T 1968/09 () of 8.11.2012

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division dated 17 November 2008 refusing European patent application No. 03 256 092.2.

II. The decision was based on a single set of amended claims filed with letter of 1 March 2007. Independent claim 1 according to that request read as follows:

"1. A composition for conditioning or durably conditioning at least one keratinous fiber comprising:

(a) at least one silicone compound comprising at least one phosphate group; and

(b) at least one amine compound comprising greater than three amino groups that is not chosen from proteins or protein derivatives,

wherein said greater than three amino groups are identical or different; and

further wherein said at least one silicone compound and said at least one amine compound are present in a combined amount effective to condition the at least one keratinous fiber, and wherein durable conditioning means that following at least six shampoos after treatment, treated hair remains in a more conditioned state as compared to untreated hair."

III. According to the decision the claimed subject-matter did not meet the requirements of Articles 56 and 84 EPC for the following reasons:

(a) The subject-matter of claim 1 was not inventive in view of D1 (US-A-5 362 484), which disclosed a hair conditioning shampoo based on a silicone compound comprising at least one phosphate group, a hair conditioning silicone oil and a protein or protein derivative, in combination with D7 (EP-A-0 627 216), which disclosed a hair conditioning composition based on a polyimine, a fatty alcohol and a silicone oil. The tests on file did not illustrate a contribution over the teaching of those documents and the problem to be solved was both the provision of alternative conditioning compositions and the provision of conditioning compositions with durable conditioning. To solve the first problem it was obvious to combine the silicone phosphates and the amine compounds as defined in claim 1 following the teaching of D1 and D7.

(b) To the argument of the applicant that the limitation on the combined amount of silicone compound and amine compound (which was defined as "effective to condition the keratinous fiber") was important and excluded compositions which did not have a long lasting effect, the opposition division objected that, if it was not obvious to adapt the quantity and to choose the correct combination of ingredients to solve the technical problem, then an essential feature was missing in claim 1 and the claim attempted to define its subject-matter in terms of a result to be achieved. On that basis the claimed subject-matter was unclear (Article 84 EPC).

IV. The applicant (appellant) filed a notice of appeal against the above decision. With the statement setting out the grounds of appeal dated 20 March 2009 the appellant submitted three sets of claims as main, first and second auxiliary requests. In a further letter of 23 March 2009, the appellant submitted a further set as third auxiliary request.

Claim 1 of the main request was identical to claim 1 of the request on which the decision was based.

V. With letter dated 16 May 2012 the appellant sent amended first to fifth auxiliary requests in preparation to already convened oral proceedings, whereby two requests (first and third auxiliary requests) were newly filed and three requests (second, fourth and fifth auxiliary requests) corresponded to the previously filed auxiliary requests which were only renumbered.

Claim 1 of the first auxiliary request corresponded to claim 1 of the main request with the specification of a quantity range for component (a) ("0.1 to 30% by weight, relative to the total weight of the composition") and component (b) ("0.1 to 15% by weight, relative to the total weight of the composition"). Claim 1 of the second auxiliary request corresponded to claim 1 of the main request with the specification that component (b) is "chosen from polyamines". Claim 1 of the third auxiliary request included the amendments of both the first and the second auxiliary requests. Claim 1 of the fourth auxiliary request corresponded to claim 1 of the main request with the specification that component (b) is "chosen from polyethyleneimines". Claim 1 of the fifth auxiliary request corresponded to claim 1 of the fourth auxiliary request with the deletion of the first of the two alternative intended uses ("conditioning").

VI. In a communication dated 6 June 2012 and sent in preparation to oral proceedings the Board raised several objections including an objection related to the feature of claim 1 of the main request that components (a) and (b) "are present in a combined amount effective to condition the at least one keratinous fiber", which defined a result to be achieved and threw doubts on the clarity of the claim. In the communication it was noted that the issues raised for the main request appeared to be relevant for all auxiliary requests on file.

VII. With letter dated 2 November 2012 the appellant filed amended description pages for each of the auxiliary requests and confirmed that it would not be attending the oral proceedings.

