EP 3 034 055 B1 relates to an absorbent articles with a thinner backsheet.
Brief outline of the case
Following an opposition, the proprietor filed a new MR.
This MRn was considered infringing Art 123(3) by the OD. The proprietor appealed the revocation.
The board confirmed the revocation in view of the infringement of Art 123(2).
The following feature was added to claim 1 during examination:
“where PFA [= fastening adhesive] is applied in a discontinuous application such that any portion of the application is greater than 1 mm and no more than 10 mm distant from another portion of the application where PFA is not applied”
This feature simply expresses the fact that the fastening adhesive (PFA) is not applied to the whole surface of the backsheet but in form of alternating stipes.
The OD’s argumentation
The OD had argued that, from a technical point of view, there can be no other minimal distance than 0 mm between any portion of the application where PFA is applied and another portion of the application where PFA is not applied, since the portions of the PFA stripes at the borderline between the PFA area and the PFA free area are necessarily and inevitably less than 1 mm distant from the PFA free areas. It is the OD’s view that it does not make sense to introduce a lower distance of “greater than 1 mm” to the disclosure of the application documents. Otherwise, what would be present in the transition area between the PFA areas and the PFA free areas ?
The proprietor’s point of view
The feature “where PFA is applied in a discontinuous application such that any portion of the application is greater than 1 mm and no more than 10 mm distant from another portion of the application where PFA is not applied” had no basis in the application as filed, but was technically meaningless.
A technically meaningless feature did not impose any meaningful technical limitation and thus could not contain subject-matter which extended beyond the content of the application as filed.
The proprietor further argued that claim 1 defined the pattern as a striped pattern alternating PFA stripes and PFA free stripes, such that no other areas could be between them.
The opponents’ point of view
The argument that the feature is technically meaningless was new in the appeal proceedings and should therefore not be admitted into the proceedings.
There was no reason to ignore the requirement of Art 123(2) for technically meaningless features but the feature was anyway not technically meaningless and simply had no basis in the application as filed.
The board’s decision
Not a meaningless feature
In the appeal proceedings, the proprietor did not contest the finding that there was no basis for this amendment in the application as originally filed and argued only that, whilst it agreed with the OD’s understanding of the claim, that the feature was technically meaningless, such a feature did not contain any additional technical limitation and thus could not contain subject-matter which extended beyond the content of the application as filed under Art 123(2).
The board did not accept this argument, at least because it found that the feature added to claim 1 is not technically meaningless in the context of the claim, even though the application as filed did not disclose such embodiments and even if such embodiments may not even have been initially intended.
A skilled person reading the claim would conclude that the feature for example defines a further region/portion extending by more than 1 mm between any point with PFA and the closest point to it without PFA, which region/portion is not a region/portion of the backsheet garment facing surface.
A void in the backsheet surface between the portion of pattern application of PFA and the portion of the application where PFA is not applied greater than 1 mm would correspond to this feature of claim 1.
The skilled person would therefore come to a logical interpretation of the claim which includes all the features of the claim, i.e. the feature is not technically meaningless.
Alternating pattern
For the board, the term “alternating” only defines that two stripes of the same type cannot appear in the pattern without one of the other type between them but does not exclude that the pattern can be formed with further types of areas.
A backsheet having voids between the portion of pattern application of PFA and the portion of the application where PFA is not applied would still be considered as a a striped pattern alternating free PFA stripes and PFA free stripes as defined in claim 1.
Meaningless feature and Art 123(2)
In its communication under Art 15(1) RPBA, the board was of the opinion that a technically meaningless or illogical feature can well add subject-matter to the original disclosure.
For the bard, the EPC, and in particular Art 123(2), does not seem to allow for any distinction between allowable and not-allowable subject matter. The board considered that potential objections regarding the clarity of the claims or insufficiency of disclosure are not a reason to ignore them as added subject-matter.
In the present case, as the board has decided that the added feature was not meaningless, the question as to whether a technically meaningless feature in a claim would still be required to fulfil the requirement of Art 123(2) was not decisive for this case and will thus be left unanswered.
Comments
Without saying so, the proprietor thought of Catchword 2 of G 1/93.
- A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution [= meaningless] to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Art 123(2).
I do not remember seeing any patent which could be maintained on the basis of a feature which does not provide a technical contribution, i.e. which is meaningless.
In the present case the feature was certainly not meaningless.
Any feature included in a claim has been put there for a reason by the applicant/proprietor. Claiming later that a feature is meaningless in order to avoid a refusal/revocation for added matter is just a trick which is should not be accepted.
Comments
Leave a comment