to the semicircles of E1 is advantageous over the shallow curves of E9 is not discussed in any of the documents.

5.3 When starting from E9 as suggested by the appellant, E9 does not disclose the feature of claim 1 referring to

"the second section of the first elastic (48) having the same tension as the first and third sections of the first elastic (48), when the subassembly is laid out flat".

In order to improve the fit of the crotch portion when starting from the known manufacturing technique in E9, the appellant relied on the fact that this problem poses itself. Since the elastics are already provided in a shallow curve in E9, the use of an even tension provided an obvious alternative. However, the appellant failed to provide any evidence or convincing argument why the skilled person would abandon the method of providing the elastics in the manner as disclosed in E9. Neither in E9 nor in E1 is there any teaching referring to even tension. It follows that the argument that a combination of the disclosures of E9 with E1 would inevitably result in the subject-matter of claim 1 is based on a mere assertion without any supporting evidence.

5.4 The appellant further referred to a combination of documents E9 with E8. However, starting from E9 with transverse elastic members in the crotch section, E8 does not appear suitable for combination because the diaper of E8 lacks transverse elastics. Figure 1 shows leg elastics in the form of two linear sections 11b and an arcuate section 11a. The stress of the elastic sections 11a and 11b may be arranged to be different from each other (page 4, lines 47 to 48). Thus, if at all, E8 points in the same direction as E9 with the indication that different tensions should be applied in different sections.

5.5 In conclusion, there is no indication in either E1, E9 or E8 that the fit is bad. Furthermore, none of the documents deals with the problem to be solved by the claimed subject-matter. In consequence, no suggestion is available to provide a garment blank subassembly with transverse crotch elastics in combination with the specific curvature and tension characteristics as claimed.

It may well be that the skilled person could arrive at an adjustment of the elastic fit of the article by an even tension and with a defined curvature. The question in this case however refers to whether the skilled person would have done so. By combining the documents suggested by the appellant, different and various solutions to the one claimed are conceivable. Only with hindsight does such subject-matter become a clear solution. Therefore, the combination of the features of claim 1 is not simply a matter of either an alternative design or of alternative tension. Rather, it provides the skilled person with a way to identify appropriate curvature within the framework of equal tension with respect to the transverse elastics. Since this solution is not derivable from the cited documents it is inventive.

5.6 The subject-matter of independent Claim 14 differs from the subject-matter of claim 1 only in that instead of just the back portion, the front portion is also involved. Thus all the conclusions with respect to the subject-matter of claim 1 apply here, too.

Therefore, since the combination of features of claims 1 and 14 cannot be derived in an obvious manner from the available prior art when interpreted by the skilled person, the subject-matter of claims 1 and 14 is found to involve an inventive step (Article 56 EPC).

6. Adaptation of the description

The appellant's objection in respect of the description, column 8, lines 49 to 52, related to the fact that it would not be clear how the tension could be the same in the case of the leg elastics being applied in multiple segments, particularly in case of a continuous application of the elastics.

According to Rule 29 (1) EPC the claims shall define the matter for which protection is sought in terms of the technical features of the invention. It is only in this framework that the scope of protection is to be defined. The description in column 8, lines 49 to 52, thus can only be considered in the light of claims 1 and 14. Therefore, a continuous application of the elastics is excluded. Although the wording in the objected paragraph on its own could have a broader meaning, the wording of claims 1 and 14 defines the scope of the invention and there is no conflict with the description when only a more limited meaning is addressed.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent on the basis of

- claims, nos. 1 to 20 as filed with the respondent's letter of 22 August 2005,

- the description, columns 1, 2 and 5 to 9 of the granted patent and columns 3 and 4 as filed during oral proceedings and

- Figures 1 and 2 of the patent as granted