BESCHWERDEKAMMERN BOARDS OF APPEAL OF CHAMBRES DE RECOURS

DES EUROPÄISCHEN THE EUROPEAN PATENT DE L’OFFICE EUROPEEN

PATENTAMTS OFFICE DES BREVETS

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Datasheet for the decision

of 8 May 2007

Case Number: T 0876/06 - 3.3.09

Application Number: 98933792.8

Publication Number: 1007597

IPC: C09J 153/02

Language of the proceedings: EN

Title of invention:
Biological fluid absorbing pressure sensitive adhesives

Patentee:
AVERY DENNISON CORPORATION

Opponent:
Coloplast A/S

Headword:
-

Relevant legal provisions:

EPC Art. 123(2), 111

Keyword:
"Limitation of range by defining a lower limit"
"Added subject-matter - no"
"Remittal for further prosecution"

Decisions cited:
G 0001/93, G 0001/03, G 0002/98, T 0201/83

Catchword:
-

EPA Form 3030 06.03

 Europäisches European Office européen

b Patentamt

Beschwerdekammern
Patent Office

Boards of Appeal
des brevets

Chambres de recours

Case Number: T 0876/06 - 3.3.09

D E C I S I O N
of the Technical Board of Appeal 3.3.09
of 8 May 2007

Appellant: AVERY DENNISON CORPORATION

(Patent Proprietor) 150 North Orange Grove Boulevard
Pasadena, CA 91103 (US)

Representative: Bankes, Stephen Charles Digby

BARON & WARREN
19 South End
Kensington
London, W8 5BU (GB)

Respondent: Coloplast A/S

(Opponent) Holtedam 1
DK-3050 Humlebaek (DK)

Representative: Inspicos A/S

Bøge Allé 5
P.O. Box 45
DK-2970 Hørsholm (DK)

Decision under appeal: Decision of the Opposition Division of the

European Patent Office posted 3 April 2006
revoking European patent No. 1007597.

Composition of the Board:

Chairman: P. Kitzmantel
Members: J. Jardón Álvarez
W. Sekretaruk
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Summary of Facts and Submissions

I. The grant of European patent No. 1 007 597 in respect

of European patent application No. 98933792.8 in the
name of AVERY DENNISON CORPORATION, which had been
filed on 14 July 1998, was announced on 23 April 2003
(Bulletin 2003/17) on the basis of 17 Claims.
Independent Claims 1 and 17 read as follows:

"1. A pressure-sensitive adhesive material comprising a

mixture of:

(a) a continuous phase formed from a physically

cross-linked solid rubber, a compatible liquid
rubber and 0 to 15 wt.% of resinous materials,
based on the total composition, wherein the weight
ration of liquid rubber to solid rubber is at
least 3:2; and

(b) 10 to 70% by weight, based on the total

adhesive material, of a discontinuous phase
comprising one or more hydrophilic polymers that
are soluble and/or swellable in water.

17. An adhesive barrier or dressing for medical use,

comprising a non-adhesive, waterproof film having
coated thereon a layer of a pressure-sensitive adhesive
material according to any preceding claim."

Claims 2 to 16 were dependent claims.

II. A Notice of Opposition was filed against this patent by

Coloplast AS on 23 January 2004. The Opponent requested
the revocation of the patent in its entirety on the

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grounds of Article 100(a) EPC for lack of novelty and

inventive step and Article 100(c) EPC for subject-
matter which extended beyond the content of the
application as originally filed.

III. By its decision announced orally on 15 March 2006 and

issued in writing on 3 April 2006, the Opposition
Division revoked the patent on the grounds of added
subject-matter (Article 123(2) EPC) and lack of clarity
(Article 84 EPC) of all the requests pending before the
Opposition Division.

The Opposition Division held that the feature "tacky

adhesive" used in the amended claims was of subjective
nature only and not clear and concise as required by
Article 84 EPC.

The Opposition Division held further that the lower

limit of the range for the ratio of liquid rubber to
solid rubber (3:2) contravened Article 123(2) EPC
because this value was picked out of a group of values
for the ratio of liquid to solid rubber consisting of
1:1, 3:2, 2:1 and 4:1. The value, being an intermediate
value, could not be used to form the lower limit of the
claimed range. Moreover, the value could not be
isolated from the other features in the examples such
as the specific liquid rubber type (LVSI-101) and the
specific polymer stabiliser (IRGANOX 1010) used. Under
these circumstances, a generalization could not be
allowed.

The Opposition Division also objected to the terms

"tacky adhesive" and "imparting tackiness and adhesion"

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as extending beyond the content of the application as

originally filed.

IV. On 6 June 2006 the Patent Proprietor (Appellant) lodged

an appeal against the decision of the Opposition
Division and paid the appeal fee on the same day.

