T 2174/12 - Not: is it essential

T 2174/12

For the decision, click here

Key points

• Board: " As regards compliance of an amendment with Article 123(2) EPC when features are taken from an embodiment in the description and Figures, it is not of relevance whether features not taken-up into the claim are considered essential to the invention or not. Rather the standard to be met is that the subject-matter resulting from the amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed (see e.g. G2/10)." 
• " In the present case, the necessary direct and unambiguous derivability requires that all features structurally or functionally related to the exterior laminate be taken up into the claim."
• The "is it essential" test is usually applied for deleting features from claim 1 as filed (CLB II.E.1.7.2). For extracting a feature from an embodiment, the Guidelines suggest establishing that the feature " is not related or inextricably linked to the other features of that embodiment" (GL H-V 3.2.1). The Board here seems to explain that "not related"  means "not structurally or functionally related". Why the Guidelines also mention the much lower standard of "not inextricably linked"  is not entirely clear to me.

2. Auxiliary request 1

2.1 Non-admittance of request (Article 13(1) RPBA)

[...]

2.1.2 The respondent filed auxiliary request 1 during oral proceedings. The request thus represented a change to the respondent's complete case as defined in Article 12(2) RPBA) and its admittance is to be considered at the Board's discretion under Article 13 RPBA.

2.1.3 As regards prima facie compliance with Article 123(2) EPC, this is not achieved in claim 1.

The exterior laminate has admittedly been defined more clearly through addition of features taken from para. [0010] of the application as filed. However, the features taken-up into claim 1 with respect to the exterior laminate are not disclosed in isolation in the description; para. [0013] provides further details of the laminate at least having two sheets of nonwoven fabric. The exterior laminate is thus structurally disclosed in the description as having 'at least two sheets of nonwoven fabric', such that the omission of this feature from those taken-up into claim 1, to more clearly define the exterior laminate, gives rise at least prima facie to an unallowable intermediate generalisation of the original disclosure in this respect. Although reference was made to paragraph [0062] as a further basis of disclosure, this refers to a nonwoven fabric sheet and a water repellent sheet. Although it might be argued that a water-repellent sheet is an alternative to one of the nonwoven fabrics (and even this is not considered to be unambiguously disclosed) this anyway would not be a disclosure obviating the presence of a nonwoven fabric in the exterior laminate, but one rather confirming it.

As regards compliance of an amendment with Article 123(2) EPC when features are taken from an embodiment in the description and Figures, it is not of relevance whether features not taken-up into the claim are considered essential to the invention or not. Rather the standard to be met is that the subject-matter resulting from the amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed (see e.g. G2/10).

In the present case, the necessary direct and unambiguous derivability requires that all features structurally or functionally related to the exterior laminate be taken up into the claim. 

This thus includes not just those features from lines 1 to 2 of para. [0010] of the A-publication but also at least the detail of the exterior laminate in para. [0013] regarding the laminate comprising two sheets of nonwoven fabric. This detail regarding the exterior laminate having at least two sheets of nonwoven fabric is clearly structurally related to the structure of the exterior laminate disclosed in that embodiment and so, at least prima facie, needs to be included in the claim for its subject-matter to meet the requirement of Article 123(2) EPC. This feature of the exterior laminate is however not included in claim 1.

2.1.4 A further, at least prima facie, non-compliance with the requirement of Article 123(2) EPC arises due to only a selection of features concerning the location of the leg portions having been included in claim 1, which features have been taken from a disclosure of a larger number of features disclosed in combination in the description in the specific context of the leg elastic members. Para. [0016] discloses not only that the leg elastic members are disposed along inward curves of the exterior laminate to form the leg portions, but also at least that these members extend to the side edges and overlap with, or continue to, each other, and that a substantially continuous loop of leg gather is formed. These features are structurally related to the leg elastic members taken-up into claim 1 since they describe the only disclosed arrangement of these members, and thus the extent of the leg portions. It thus follows that the omission of at least these features from claim 1 presents the skilled person with new information in the form of a new combination of features which is at least prima facie not directly and unambiguously derivable from the application as originally filed, such that the subject-matter of claim 1 would contravene the requirement of Article 123(2) EPC.

Regarding the respondent's argument that further detail of the leg elastic members from para. [0016] was not necessary, since those in the crotch region and at the side edges were remote from the regions (71) of concern for the definition of the invention, this is not found relevant as regards the matter of compliance with Article 123(2) EPC. The leg elastic members, as stated in lines 1 to 2 of para. [0016], form the leg portions such that the extent and nature of the leg elastic members is of fundamental structural importance for defining the leg portions. In para. [0016] the leg elastic members are stated to 'overlap ... in the crotch section' and to 'overlap with each other .... when the side edges ... are joined together' thus forming a 'substantially continuous loop of leg gather'. By the above definition of the leg elastic members forming the leg portions, these further features of the leg elastic members from para. [0016] define the physical extent of the leg portions and thus have a fundamental structural relationship with the leg portions. It thus follows that the omission from claim 1 of these further features of the leg elastic members prima facie offends Article 123(2) EPC.

2.1.5 The subject-matter of claim 1 thus at least prima facie fails to meet the requirement of Article 123(2) EPC.

2.1.6 Since the subject-matter of claim 1 is not prima facie allowable, which would be necessary for fulfilling the need for procedural economy and consequently admitting the request into the proceedings, the Board exercised its discretion under Article 13(1) RPBA not to admit this request into proceedings.

3. No further request was filed by the respondent. With no request on file which is both admitted and allowable, the patent must be revoked.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.