T 0048/13 (Microbicides/ROHM AND HAAS) of 12.11.2014

Summary of Facts and Submissions

I. The present appeal lies from the decision of the examining division refusing the European patent application No. 07 119 659.6, published as

EP-A-1 889 539, as a divisional application of the parent application number 06 255 041.3, published as EP-A-1 772 056.

II. The following documents were cited during the examination and/or appeal proceedings:

(1) EP-A-1 332 675

(2) EP-A-0 787 430

(3) EP-A-1 245 153

(4) J O Morley et al., Org. Biomol. Chem., 2005, 3, 3713 - 3719

(5) EP-A-1 462 003

III. The following abbreviations are used below:

MBIT N-methyl-1,2-benzisothiazolin-3-one

BBIT N-(n-butyl)-1,2-benzisothiazolin-3-one

MIT 2-methyl-4-isothiazolin-3-one

IV. The decision under appeal was based on the main and sole request filed with letter dated 10 June 2010.

The four independent claims of this request read as follows:

"1. A microbicidal composition comprising:

(a) N-(n-butyl)-1,2-benzisothiazolin-3-one; and

(b) chlorphenesin, wherein the weight ratio of N-(n-butyl)-1,2-benzisothiazolin-3-one to chlorphenesin is from 1:0.5 to 1:700.

3. A microbicidal composition comprising:

(c) N-(n-butyl)-1,2-benzisothiazolin-3-one; and

(d) phenoxyethanol, wherein the weight ratio of N-(n-butyl)-1,2-benzisothiazolin-3-one to phenoxyethanol is from 1:0.5 to 1:800.

5. A microbicidal composition comprising:

(a) N-methyl-1,2-benzisothiazolin-3-one; and

(b) chlorphenesin, wherein the weight ratio of N-methyl-1,2-benzisothiazolin-3-one to chlorphenesin is from 1:1 to 1:250.

7. A microbicidal composition comprising:

(a) N-methyl-1,2-benzisothiazolin-3-one; and

(b) phenoxyethanol, wherein the weight ratio of N-methyl-1,2-benzisothiazolin-3-one to phenoxyethanol is from 1:120 to 1:160."

V. The examining division considered that the subject-matter of claim 7 lacked an inventive step. The closest prior art was identified as being document (1), which disclosed biocides comprising MIT and phenoxyethanol. The problem was defined as lying in the provision of a more effective biocide, and this was assumed to have been solved in view of document (4), which demonstrated that MBIT was over 13 times more effective than MIT in inhibiting the growth of E. coli; even allowing for the possibility of antagonism, this assumption was safe. However, the disclosure of document (4) was also found to render the claimed solution obvious since the skilled person would be motivated to replace MIT with MBIT in order to solve the problem posed. Moreover, it was well within the normal competence of the skilled person to optimise the compositions comprising the active ingredients, thus arriving at the ratios claimed. The examining division considered its arguments to be in line with decision T 393/01.

VI. The appellant (applicant) lodged an appeal against this decision, and filed a statement of grounds of appeal.

VII. Oral proceedings were held before the board on 12 November 2014.

In its analysis of inventive step, the appellant agreed with the examining division's choice of closest prior art with respect to claim 7, but argued the problem-solution approach had been incorrectly applied, particularly in the reformulation of the problem from that disclosed in the application in suit. The skilled person would be aware of the fact that synergism was inherently unpredictable. There was no clear signpost in the prior art directing the skilled person to the claimed combination as a solution to the problem of providing further synergistic microbicidal compositions. The reasoning of decision T 393/01 was not applicable to the facts of the present case.

VIII. The appellant (applicant) requested that the decision under appeal be set aside and that a patent be granted on the basis of the following documents:

Description:

pages 1-12 filed during oral proceedings of 12 November 2014

Claims:

Nos: 1 to 7 of the main request filed with letter of 10 June 2010

IX. At the end of the oral proceedings, the decision of the board was announced.

Reasons for the Decision

1. The appeal is admissible.

2. Amendments (Articles 76(1) and 123(2) EPC)

The claims of the main request find their basis in the parent and divisional applications as originally filed (respective claims 1 and 2; parent application as originally filed: page 4, lines 13 to 16; page 5, lines 15 to 18; page 7, lines 25 to 28; and page 8, lines 21 to 24; divisional application as originally filed: page 4, lines 1 to 4; page 4, line 32 to page 5, line 2; and page 7, lines 4 to 7 and 31 to 33).

