EP 3 666 950 B1 relates to water-dispersible nonwoven substrates.
EP 3 666 950 B1 results from a divisional application of EP15829469.4 / EP3 177 760.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board decided that claim 1 as granted lacked IS over D2=US 2008/0 233 382 and D6=US 6 753 063, both documents classified as Y,A in the ESR.
At stake is merely feature M1.9 which reads: “wherein the average fibre densities of the protrusions (120) and connecting regions (130) are substantially the same”.
As far as the AR were concerned, the OD was of the opinion that only D2 could come into consideration as “starting point”.
The board disagreed and remitted the case to the OD in order to decide IS also on the basis of D6.
In this thread we will discuss the board’s interpretation of claim1 as granted.
The opponent’s point of view
The objective technical problem over D2 could be considered that of achieving a surface structure that did not deteriorate the tensile strength of the final product too much.
D2 and D6 were not incompatible. In addition, adding compressed sites was not contradictory to the teaching of document D6. The combination of documents D2 and D6 thus led the skilled person to the claimed subject-matter.
The proprietor’s point of view
It was clear from the description which, according to G 1/24, had to be taken into account when interpreting a claim that compressed sites were not intended. It was also clear from the overall context that the substrate according to claim 1 did not have compressed sites.
The patent indicated a technical effect that was achieved by providing a uniform density of the protrusions and connecting regions. The effect was mentioned in paragraph [0035] as being that of a high tensile strength of the structured web while its dispersibility in water was maintained. Further effects were mentioned in paragraph [0038].
Even if the objective technical problem were only to find an alternative there was no motivation for the skilled person to combine D2 with D6. The teaching of D2 was incompatible with the teaching of D6, and therefore the skilled person would not have arrived at the claimed invention even if they had tried to combine them. Furthermore, the teaching of D2 led away from applying feature M1.9. The skilled person thus would not have arrived at the claimed subject-matter.
The proprietor argued that any region that was not a protrusion was necessarily somewhere in between them and thus could be considered a connecting region. It was clear from the overall disclosure in the patent, and in particular from Figure 1 and paragraph [0032], that the presence of depressions was not intended. It was clear from the overall context that the substrate according to claim 1 did not have compressed sites.
The board’s decision
The board interpreted feature M1.9 as excluding the possibility that the protrusions are made by compressing the areas enclosing them, as would be the case if the protrusions were, for example, made by embossing. However, provided that this condition is met, the wording of the claim does not generally exclude compressed regions being present anywhere else on the web.
Any region that is not a protrusion can either lie somewhere between any two protrusions or, alternatively, outside the areas having protrusions; however, this does not imply that all these regions are necessarily to be regarded as “connecting regions”. The wording of claim 1 does not exclude the presence of other regions of the substrate which are neither protrusions nor connecting regions.
After consulting the description according to G 1/24, the board was of the opinion that the fact that no mention of a feature is made in the claim or in the description does not exclude it from possibly being present in an embodiment falling within the ambit of the claim.
This also applies to the possible presence of compressed sites, as set out in D2, on the web of the contested patent. The web according to claim 1 can comprise compressed sites, e.g. regions with a different fibre density, at some locations and still fulfil the conditions that connecting regions are present at other locations and that the average fibre densities of the protrusions and connecting regions disposed between these protrusions are substantially the same.
The connecting regions may be regions separate from the compressed sites as they do not necessarily cover the entire area outside the protrusions or between any two protrusions. It is further noted that the reference to an “average fibre density” in feature M1.9 does not specify that the fibre density at each single point on the web is the same. This is also in line with the description, which allows, for example, variations in fibre density from protrusion to protrusion, see paragraph [0028].
The proprietor’s reference to the overall context of the contested patent and paragraph [0032] cannot change the board’s understanding that claim 1 does not generally exclude the possibility that compressed sites may be present at some locations.
From the context of the explanation in paragraph [0032] that the protrusions are not created by embossing, it follows that the protrusions are formed by methods other than compressing the area directly enclosing them. This, however, does not provide any information relating to areas of the web which are not directly enclosing the protrusions.
Therefore, having consulted the description, despite it not mentioning compressed sites and despite it suggesting that the protrusions will not be formed by compressing parts of the web, there is no reason to consider claim 1 to generally exclude the presence of compressed sites at some locations on the web.
On the basis of this interpretation of claim 1 as granted, the board held the latter lacked IS over D2+D6.
Comments
It is true that G 1/24 requires consultation of the description in order to correctly interpret the claims.
Independent claim 1 as granted starts with “A water-dispersible nonwoven substrate comprising…..”.
“Comprising” does not exclude that the claim may cover other features, but I have strong doubts that claim 1 covers features which are not even mentioned in the description.
The application of G 1/24 in this decision appears thus quite strange, not to say unreasonable.
It reminds me of some boards first applying G 1/03 and then G 2/10. When doing so, no undisclosed disclaimer was ever allowable. G 1/16 put an end to this nonsense.
What do you think?
Comments
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