Interpretative spotlight : “volatile”

Claim 1 of the main request read:

Cosmetic composition, characterized in that it comprises, in a cosmetically acceptable medium, at least one fixing polymer, wherein the fixing polymer or polymers are present in concentrations of between 0.1 and 10% by weight, relative to the total weight of the composition, at least 5% by weight of a non-volatile aryl silicone and at least one volatile silicone, wherein the volatile silicone or silicones are present in concentrations of between 5% and 40% by weight relative to the total weight of the composition, and wherein the non-volatile aryl silicone or silicones are present in concentrations of between 5% and 40% by weight relative to the total weight of the composition.

The Board deals with the novelty of the claim with respect to document D9 (U.S. patent 5 106 609). In this assessment, the meaning of the expression “volatile” is crucial.

** Translation from the French **

[5.2] The objection of lack of novelty with respect to document D9 is based on the disclosure of example XIII concerning a hair styling conditioner composition comprising, relative to the total weight of the composition, 3% of a fixing polymer, 0.5% of a silicone gum, 3% of octamethyl cyclatetrosiloxane and 9% of phenyl pentamethyl disiloxane. It is undisputed that octamethyl cyclatetrosiloxane is a volatile silicone, but the parties did not agree on whether the phenyl pentamethyl disiloxane was volatile or not.

It is important to keep in mind that a claim must not be read without considering its function, i.e. delimitating the extent of protection that is sought by using language that is recognized (reconnu) in the field under consideration.

In the present case, the relevant question is not whether there is an absolute, clearly-defined border line between silicones that are said to be volatile and silicones that are said not to be volatile. The relevant question is whether, within the context of the present claim, that is to say in the context of cosmetics, the skilled person would be able to assign one of these categories to the silicones used in example XIII of document D9, without there being any ambiguity.

The absence of an absolute definition of the terms “volatile” and “non-volatile” in the field under consideration cannot be used as a pretext to arbitrarily (i.e. without any documents that provide corresponding evidence) place this border line between the two silicones used in example XIII of document D9. The aryl silicone used in the composition according to example XIII is mentioned as a solvent and referred to as a volatile silicone in the same way as octamethyl cyclotetrasiloxane and decamethyl cyclopentasiloxane (col. 24, lines 45 to 47), the term “volatile” being assigned to materials having a measurable vapour pressure (col. 16, lines 54 to 55), in the very same way as in the impugned patent (paragraph [0031]).

In the absence of any proof that phenyl pentamethyl disiloxane is also referred to as non-volatile silicon in the field of cosmetics, the Board has to conclude that the composition of example XIII of document D9 does not contain a non-volatile aryl silicone but a volatile aryl silicone. Moreover, the quantity of the volatile silicone required by claim 1 as amended excludes the quantity disclosed in example XIII of document D9. As a consequence, the disclosure of the composition of example XIII of document D9 cannot destroy the novelty of the claimed subject-matter.

To read the whole decision (T 488/05), please click here.