In the Statement of Grounds of Appeal filed on

11 August 2006, the Appellant requested that the
decision of the Opposition Division be set aside and
the case be remitted to the Opposition Division for
further prosecution on the basis of an amended set of
claims. Amended Claim 1 read as follows:

"1. A pressure-sensitive adhesive material comprising a

mixture of:

(a) a continuous phase formed from a physically

cross-linked solid rubber and a compatible liquid
rubber, wherein the weight ratio of liquid rubber
to solid rubber is from 3:2 to 7:1 and

(b) 20 to 55 percent by weight, based on the total

adhesive material, of a discontinuous phase
comprising one or more hydrophilic polymers that
are soluble and/or swellable in water, said
adhesive material being free of resinous
materials."

V. The Respondent (Opponent) presented its

counterstatement by letter dated 3 January 2007 and
requested that the appeal be dismissed and the patent
be revoked in its entirety.

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VI. On 7 February 2007 the Board dispatched a summons to

attend oral proceedings on 8 May 2007. In the annexed
communication pursuant to Article 11(1) of the Rules of
Procedure of the Boards of Appeal, the Board expressed
its preliminary opinion on the case. The Board
considered that the subject-matter of amended Claim 1
fulfilled the requirements of Article 123(2) EPC. The
Board also expressed its intention to remit the case to
the Opposition Division for further prosecution of the
file.

VII. By letter dated 1 March 2007, the Appellant filed a

corrected version of Claim 3, including a line
inadvertently omitted during typing.

VIII. By letter dated 5 April 2007, the Respondent filed

further arguments in support of its request.

IX. The arguments presented by the Appellant in its written

submissions and at the oral proceedings may be
summarized as follows:

− The Appellant pointed out that of the four

amendments objected to by the Opposition Division,
only one was retained in the present claims, namely
the one concerning the range of the weight ratio of
liquid to solid rubber, whose upper limit of 7:1 was
derived from page 10, lines 23 to 26 of the
application as filed and whose lower limit of 3:2
was supported by several of its worked examples. It
furthermore pointed out that only a few of the
examples in the granted specification were excluded
from the newly defined range.

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− The Appellant further pointed out that the selected

lower limit, when used in the examples, was
independent from the other features of the examples
and thus fulfilled the requirements imposed by the
decision T 201/83 (OJ EPO 1984, 481).

X. The arguments presented by the Respondent in its

written submissions and at the oral proceedings may be
summarized as follows:

− The Respondent, referring to G 1/93 (OJ EPO 1994,

541), G 1/03 (OJ EPO 2004, 413) and G 2/98 (OJ 2001,
413), pointed out that the relevant question in
relation to amendments was whether the skilled
person could derive the relevant subject-matter from
the original disclosure directly and unambiguously,
using common general knowledge. This test was not
met by the lower limit of 3:2 for the liquid to
solid rubber weight ratio range. That the
generalization of this feature from the examples was
not possible, was inter alia apparent from the fact
that all the examples by which the amendment was
alleged to be supported used the same liquid rubber
and the same SIS (styrene-isoprene-styrene) type
solid rubber.

− The Respondent noted that in the present case the

value 3:2, though being an "intermediate value"
taken from a series of examples in the application
as originally filed involving higher and lower
weight ratios, was used to form the "lower end-
point" of the range. In its opinion this situation
was fundamentally different from the situation which
was the subject of the decision in T 201/83

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concerning EP - 0 019 945, where the lowest value of

690 ppm calcium disclosed in the relevant examples,
which also met the requirement of the amended
concentration range of magnesium (cf. Melt No. 8 on
page 5), was chosen. T 201/83 could not therefore be
used to justify the amendment under consideration
here.

− Moreover the Respondent was of the opinion that the

principles applied in T 201/83 have in the meantime
been overruled by decisions G 1/93, G 1/03 and
G 2/98.

XI. The Appellant (Patent Proprietor) requested that the

decision under appeal be set aside and the case be
remitted to the Opposition Division for further
prosecution on the basis of the set of Claims 1 to 13
of the main request (Claims 1 to 4, 5 (in part), filed
with letter dated 1 March 2007 and Claims 5 (in part)
and 6 to 13 filed on 11 August 2006.

The Respondent (Opponent) requested that the appeal be

dismissed.

Reasons for the Decision

1. The appeal is admissible.

2. Clarity (Article 84 EPC).

2.1 The amended claims now under consideration no longer

include the expression "tacky adhesive" objected to by
the Opposition Division. Consequently, the amendment

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made overcomes the lack of clarity objections made by

the Opposition Division in the appealed decision.