The requirements of Articles 76(1) and 123(2) EPC are therefore met.

3. Novelty (Articles 52(1) and 54 EPC)

None of the cited prior art documents specifically disclose compositions comprising the combinations of components in the ranges of weight ratios as claimed in the main request. Consequently, novelty is acknowledged for the claimed subject-matter.

4. Inventive step (Articles 52(1) and 56 EPC)

4.1 The four independent claims 1, 3, 5 and 7 of the main request are directed to microbicidal compositions comprising BBIT/chlorphenesin, BBIT/phenoxyethanol, MBIT/chlorphenesin, and MBIT/phenoxyethanol, respectively, in specific ranges of weight ratios of the two components (cf. above point IV). These combinations are disclosed to be synergistic, and to be useful in inhibiting the growth of microorganisms in various loci (application as originally filed, page 1, lines 3, 4; page 2, lines 14 to 19; and page 10, line 15 to page 11, line 12).

4.2 Claims 1 and 5

For the subject-matter of claims 1 and 5, which relate to combinations of BBIT and MBIT with chlorphenesin, document (5) can be seen as representing the closest state of the art.

Document (5) discloses synergistic microbicidal compositions comprising "substituted and unsubstituted 2-(C1-C4)alkyl-4-isothiazolin-3-ones", most preferably MIT, in combination with MBIT (see paragraphs [0003], [0004], [0008], [0025]; page 13, line 15 to page 16, line 30; claim 9).

The problem to be solved in the light of document (5), as indicated in the application in suit (page 1, lines 3, 4, 15 to 17), can be seen in the provision of further synergistic microbicidal compositions.

The solution proposed in claims 1 and 5 relates to compositions characterised in that the MIT component is replaced by chlorphenesin.

The experimental results reported in Tables 8 and 35 of the application as originally filed render it credible that synergy can be achieved for the claimed combinations within the range of weight ratios claimed. Having regard to this data, the board is satisfied that the problem has been solved.

Since none of the cited documents (1) to (5) disclose chlorphenesin or structurally related compounds, no incentive is provided that would lead the skilled person to undertake the present modification to the compositions disclosed in document (5) as a solution to the problem posed.

Claims 3 and 7

4.3 For the subject-matter of claims 3 and 7, which relate to combinations of BBIT and MBIT with phenoxyethanol, document (1) can be seen as representing the closest state of the art.

Document (1) relates to synergistic microbicidal combinations of MIT with one or more selected commercial microbicides, with areas of application similar to those disclosed in the present application (paragraphs [0001], [0011], [0018] and [0019]). Phenoxyethanol is listed as one of the possible second components, and combinations thereof with MIT are specifically claimed and exemplified (see e.g. paragraph [0005], Table 6, and claim 6).

4.4 The problem to be solved in the light of document (1), as indicated in the application in suit (page 1, lines 3, 4, 15 to 17), can be seen in the provision of further synergistic microbicidal compositions.

4.5 The solution proposed in claims 3 and 7 relates to compositions characterised in that the MIT component is replaced by BBIT or MBIT.

The experimental results reported in Tables 18 and 45 of the application as originally filed render it credible that synergy can be achieved for the claimed combinations within the range of weight ratios claimed. Having regard to this data, the board is satisfied that the problem has been solved.

4.6 It remains to be investigated whether the proposed solution would have been obvious to the skilled person in the light of the prior art.

4.6.1 As outlined above in point 4.3, document (1) itself discloses MIT to be a mandatory component of the compositions. Therefore, this document, taken alone, does not point to the solutions proposed.

4.6.2 A number of further documents were cited relating to synergistic microbicidal compositions comprising an isothiazolinone and a second component (see document (2), page 3, lines 1 to 54; document (3), paragraphs [0001], [0008] to [0010]; document (5), paragraph [0004]). However, none of these documents are considered to render the present modifications to the closest prior art compositions obvious:

In documents (2) and (3), the second component is structurally remote from phenoxyethanol (see document (2), page 4, line 29 to page 5, line 15; document (3), paragraph [0014]). Therefore, the skilled person would not be able to extract any valuable teaching from these documents with respect to possible modifications of the isothiazolinone component in combinations with phenoxyethanol.

