Claim 1 of the main request before the Board read:
A disposable absorbent article in the form of a diaper having an absorbent structure comprising an absorbent core (3) which is coated with absorbent sheets (3A, 3B) to thereby form the absorbent structure and disposed between a liquid pervious sheet (1) and a liquid impervious sheet (2),wherein the absorbent sheets (3A, 3B), laterally extend beyond the side edges of the absorbent core (3) to thereby form extended peripheral side portions in the opposite leg portions of the diaper wherein the liquid impervious sheet (2) has the shape of a rectangle with a width being larger than that of the absorbent structure and a back sheet (30), which has the shape of an hourglass, is provided so as to cover externally the liquid impervious sheet (2),wherein the liquid pervious sheet (1) has the shape of rectangle with a width being larger than that of the absorbent structure so as to laterally extend beyond the side edges of the absorbent structure with a short distance, and is fixed to the liquid impervious sheet (2),and at least one standing cuff (B) comprising a double standing sheet which has a free portion thereof standing toward the wearer’s leg by means of a stretching force of stretching members (5) in a used condition,wherein an internal side of the double standing sheet initiates at the proximal edge fixed to the side edge of the liquid pervious sheet (1) and is fixed to the liquid impervious sheet (2) along its extended peripheral side portion in the laterally outboard portion with respect to the proximal edge and the proximal edge where the internal side of the double standing sheet is fixed to the liquid pervious sheet 1, defines a base line from which each standing cuff B stands such that said free portion has a base line for standing in a side flap being outboard with respect to the side edge of said absorbent core,wherein the free portion includes a standing portion (10) which stands from the base line toward the longitudinal centerline of said article and a contacting portion (20) which folds back halfway outwardly;wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;and said standing cuff (B) stands toward said wearer’s leg by means of a stretching force of said stretching members (5) in a used condition, while the extended peripheral side portion of the absorbent sheets (3A, 3B) and the absorbent core (3) are deformed and lifted such that said side flap between said side edge of said absorbent core (3) and said base line for standing is deformed and a deep pocket space is formed in the diaper.
The Board found this claim not to comply with A 123(2):
[2.1] The feature of claim 1
“wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;” (specified as “feature (iii)” in the following text)
results, in particular with regard to the wording “in the vicinity of the fold”, in subject-matter which does not meet the requirement of A 123(2).
[2.2] Objection had been made already to this feature in the decision under appeal (point 126.96.36.199) as contravening the requirement of A 123(2).
[2.3] The appellant was of the view that although there was no literal disclosure of such wording, the drawings shown in Figures 1 to 3, which refer to the first and second embodiments, clearly disclosed such feature and claim 1 defined the essential features of these embodiments. In particular, it considered the black dot in the double standing sheet (in Figure 2) close to the position separating the standing portion (10) from the surface contacting portion (20) as representing the stretching member which extended in the vicinity of the fold. Additionally, paragraphs  and  (A-publication) should be interpreted in such a way that they confirmed this disclosure.
[2.4] When scrutinizing the disclosure in the above cited Figures and paragraphs, there is no clear and unambiguous disclosure with regard to a stretching member “in the vicinity of the fold” as claimed, for the reasons given infra.
[2.4.1] The wording of paragraph  (A-publication) does not refer to a stretching member in the vicinity of the fold but to a plurality of stretching members as extending in the vicinity of the side edge of the surface-contacting portion 20 and is worded as follows:
“In the more preferable aspect, the stretching members 5, 5 ... extend in the vicinity of the base line for the standing portion 10, in the vicinity of the distal edge of the double standing sheet, and in the vicinity of the side edge of the surface-contacting portion 20. In addition, a plurality of stretching members 5, 5 ... preferably extend in the vicinity of the side edge of the surface-contacting portion 20 as shown. Additionally, in order to improve the standing ability of the standing portion 10, a plurality of stretching members 5, 5... may further extend on the standing portion 10. In the Figure are shown six stretching members in total.”
[2.4.2] When considering Figure 2 for the presence of such stretching members, the surface-contacting portion 20 is shown as being provided with two stretching members, one of which is positioned in the (outer or distal) side edge of the surface-contacting portion, which edge represents the upper end of the free portion when standing; and the other stretching member is positioned slightly inboard of this edge. Both stretching members are identified via the reference numeral 5. No further stretching member is shown as being located on (or within) the surface-contacting portion.
[2.4.3] In Figure 2 there are two further stretching members identified via the reference numeral 5. However, these stretching members are within the standing portion 10 of the free portion and are located at the base end and in the middle between the base end and the distal end of the standing portion, respectively. Hence, these stretching members cannot represent stretching members extending in the vicinity of the side edge of the surface-contacting portion such as set out in paragraph .
[2.4.4] Additionally, there are two further numerically unreferenced black dots within the standing portion 10, one of which is close to the edge which joins the surface contacting portion 20 to the standing portion 10. However, on the one hand this black dot cannot be clearly and unambiguously identified as a stretching member because it is not indicated with the corresponding reference number, and on the other hand, it is not clear whether it is this fold which is to be considered. There are two folds possible in the double-layered standing sheet: one fold concerns the folding in relation to the surface-contacting portion, the other fold concerns the folding of the fixed portion in relation to the free portion when fitting the article. Since there is one stretching member 5 exactly at this latter position for folding/upstanding of the cuff – at the base end –, no clear and unambiguous disclosure is present with regard to which fold is concerned.
