T 1937/17 (Other than for the purposes envisaged in G 1/93, "technical … of 6.7.2021

Summary of Facts and Submissions

I. An appeal was filed by the appellant (opponent) against the decision of the opposition division rejecting the opposition to European patent No. 2 595 592. It requested that the decision under appeal be set aside and the patent be revoked.

II. With its response, the respondent (patent proprietor) requested that the appeal be dismissed or, in the alternative, that the patent be maintained according to one of auxiliary requests 1 to 3 filed therewith.

III. The Board issued a summons to oral proceedings and a subsequent communication containing its provisional opinion, in which it indicated inter alia that the objections raised under 100(c) EPC prejudiced maintenance of the patent in suit.

IV. With letter dated 3 June 2021, the respondent filed new auxiliary requests 4 to 6.

V. Oral proceedings were held before the Board on 6 July 2021.

At the end of the oral proceedings the requests were as follows:

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

The respondent requested dismissal of the appeal as its main request or, as an auxiliary measure, maintenance of the patent according to one of auxiliary requests 1 to 3, filed with the reply to the grounds of appeal dated 13 March 2018, or according to one of auxiliary requests 4 to 6, filed with the submission dated 3 June 2021.

VI. Claim 1 of the main request and of auxiliary requests 1 to 6 are annexed at the end of this decision.

VII. The appellant's arguments may be summarised as follows:

Main request - Article 100(c) EPC

Claim 1 of the main request contained subject-matter extending beyond the content of the application as filed.

There was no basis in the application as filed for the specific absorbent insert wherein the absorbent core includes a layer formed at least in part of a substrate, distributed absorbent particles of a superabsorbent polymer or absorbent gelling material and a thermoplastic adhesive (page 24, lines 11-16 of the application as originally filed) in combination with an absorbent core structure having an insert with the specific parameters of an absorbent insert mass of less than 50 grams, an absorbent capacity of at least 200 grams and a unitized insert absorbent capacity of at least 8 grams per gram.

Further, the patent application disclosed several absorbent core structures ("in various embodiments..." on page 22, lines 11-15, lines 16-19 and 20-26), each one having a specific parameter defined, and there was no specific disclosure of this structure fulfilling all these parameters.

Auxiliary requests 1 to 6 - Article 123(2) EPC

None of the amendments to claim 1 of any of the auxiliary requests 1 to 6 overcame the objection under Article 100(c) EPC to the main request.

VIII. The respondent's arguments may be summarised as follows:

Main request - Article 100(c) EPC

The disclosure on page 24 was a general disclosure, which was not exclusive to a particular subset of embodiments. The skilled person would understand that the description of the airfelt-free core on page 24 was applicable to each of the preferred parameter ranges disclosed on page 22 and especially to the preferred combination of parameters in claims 1, 4, and 7.

None of the embodiments on pages 21-24 of the description fell outside the scope of the claims. The skilled person reading the description would recognize that no embodiment was ever meant to have a unitized insert absorbent capacity of 7.0 grams per gram and that this was a simple error, since both claim 1 as filed and claim 1 of the priority application required a unitized insert absorbent capacity of 8 grams per gram.

The parameter lists on page 22 and the structure of page 24 were lists of converging alternatives of more or less preferred elements as explained in T 1621/16. The two criteria specified in item 2 of the catchword to T 1621/16 were also fulfilled.

Reasons for the Decision

Main request - Article 100(c) EPC

1. The respondent argued that the combination of claims 1, 4 and 7 as originally filed together with page 24, lines 11 to 16 provided a basis for the subject-matter of claim 1. The disclosure on page 24 was a general disclosure, which was not exclusive to a particular subset of embodiments. Thus, the skilled person would understand that the description of the airfelt-free core on page 24 was generally applicable to each of the preferred parameter ranges disclosed on page 22 - and especially to the preferred combination of parameters defined in claims 1, 4 and 7.

2. The Board is however not persuaded by this argument.

2.1 The absorbent core disclosed on page 24, lines 11-16 comes from the sub-section of the description entitled "absorbent core" that extends from page 21, line 4, to page 25, line 2. In this section, several alternative embodiments of an absorbent core are disclosed and not all of them are, for example, "airfelt-free" as described on page 24; page 21, lines 8-10, states specifically that the core may comprise airfelt.

2.2 Further, page 24, lines 11 to 16, also discloses that a core, which has a portion that is airfelt-free, may (i.e. optionally) be disposed between the topsheet and the backsheet and may (i.e. optionally) comprise a layer formed at least in part of a substrate and a thermoplastic adhesive composition, such that the core structure defined in claim 1 of the patent is only one specific disclosure of several possible core structures described on page 24.

2.3 The Board cannot accept that such a specific disclosure is generally applicable for all the parameters mentioned previously in the patent and finds that it is not directly and unambiguously derivable that this specific core structure has an absorbent capacity of at least 200 grams, a unitized insert absorbent capacity of at least 8 grams per gram or an absorbent mass of less than 50 grams as defined in claim 1.