VIII. Oral proceedings were held on 8 November 2012 in the announced absence of the appellant.

IX. The appellant, as far as relevant to the present decision, had essentially argued that the requirement that the silicone phosphate and the amine compound were present in a combined amount effective to condition excluded compositions that would not have a long lasting conditioning effect on the hair and that the evidence on file showed that, regardless of the structure of the amine compound, not all combinations would be in an amount effective to condition. A more precise limitation in terms of types and amounts of ingredients would not fairly reflect the contribution to the art, as the applicant had discovered that combining a silicone phosphate and an amine compound in an amount effective to condition resulted in a durable conditioning effect, which was not obvious from the prior art. Thus, the particular situation was an exception to the general rule that a claim defined in terms of a result to be achieved should not be allowed and the requirements of Article 84 EPC were met. Moreover, the skilled person could easily determine whether a combination would fall within the scope of the claims by performing a combability test as described in the application. The definition of the ingredients and of their quantities in claim 1 according to the auxiliary requests were in any case intended to take account of the clarity issue.

X. The appellant had requested in writing that the decision under appeal be set aside and that a patent be granted on the basis of the set of claims filed as main request with the statement setting out the grounds of appeal dated 20 March 2009, alternatively on the basis of one of the sets of claims filed as first to fifth auxiliary requests with letter dated 16 May 2012.

Reasons for the Decision

1. The appeal is admissible.

Main request - clarity

2. Claim 1 of the main request is directed to a composition "for conditioning or durably conditioning at least one keratinous fiber". It is the generally accepted understanding that in patent terms this indicates that the composition is suitable for the specified function and that by means of that specification compositions are excluded which contain ingredients which impair the given function.

2.1 In addition to the general suitability for conditioning which is defined at the beginning of the claim, claim 1 of the main request includes a second condition for the claimed composition which is related to the conditioning effect, namely that the two defined ingredients of the composition (the silicone compound (a) and the amine compound (b)) "are present in a combined amount effective to condition the at least one keratinous fiber".

2.2 This second condition by means of the explicit reference to the amount cannot be understood by the skilled person as repeating a generic suitability to conditioning, but is meant to indicate a specific limitation on the combined quantity of the two compounds. This is in agreement with all the arguments of the appellant, who relied on that feature to quantitatively delimit the presence of the two compounds in the claim and support the provision of an inventive step.

2.3 In spite of that the claim fails to define a quantitative condition which should be met in order for a keratinous fiber to be considered as conditioned, i.e. which level of improvement, e.g. in combability, is considered to be an effective conditioning. In addition, it is not credible that the effectiveness in conditioning depends exclusively on the amount of the two ingredients in the composition and not additionally on other parameters, such as the quantity of composition which is applied to the fiber, which are not features of the composition, but depend on the method of application of the same and are not defined.

2.4 Under such conditions it is not possible for the skilled person to verify whether a composition including the two ingredients falls under the claim or not.

2.5 This deficiency of the claim goes against the requirements of Article 84 EPC which specifies that the claims "shall define the matter for which protection is sought" and "shall be clear".

2.6 It is established case law that the purpose of the claims as defined by Article 84 EPC is to enable the protection conferred by the patent to be determined and consequently to permit, in order to assess the patentability requirements, a comparison with the available state of the art (G 2/88, OJ EPO 1990, 93, points 2.5 and 7 of the reason; Case Law of the Boards of Appeal of the EPO, 6th edition 2010, II.B).

2.7 As the features under analysis do not make that comparison possible by not giving the conditions under which one can verify whether a composition including the two ingredients falls under the claim or not, claim 1 of the main request cannot be considered as meeting the requirements of Article 84 EPC.

2.8 While lack of clarity can be concluded on the basis of the previous considerations alone, taken into account that the principle of clarity stipulated by Article 84 EPC requires that it must be possible to understand the claims without reference to the description (Case Law, supra, C.II.B.5.3.5, page 286), the Board notes for the sake of completeness that the description is also not helpful in defining the disputed condition.