[2.4.5] The further reference to the disclosure in paragraph  is also not unambiguous. This paragraph refers to the second embodiment, shown in Figure 4, which is said to differ from the first embodiment in that the stretching member is present in the vicinity of the edge where the surface-contacting portion (20) folds back halfway. Hence, this reference cannot clarify the description provided in paragraph  either - on the contrary, it highlights that in the first embodiment no such stretching member should be present at that location. It may be noted also that the claim defines “stretching members” in the vicinity of the fold, whereas, even when considering Figure 2, a single stretching member (if this is the “black dot” mentioned earlier) is present on the end part of the standing portion 10 close to the joining fold.
[2.5] Accordingly, the main request is not allowable under A 123(2) at least because there is no clear and unambiguous disclosure in the application as filed for the feature “wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;” in combination with the further features in claim 1 concerning the claimed embodiment.
[2.6] Moreover, the features of paragraphs  and  of the application as filed (A-publication) which are also disclosed in combination with the embodiment which the appellant claims are omitted. These features concern in part the standing cuff which is made double by folding the inside of the standing sheet inwardly so as to be shorter than the outside and the fixation of the standing cuff in the front and back ends of the diaper body. These features are also related in particular to the functions of “volume” and “sealing” which were emphasized by the appellant as being essential for the invention. Accordingly, these features are disclosed in a functional and structural relation to the claimed embodiment whereby, via their omission, the requirement of A 123(2) is not met since an unallowable intermediate generalisation of the content of the application as filed has occurred. Hence, the main request is not allowable at least for the foregoing reasons.
The appellant also requested the Board to refer the following questions to the Enlarged Board of appeal (EBA):
1. Is the drastic consequence of G 1/93 (the so-called A 123(2)/123(3) trap) still valid, although no contracting state of the EPC and no other country in the world followed that approach?2. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of A 123 while no rights can be derived from features that relate to said subject matter in the sense that said features must not be considered to delimit the subject matter over prior art but restrict the scope?3. Is there a difference in answering questions 1 and 2, if an amendment which leads to the drastic consequence that a feature cannot be deleted because of A 123(3) but extends beyond application as filed has been carried out during the international phase of a PCT application which then entered the regional phase in Europe or if that amendment has been carried out during the granting proceedings before the EPO?4. If questions 1 and 2 are answered in the negative, does there exist another possibility of escaping the so-called A 123(2)/123(3) EPC trap?
The Board refused to refer the questions to the EBA:
[8.1] The conditions in A 112(1) for referring a question to the EBA are either that a reference is necessary to ensure a uniform application of the law or that a point of law of fundamental importance arises. Neither of these questions is met in regard to the questions […] which the appellant requested to have referred.
[8.2] Concerning the alleged non-uniform application of law, this requirement in general refers to non-uniform application of the law by the Boards of Appeal: the EBA does not have the power to ensure uniform application of the law between the Boards of Appeal and national courts. A lack of uniformity between the law as applied by the Boards of Appeal and national courts could in theory bring to the fore a point of law of fundamental importance, something which is considered in the next paragraph. As to non-uniform application of the law by the Boards of Appeal, the appellant did not in fact suggest that the principles laid down in G 1/93 have not been consistently applied by the Boards of Appeal.
[8.3] As to whether a point of law of fundamental importance arises, no such issue is apparent. The relevant issues have already been decided by the EBA in G 1/93 and it has not been shown that any legal or technical developments have occurred in the interim making it desirable in the public interest to have the issues reviewed again by the EBA: T 82/93. The appellant did not provide evidence that the contracting states of the EPO had not followed the principles of G 1/93 concerning the relation between A 123(2) and (3). The separate footnote solution applied in Germany does not support a trend in Europe but rather represents an isolated approach which in fact was held not allowable in G 1/93.
[8.4] By question 2 it appears to the Board that the appellant asks a question which is in fact not related to the facts of the present case. The point is that the omitted features do make a technical contribution to the claimed subject matter since they concern the structures which give rise to the specific configuration of the article […]. The question is therefore not relevant because its premise (“while no rights can be derived from features that relate to said subject matter in the sense that said features must not be considered to delimit the subject matter over prior art but restrict the scope”) does not apply.
[8.5] As to question 3, irrespective of when the amendments leading to such a situation were made, the requirements of A 123(2)/123(3) have to be met as set out in G 1/93. The issue of the amendments being made during the international phase of the application does therefore not alter the applicable case law. It is also noted that when entering the European regional phase, the applicant was not required to proceed with any amendments it had made in the international phase.
[8.6] Thus, when addressing the four questions posed by the appellant, there is no evidence for the allegation in question 1 that no contracting state of the EPC and no other country follows the approach of the EPC. The subject-matter of question 2 does not arise in the current case. Question 3 can be answered by the present Board to the effect that an application is not restricted to an amendment made at the international phase. Finally, question 4 has already been answered in item 2 of decision G 1/93.
[8.7] The request for referral of a question to the EBA is thus refused.
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