2.2 No objections under Article 84 EPC were raised by the

Respondent to the present claims during the appeal
proceedings and the Board sees no reason to take a
different view. Hence, it is unnecessary to go into
more detail in this respect.

3. Amendments (Article 123 EPC).

3.1 The only issue to be decided in the present appeal

proceedings is whether the subject-matter of the
amended claims fulfils the requirements of
Article 123(2) EPC.

3.2 Claim 1 is essentially based on Claim 1 as originally

filed wherein:

(i) the weight ratio of liquid rubber to solid rubber

has been defined as from 3:2 to 7:1 in accordance
with originally filed Claim 13 (for the upper
end-point) and examples 1, 2, 4, 6 and 7 (for the
lower end-point),

(ii) the range of contents for the discontinuous phase

has been limited to 20 to 55% by weight of the
total adhesive material in accordance with
Claim 6 as originally filed, and

(iii) the presence of a resinous material has been

excluded (support: page 7, lines 3 to 5 from the
bottom of the description as originally filed),

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3.3 Thus, amendments (ii) and (iii), as well as the upper

limit (7:1) for the range of the amendment (i), find
explicit support in the application as originally filed
and fulfil the requirements of Article 123(2) EPC.

This finding has not been disputed by the Respondent.

3.4 The only amendment disputed is the lower limit for the
weight ratio of liquid rubber to solid rubber (3:2),
for which there is no explicit basis in the claims or
in the description as originally filed. This value was
introduced during the examination proceedings in order
to overcome a novelty objection raised by the Examining
Division.

The application as originally filed referred on page 10,

lines 23 to 26 and in Claim 13 to a weight ratio of
liquid rubber to solid rubber of from 0.5:1 to 7:1.

The only possible basis for the amendment is the use of

a weight ratio of liquid rubber to solid rubber of 3:2
in examples 1, 2, 4, 6 and 7 of the application as
originally filed.

3.5 According to EPO practice, as stated for instance in

the Headnote of the decision T 201/83 (OJ EPO 1984,
481), an amendment of a concentration range in a claim
for a mixture is allowable on the basis of a particular
value described in a specific example, if the skilled
person could have readily recognised this value as not
so closely associated with the other features of the
example as to determine the effect of the invention as
a whole in a unique manner and to a significant degree.

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3.6 Applying this principle, it has therefore to be decided

in the present case whether or not the weight ratio of
liquid rubber to solid rubber set out in examples 1, 2,
4, 6 and 7 is in this sense closely associated with the
other features of these examples.

3.6.1 The patent in suit is directed to a pressure sensitive

adhesive comprising a mixture of a continuous phase and
a discontinuous phase. The application as originally
filed (page 8, line 34 - page 12, line 14) describes
the continuous phase as including a solid rubber and a
liquid rubber and as also including, optionally, other
materials such as low molecular weight polybutenes, to
modify its properties for certain uses, and/or polymer
stabilisers, to protect it from degradation during
processing.

3.6.2 Concerning the weight ratio of liquid rubber to solid

rubber it is stated that "the preferred weight ratio of
solid rubber to liquid rubber is in the range from
1:0.5 to 1:7, and is varied in order to obtain the
desired degree of adhesiveness and tackiness" (page 10,
lines 24 to 27, emphasis by the Board).

From this passage in the specification as originally

filed it can be inferred that the weight ratio of
liquid rubber to solid rubber is in principle
considered to be independent of the nature of the
rubbers used but that what is important for the claimed
invention is that the variation of their weight ratio
allows the modulation of the properties of adhesiveness
and tackiness.

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While it is correct, as argued by the Respondent during

the oral proceedings, that the worked examples show
that other constituents of the continuous phase,
including eg polyisobutylenes, have a considerable
impact on these properties, this does not detract from
the veracity of the above statement.

3.6.3 The possibility of varying the ratio of liquid/solid

rubber is demonstrated by the wide range covered by the
worked examples, which span weight ratios of liquid to
solid rubber varying from 1:1 to 4:1. Thus, in examples
3 and 8 a ratio of 1:1 is used; in examples 1, 2, 4, 6
and 7 the ratio is 3:2; in examples 5, 16 and 17 the
ratio is 2:1; and in examples 9 - 15 the value is 4:1.
In all the examples the same liquid rubber (LVSI-101)
is combined with different solid rubbers (Kraton KD-
1161N, Kraton D-1117, Kraton D-1119, Kraton D-1112,
Tacky G RP6919 and Exxon Vector 4111).