2.4 Page 22, lines 16-27, discloses a list of several possibilities for each of these parameters including values that are not covered by the scope of claim 1 as granted. For example, a disposable absorbent insert is described as having a unitized absorbent capacity of 7.0 grams per gram or an absorbent capacity of 160 grams or a mass of 60 grams, i.e. both outside the parameters of the insert defined in claim 1 under consideration.

2.5 Contrary to the submissions of the respondent, that none of the embodiments on pages 21-24 of the description fell outside the scope of the claims, the skilled person reading the description would not recognize for example a unitized absorbent capacity of at least 7.0 grams per gram as being an error, since this value builds the start of a regular arithmetic progression with the other values of the list (i.e. 7.0, 8.0, 9.0 and 10.0 grams per gram - as described on page 22, lines 23 to 27) and the other lists of parameters (e.g. insert absorbent capacity and absorbent insert mass) on page 22 also comprise values outside the ranges defined in claim 1 as originally filed. The fact that such values also fall outside claim 1 of the priority application is noted but is not of relevance since for the purposes of Articles 100(c) and 123(2) EPC, only the application as filed is to be taken into account (see e.g. G11/91, Reasons 7).

In addition, since each of these lists of values contains values applicable only "in various embodiments" (i.e. as opposed to all embodiments), the absorbent inserts of the invention do not necessarily have an absorbent capacity, a unitized insert absorbent capacity or an absorbent mass falling within the values described therein.

3. The respondent further argued that the parameter value lists on page 22 and the structure of page 24 were lists of converging alternatives of more or less preferred elements as explained in T 1621/16. It argued that T 1621/16 was very similar to the situation at issue in the present case.

Still further, it argued, in relation to item 2 of the catchword of T 1621/16, that the description in the present case explicitly linked the cited features of pages 22 and 24 in terms of their purposes and effects (the consumption of materials and other resources can be minimized as seen on page 22, lines 7 to 9, and page 24, lines 32 and 33).

This allegedly provided both a disclosed technical contribution as well as a pointer as required by T 1621/16 such that it would be understood by the skilled person that an absorbent core with the structure disclosed on page 24, lines 11-16, could embody and achieve any of the parameter ranges disclosed at page 22, lines 11-27 which as such represented converging alternatives. Originally filed claims 1, 4 and 7 in combination also provided a further pointer for the specific combination of the range values of the parameters taken from page 22, since claims 7 and 4 as filed were dependent on any of the preceding claims.

4. The Board does not find these arguments persuasive.

4.1 First, the absorbent core structure and its options disclosed on page 24 do not provide a general disclosure nor is there a "list of converging alternatives" to be identified.

As explained in item 2. above, the absorbent core with an airfelt-free portion of page 24 may be disposed between the topsheet and the backsheet and it may comprise a substrate and a thermoplastic adhesive composition. However, these options can only be seen to have equal value to one another and are not subordinated in a way that one encompasses the others or ranked in a way that one is more preferred than the others. The only feature that they have in common is that they are disclosed in the context of a core which has a portion that is substantially airfelt-free.

As also explained previously, the disclosure (even with various options which would fall under claim 1 being selected) is also not found to be generally applicable to the embodiments preceding this (in particular the parameter ranges each described in its own separate paragraph and each linked individually to "various embodiments" on page 22).

4.2 Second, even when considering the combination of the parameter values for "insert absorbent capacity", "absorbent insert mass" and "unitized absorbent capacity" with their specific ranges to be unambiguously disclosed in the combination of originally filed claims 1, 4 and 7, the skilled person is given no information to allow them to directly and unambiguously derive a further disclosure of these specific parameter ranges in combination with a specific core structure of page 24 (as discussed above in point 2.2).

4.3 Regarding the respondent's argument that the similar purposes and effects provide both the disclosure of a technical contribution for certain features and a pointer to this combination, as was the case in T 1621/16, the following is noted: a differentiation must be made between what is possibly rendered obvious to a skilled person in the light of the disclosure with certain pointers, and what is directly and unambiguously, even if implicitly, derivable from the disclosure to the skilled person using common general knowledge.

4.3.1 In item 2 of the catchword to T 1621/16, it is stated as a first condition that the requirements of Article 123(2) EPC might be fulfilled, if "the subject-matter resulting from lists of converging alternatives is not associated with an undisclosed technical contribution".

This Board does not subscribe to the concept of a disclosure of a "technical contribution" being a criterion upon which "converging alternatives" should be considered to play a role in establishing whether a direct and unambiguous disclosure of a particular selection of alternatives exists, as explained below.

The "gold standard" for judging the allowability of amendments with regard to Article 123(2) EPC is laid out in G 2/10 (OJ EPO 2012, 296), which summarises the entire thread of Enlarged Board decisions having taken up questions relating to the importance and the applicability of Article 123(2) EPC (see in particular Reasons 4.3), namely G 3/89 and G 11/91 (OJ EPO 1993, 117 and 125), G 1/93 (OJ EPO 1994, 541) as well as G 2/98 (OJ EPO 2001, 413).