2.8.1 "Conditioning" is defined in the description as "imparting to at least one keratinous fiber at least one property chosen from combability, manageability, moisture-retentivity, luster, shine, and softness" (paragraph [0021] of the description, first sentence). It is then added that the "state of conditioning is evaluated by measuring, and comparing, the ease of combability of the treated hair and of the untreated hair in terms of combing work (gm-in)" with reference to examples 1 to 8 (paragraph [0021], second sentence).

2.8.2 In the examples solutions containing the ingredients are applied to the hair and the combing work before and after treatment is measured in order to compute a % improvement of the combing work (page 19 of the description as filed), which is evaluated after treatment and after 6 shampoos (tables in examples 1 to 8).

2.8.3 However, it is not said which of the two values of the % Improvement (after treatment and after 6 shampoos) is to be taken into account to consider the composition effective to condition. Additionally, it is not said which value of the improvement is considered to be an effective conditioning and it is not credible to consider that any small positive value is an effective conditioning. Moreover, it is noted that it is nowhere defined that the test defined in example 1 is the one which corresponds to the condition defined in the claim and that different results would be obtained by applying different quantities of the composition under different conditions (time of application, rinsing, shampooing). Finally, it is not said how one could measure all the additionally properties which according to the application fall under the term conditioning (paragraph [0021], as cited in paragraph 2.8 above).

First auxiliary requests - clarity

3. Claim 1 of the first auxiliary request corresponds to claim 1 of the main request with the specification of quantity ranges for components (a) and (b) ("0.1 to 30% by weight" and "0.1 to 15% by weight" respectively).

3.1 By means of the amendment, claim 1 of the first auxiliary request includes two independent conditions on the amounts of components (a) and (b), namely a definition of broad ranges for the quantities of the two ingredients taken independently from each other (the added feature) and a second condition on the combined amount of the two by means of the effect to be achieved (already present in claim 1 of the main request and discussed above under point 2).

3.2 The addition of an independent condition on the quantities of the components which needs additionally to be met does not change the fact that the condition on the combined amount of the ingredients is still required and remains unclear.

3.3 Claim 1 of the first auxiliary request therefore does not meet the requirements of Article 84 EPC for the same reasons as detailed for the main request (point 2, above).

3.4 For the avoidance of doubts the Board notes that neither the wording of the claim, nor the disclosure of the description could support the argument that the addition of the quantity ranges results in a definition of what is meant by combined amount.

3.4.1 The claim includes both conditions without any indication that the first (the quantity ranges) is a definition of the second (the effective combined amount). Moreover, if that were the case, the second condition would be superfluous and the claim would not be concise (Article 84 EPC).

3.4.2 Similarly in the description broad ranges are disclosed individually for component (a) and component (b) (page 13 of the original description, paragraph [0069] for the silicone compound; paragraph [0076] bridging original pages 15 and 16 for the amine compound), but nowhere is it said that whenever the individual quantities fall into those ranges, then the condition that the combined amount of the components is effective to condition is satisfied.

3.4.3 Finally, even the argument of the appellant on inventive step that not all combinations of the ingredients would be in an amount effective to condition, is contrary to the view that, as soon as the quantities of the two ingredients fall into the very broad ranges, the critical condition is met.

Second to fifth auxiliary requests - clarity

4. The further amendments in claim 1 according to the second to fifth auxiliary requests (see point V, above), namely the specification that component (b) is "chosen from polyamines" or "from polyethyleneimines" and the deletion of the first of the two alternative intended uses, do not affect the clarity issue on the basis of which claim 1 of the main and of the first auxiliary request has been found not to meet the requirements of Article 84 EPC.

4.1 Claim 1 of the second to fifth auxiliary requests therefore does not meet the requirements of Article 84 EPC for the same reasons as detailed for the main and for the first auxiliary request (points 2 and 3, above).

5. As claim 1 according to all requests on file does not meet the requirements of Article 84 EPC, all requests must be rejected and there is no need for the Board to decide on any other issue.

ORDER

For these reasons it is decided that:

The appeal is dismissed.