Document (5) discloses compositions comprising MBIT. However, this is combined with a further isothiazolinone, preferably MIT (see above point 4.2, second paragraph). These combinations of two isothiazolinones are remote from the claimed subject-matter.

4.6.3 The remaining cited document (4) also does not suggest the present solutions:

Document (4) is a scientific article reporting a study aimed at developing a quantitative structure-activity relationship for a series of isothiazolinones, including MIT and MBIT, based on an evaluation of the minimum inhibitory concentration for E. Coli (see abstract and Scheme 1).

However, the relative biological efficacies of individual isothiazolinones, as disclosed in document (4), do not allow the skilled person to draw any conclusions as to whether they would act synergistically when combined with further biocides. Therefore, no incentive is provided that would lead the skilled person to modify the compositions disclosed in document (1) in the expectation that synergy would be maintained.

4.7 The board cannot follow the analysis of inventive step with respect to claim 7 set out in the decision under appeal:

Therein (cf. above point V), it was accepted that document (1), which disclosed synergistic biocidal mixtures, constituted the closest prior art, in line with the prior art identified in the application as originally filed (see page 1, lines 8 to 12). However, the problem indicated, namely, the provision of further synergistic microbicidal compositions (page 1, lines 3, 4, 15 to 17), was considered to be artificial in light of the closest prior art. The problem was therefore reformulated as the provision of a more effective biocide. Based on the disclosure of document (4), the reformulated problem was assumed to have been successfully solved, and the claimed solution considered to be obvious (cf. decision under appeal, points 16, 17 and 22).

However, according to the problem-solution approach (see "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, chapter I, section D, points 4.3.2, 4.4.1, 4.4.2), it is the problem described in the patent application that is normally used as the starting point for assessing inventive step. The problem may have to be reformulated under specific circumstances, for example, if examination shows that an inappropriate prior art had been used to define the problem. As outlined above, this is not the case here. Alternatively, a reformulation may be required, in particular, in less ambitious terms, if it emerges that the problem originally formulated had not been solved over the whole area claimed. In the decision under appeal, the step of assessing whether the problem defined in the application had been solved was omitted. Nevertheless, the problem was reformulated in terms that had not been invoked by the appellant.

The justification provided for the reformulation of the problem was that the originally defined problem was artificial. However, the board cannot see why the provision of synergistic mixtures of known biocides, which allow the use of lower concentrations thereof, should not be seen as a legitimate and desirable objective, in view of the environmental and economic benefits achievable (see application, page 1, lines 15 and 16). This is corroborated by the fact that several of the cited prior art documents also strive to achieve this effect (see above points 4.3 and 4.6.2).

Consequently, the reformulation of the problem in the decision under appeal is not considered to be appropriate.

The cited decision T 393/01 differs from the present case in several aspects. For example, in contrast to present document (1), the closest prior art in decision T 393/01 is silent about any synergistic effect, but discloses that the compositions in question are "the most efficient means of protection against microbiological spoilage"; in the light thereof, the problem to be solved was formulated accordingly (points 2.1 and 2.2 of Reasons). Moreover, in said decision, the issue of whether the problem posed had been plausibly solved was based on the data available (point 2.3 of Reasons), and the obviousness of the solution was assessed in view of further prior art (point 2.4 of Reasons). In contrast, in the decision under appeal, a circular argument was employed whereby the problem was assumed to be solved and the solution rendered obvious based on the same disclosure of a single document.

4.8 In view of the above considerations, the board concludes that the subject-matter of claims 1, 3, 5 and 7, and of claims 2, 4 and 6 dependent thereon, involves an inventive step. Therefore, the subject-matter of the main request fulfills the requirements of Article 56 EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent in the following version:

Description:

pages 1-12 filed during oral proceedings of 12 November 2014

Claims:

Nos: 1 to 7 of the main request filed with letter of 10 June 2010