As for the use of the same liquid rubber (LVSI-101) in

all the examples, is it noted that there is no
indication in the application that the weight ratio of
liquid to solid rubber would be dependent on the kind
of liquid rubber used. Rather it is emphasised that,
apart from their common characteristics as liquid
rubbers implying inter alia an accordingly low
molecular weight and glass transition temperature,
their most important characteristic is their complete
compatibility with the solid rubber (cf. page 10, 2nd
paragraph of the application as filed, especially
page 10, lines 12 to 14). This, together with what is
set out above under point 3.6.2, indicates that the
ratio of liquid to solid rubber is not dependent on the
choice of a particular liquid rubber.

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As to the solid rubber, it was argued by the Respondent

that throughout those worked examples supporting the
3:2 weight ratio of liquid to solid rubber, the same
SIS triblock rubber type was always used. While this is
correct for the kind of repeating units (derived from
styrene and isoprene) of the Kraton rubbers used it is
not correct for their specific structure, which may
even vary considerably: Kraton D-1117: 17% styrene, 33%
diblock content; Kraton D-1119: 22% styrene, 66%
diblock; Kraton D-1112: 15% styrene, 38% diblock (cf.
page 16, Table 3, Formulas E2, E4, E5 (= examples 4, 6,
7) in conjunction with page 9, lines 12 to 17 and
page 17, lines 1 to 8).

A further argument put forward by the Respondent and

accepted by the Opposition Division was that the use of
the same stabiliser IRGANOX 1010 in all examples
militated against a generalisation of the liquid to
solid rubber weight ratio 3:2. Again, this reasoning is
not convincing in the light of the information in the
specification. Rather it is evident from the use of the
same amount of the same stabiliser in the examples
reported in Table 3, which use three different weight
ratios of liquid to solid rubber, that the liquid to
solid rubber ratio is selected independently of the
stabiliser and that these parameters are not linked.

3.6.4 In summary, the skilled person could have recognized in

the application as originally filed that the weight
ratio of liquid rubber to solid rubber was not so
closely associated with the other features of the
examples as to determine the effect of the invention as
a whole in an unique manner and to a significant degree.

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Thus, in the Board's judgment, in the present case it

is permissible to use the particular value used in
several examples to limit the range of the weight ratio
of liquid rubber to solid rubber.

The limitation of the claim represents merely a

quantitative reduction of a range to a value already
envisaged within the document and not an arbitrary
restriction providing a technical contribution to the
subject-matter of the claimed invention in accordance
with point 10 of the Reasons of T 201/83.

3.7 The Board also finds incorrect the argument of the

Respondent that the amendment in T 201/83 was only
considered allowable because it represented the lowest
value disclosed with regard to the then claimed
invention. While it is true that the value 690 ppm of
calcium was the lowest value exemplified for the
amended magnesium range 1 to 80 ppm, this fact played
no role at all for the conclusion arrived at in
T 201/83, according to which the amendment was only
allowed on the basis that the calcium value chosen was
functionally independent of the values of the other
component magnesium in the examples (Reasons, point 6).
The argument of the Respondent therefore goes against
the essence of the reasoning in that decision for
allowing the amendment and cannot therefore be accepted
by the Board.

The Board also disagrees with the argument of the

Respondent that decision T 201/83 has been overruled by
later decisions of the Enlarged Board of Appeal.
T 201/83 is not cited in any of the decisions mentioned
by the Respondent and the Board cannot see any other

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indication why this decision should be overruled by

them. Moreover the finding in the present decision that
the amendment is allowable is also in line with the
decisions cited by the Respondent in the sense that the
amendment at issue is considered directly and
unambiguously derivable from the application as
originally filed as explained above.

3.8 For these reasons the subject-matter of Claim 1 fulfils

the requirements or Article 123(2) EPC.

3.9 The subject-matter of Claims 2 to 13 is also based on

the application as originally filed (cf. Claims 2 - 5,
7-12, paragraph bridging pages 10 and 11 and Claim 15)
and also fulfils the requirements of Article 123(2) EPC.

4. Remittal (Article 111(1) EPC).

4.1 The Board has decided that the subject-matter of the

claims of the main request overcomes the objections
under Article 84 EPC and Article 123(2) EPC forming the
basis of the decision under appeal.

4.2 The Opposition Division has not yet taken a decision on

the other patentability issues raised by the Opponent,
namely, novelty and inventive step.

4.3 The Appellant has requested the remittal of the case to

the Opposition Division for further consideration of
these issues and the Respondent did not object to such
remittal.

4.4 In these circumstances, the Board considers it

appropriate to exercise its discretion under

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Article 111(1) EPC to refer the case back to the

Opposition Division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division for

further prosecution on the basis of the set of Claims 1
to 13 of the main request (Claims 1 to 4, 5 (in part)
filed with letter dated 1 March 2007 and Claims 5(in
part) and 6 to 13 filed on 11 August 2006).

The Registrar The Chairman

G. Röhn P. Kitzmantel

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