This decision shows that one has to be careful when extrapolating from intermediate products of a process to the final products. Certain features may indeed undergo some change during the execution of the process.
[…] Claim 1 as maintained by the Opposition Division (OD) comprises the substantial amendment requiring that in the claimed absorbent article the surfactant is disposed in at least one of the layers of the polymeric film “other than a top layer of the polymeric film”. This amendment is intended to specify that there is no surfactant in a top layer of the polymeric film in the claimed absorbent material. According to the Respondent this amendment finds a support in the second full paragraph on page 7 of the application as filed. [2.1]
It is established jurisprudence of the Boards of Appeal that an amendment to a claim offends against A 123(2) EPC, if the amended subject-matter is not directly and unambiguously derivable from the application as filed. In the present case, it is not disputed that the passage cited by the Respondent as support for the amendment to claim 1 does not describe the absorbent material per se but the method for preparing the film used in the preparation of the claimed absorbent material. In these circumstances, the question arises whether the amendment of the claim directed to the absorbent material is nevertheless directly and unambiguously derivable from a passage of the application as filed not describing the final absorbent material as such but the preparation of the intermediate film used there for. The particular characteristics of the intermediate film described in the application as filed could be automatically transferred to the final absorbent material only if these characteristics would remain unchanged throughout the process of preparing the absorbent material, in other terms, if the location of the surfactant in the intermediate film is not altered by the process steps leading to the final absorbent material, such as aperturing and bonding the film to the other parts of the article.
However, it is known in the art, for example from D1, that the surfactant initially disposed in an internal core layer of a multilayer film migrates into the outer layer, the rate of migration increasing with increasing temperature. In order to avoid the migration of the surfactant to the outer layer the film has to be stored at room temperature or below. Thus, the location of the surfactant in the intermediate film does not remain unchanged, the surfactant migrating from the core layer into the outer layer already at a temperature around room temperature. Since the film described in the application as filed, is not only handled at room temperature during the preparation of the final absorbent but is even heated for aperturing and bonding it to the other elements of the absorbent article, the surfactant located initially in the internal layer migrates to the outer layer. Therefore, the location of the surfactant in the intermediate film is altered by the process steps leading to the final absorbent material with the consequence that the passage describing in the application as filed that the surfactant is internally compounded is not automatically applicable to the final absorbent material. [2.2]
Therefore, the amendment to claim 1 intended to specify that in the final absorbent article the surfactant is not disposed in a top layer of the polymeric film cannot directly and unambiguously be derived from the passage of the application as filed. The amended claim 1 of the main request does, thus, not fulfil the requirements of A 123(2) EPC. [2.3]
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