EP 3 292 847 B1 relates to an absorbent article and stems from a divisional application of EP 2 627 295.
When the absorbent polymer is swelling, secondary attachments (115) are opening and pockets of absorbent polymer are opening.
Brief outline of the case
The patent was revoked by the OD for infringement of Art 76(1). The proprietor appealed the decision.
The board confirmed the revocation for infringement of Art 76(1).
The feature at stake is the following:
P8 “wherein an absorbent material pattern formed in between the primary (111) and secondary (115) attachments is substantially continuously connected”.
The proprietor’s point of view
The OD applied an overly strict and formalistic approach when assessing the compliance of the claims with Art 76(1).
The combination of primary attachments (111), secondary attachments (115), and a continuously connected absorbent material pattern was derivable from the earlier application as filed, despite them not being depicted in each drawing.
Figure 4 should be interpreted as including primary and secondary attachments. In a similar way, primary and secondary attachments were not indicated in each of the four drawings of Figure 10A, although they were necessarily present.
Further, a skilled reader would understand that the presence of both primary and secondary attachments was preferred. There was thus a strong pointer to read them as also being included in the embodiment shown in the left-hand drawing of Figure 4.
Even the lack of a clear pointer to a particular combination of features did not necessarily mean that this combination was not derivable from the application.
It was not decisive whether a particular combination of features had to be derived by a selection from two lists to decide upon added subject-matter.
Based on a lack of differentiation of the type of attachments, the proprietor argued that the attachments mentioned in the last paragraph of page 50 referred to both types, i.e. primary and secondary alike.
During the OP, the proprietor argued that there was a pointer towards the claimed combination of features in feature P8.
It further argued that a skilled person reading this would understand that the capillary flow was different from the flow through the channels and that it was enhanced when the absorbent material was laid out in a continuously connected pattern. This constituted a pointer towards a continuously connected absorbent material pattern and was thus a clear preference therefor.
During the OP, the proprietor cited decision T 2255/12, T 1269/06, T 3142/19, and T 1255/18.
The opponent’s point of view
The OD did not apply an overly strict and formalistic approach when assessing the compliance of the claims with Art 76(1). The application described different embodiments and aspects, but primary attachments, secondary attachments, and a continuously connected absorbent material pattern were never described in combination.
The left-hand drawing of Figure 4 did not show primary attachments. Nor were they implicitly present.
Even if the combination of both primary and secondary attachments were preferred, no preference could be derived from the earlier application as filed that this was to be understood in combination with an absorbent material pattern that was substantially continuously connected.
The board’s decision
For the board, there is no direct and unambiguous disclosure of the combination of features set out in feature P8, i.e. the presence of primary attachments, secondary attachments and an absorbent material pattern that is substantially continuously connected.
It was uncontested that a substantially continuously connected absorbent material pattern was only mentioned once in the earlier application (on page 50, lines 26/27) and only depicted in a single drawing (the left-hand drawing of Figure 4). It was also uncontested that the left-hand drawing of figure 4 did not unambiguously show primary attachments.
The last paragraph of page 50 is only concerned with the absorbent material pattern “formed in between the attachments”. It may thus indeed refer to any type of attachments, without however disclosing the presence of both types.
The reference to “capillary flow locally” cannot make up for the lack of any mention of the type of absorbent material pattern. The skilled person would only know from the last paragraph on page 50 that several possibilities exist and that clusters of absorbent material, surrounded by areas where substantially no absorbent material is present, are preferred.
The board agreed with the findings of T 1269/06.The objection is not based on the terminology or a semantic analysis of the features. It is based on the lack of a direct disclosure of such combination and also the lack of a clear indication that the combination of these features is preferred.
The board considered itself fully aligned with the findings in case T 2255/12, in which the board accepted selection of four substances from a list of more than twenty in the application as filed as being the favourites over other substances. There is no indication that the combination of primary attachments, secondary attachments, and a substantially continuously connected absorbent material pattern was preferred, and even less so being ‘favourite’.
In T 3142/19 all contested features were described as optional, to which the deciding board referred to as a “forest of optional features“. It remarked, that “in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person”. There is no indication in the earlier application as filed that the combination of both primary and secondary attachments is derivable for a skilled person in further combination with a substantially continuously connected absorbent material pattern.
In T 1255/18, the board stated that “[t]he mere fact that each of the features of claim 1 of the MR would as such, i.e. when read in isolation, be disclosed in the earlier application as filed [was] not sufficient to conclude that the skilled person would implicitly derive the presently claimed combination of features directly and unambiguously from the application as filed. Applied to the present case, taking into consideration the whole content of the earlier application as filed, the presence of a substantially continuously connected absorbent material pattern is not implicit. It is thus not necessarily present in the embodiment as depicted in the left-hand drawing of Figure 4.
Comments
In spite of citing various decisions of the boards, the proprietor could not convince the board that the combination of primary attachments, secondary attachments, and a substantially continuously connected absorbent material pattern was preferred, and hence disclosed in the parent application.
The decisions cited by the proprietor are as such very interesting decisions showing different aspects of added matter:
- no semantic analysis of features,
- preferred features,
- multiplicity of optional features,
- disclosure of individual features as such, but not in combination.
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