Essentially, the notion of "technical contribution" with regard to Article 123 EPC was coined in G 1/93 and was taken up in G 2/98 (OJ EPO 2001, 413), where the question of the derivation of "the same subject-matter" from the priority application was at issue (see Reasons 9 and 10) in an attempt at clarification of its usage. The following statement is to be found in Reasons 10:

"10. In decision G 1/93 "Limiting feature/ADVANCED SEMICONDUCTOR PRODUCTS" (OJ EPO 1994, 541), relating to the conflicting requirements of Article 123(2) and (3) EPC, a distinction is made between features providing a technical contribution to the subject-matter of the claimed invention and features which, without providing such contribution, merely exclude protection for part of the subject-matter of the claimed invention as covered by the application as filed. Hence, decision G 1/93 deals with a completely different legal situation."

In other words, for the Enlarged Board this distinction in G 1/93 is made explicitly for the addition of undisclosed limiting features limiting the scope of protection and does not provide a criterion for establishing whether an amendment extends beyond the content of the application as filed or not.

This is confirmed in G 2/10 with the following unequivocal statement (following an extensive analysis of G 1/93): "It is, however, evident ... that by introducing the "technical contribution" criterion the Enlarged Board did not intend to amend the definition concerning when an amendment is allowable under Article 123(2) EPC generally, but that it only sought a way of avoiding the potentially fatal consequences of the patentee being caught in the "inescapable trap" between the requirements of paragraphs (2) and (3) of Article 123 EPC".

Paraphrasing the Enlarged Board, one would then inevitably conclude that the aspect of "technical contribution" is not something to be taken into account when assessing whether the requirement of Article 123(2) EPC was fulfilled.

Hence, this Board finds that, other than for the purposes envisaged in G 1/93, "technical contribution" is of no relevance when deciding on the allowability of amendments under Article 123(2) EPC. Instead, the gold standard set out in G 2/10 is the only criterion which has to be applied.

4.3.2 Even when considering the aspect of a "pointer" towards a certain combination from various lists with the airfelt free core, it is noted that page 24, lines 32 and 33 of the application as filed discloses that reducing or eliminating airfelt in the core reduces the amount of materials consumed in manufacturing, while page 22, lines 7 to 9, discloses that absorbent efficiency of the insert should be as high as possible in order to minimize the usage of materials.

The underlying application then discloses two distinct solutions that reduce the usage of materials but this does not amount to a single disclosure comprising both solutions. As a consequence, this also does not necessarily build a clear pointer to the specific combination of features. Instead, the application as originally filed may be logically understood to comprise several distinct disclosures, each providing a different solution, albeit related to the same problem.

The above notwithstanding, the absorbent core structure defined in claim 1 does not only have an airfelt-free portion (argued to be part of the pointer), but is more specific in that it includes a layer formed at least in part of a substrate and a thermoplastic adhesive composition, these being disclosed on page 24 but not on page 22. Additionally, the only example of a test article with a combination of parameter values falling within the parameter ranges defined in claim 1 (see page 23, lines 1-3 and Table 2) comprises 3 g of cellulosic fibres (i.e. airfelt) distributed in an unknown manner, such that it cannot be derived unambiguously that the absorbent insert of this test article comprises an airfelt-free portion at all.

4.4 Thus, regardless of the fact that both solutions seem to reduce the usage of materials, and in that sense can be seen to have a common disclosed effect (arguably even a common disclosed "technical contribution", in the sense of T 1621/16, Reasons 1.7.3 and 1.8.6), when applying the gold standard of G 2/10 the Board concludes that there is no direct and unambiguous disclosure of a core with the specific structure defined on page 24 in combination with the remaining features (particularly with the combination of parameter values defined in originally filed claims 1, 4 and 7) as defined in claim 1 of the main request.

4.5 For the reasons stated above, the ground of opposition under Article 100(c) EPC is prejudicial to maintenance of the patent. Thus, the main request is not allowable.

5. Auxiliary requests 1 to 6

5.1 Claim 1 of each of the auxiliary requests 1 to 6 defines the same parameter ranges for the absorbent insert and absorbent core structure as in claim 1 of the main request.

5.2 The specific amendments made to claim 1 of these requests concern the outer cover and the inclusion of barrier cuffs, not the core. They thus fail to address the objections already found to result in subject-matter extending beyond the content of the application as originally filed. The respondent presented no additional arguments in defence of these requests.

5.3 As a consequence, the subject-matter of claim 1 of each of the auxiliary requests 1 to 6 fails to meet the requirement of Article 123(2) EPC for the same reasons as those found under Article 100(c) EPC to prejudice maintenance of the patent according to the main request.

5.4 In the absence of any set of claims complying with the requirements of the EPC, the patent has to be revoked (Article 101(3)(b) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.