T 714/08 – Harsh As Harsh Can Be

This is another example for the very severe application of A 123(2) by the Boards.

Claim 1 as granted was directed at a hair dyeing composition comprising at least one first oxidation base chosen from two compounds and their salts, at least one coupler chosen among some particular derivatives having a generic formula (I) and at least one second oxidation base chosen among some particular derivatives having a generic formula (II).

Claim 3 as granted gave a list of twelve derivatives of formula (I).

The opposition division revoked the patent for lack of inventive step.

The main request filed before the Board corresponds to a combination of claims 1 and 3 and the deletion of one of the alternatives for the first oxidation base. The figure (click to enlarge) gives a comparison of claim 1 of the main request and a combination of claims 1 and 3 as granted:

** Translation from the French **

[3.1] Claim 1 of the main request has been amended by limiting the first oxidation base to para-phenylenediamine and its salts and the list of couplers to 12 specific individual compounds and their salts.

[3.2] When assessing whether an amendment complies with the requirements of A 123(2) it is necessary to establish whether it introduces technical information which the skilled person would not have deduced directly from the patent application as filed (see T 288/92 [3.1] and T 680/93 [2])

It is undisputed that the application as filed cites (prévoit) para-phenylenediamine among others as first oxidation base and the twelve individual compounds listed in claim 1 as amended (see claims 1 and 3 of the application as filed) among others as couplers.

However, by limiting the first oxidation base to para-phenylenediamine and its salts alone and the couplers to twelve specific individual compounds and their salts, claim 1 as amended individualises twelve base-coupler combinations, for instance the combination of para-phenylenediamine and 2,4-diamino-1-ethoxybenzene or [the combination] of para-phenylenediamine and 2 amino-1-(β-hydroxyethyloxy)-4-methylaminobenzene. However, these specific couples are not disclosed in the application as filed which provides that the composition comprises at least one first oxidation base chosen from para-phenylenediamine and 2-methyl-para-phenylenediamine (claim 1) but does not define which particular base is combined with which particular coupler. Thus the specific combination of para-phenylenediamine with each of the twelve couplers of claim 1 as amended cannot be deduced directly and unambiguously from the patent application as filed.

[3.4] According to the [patent proprietor] para-phenylenediamine is already individualised as preferential first oxidation base in the patent application as filed on page 14, lines 8 to 11. Therefore, its combination with each of the twelve specific couplers as required by claim 1 as amended was already foreseen in the application as filed. Thus claim 1 as amended did not extend the subject-matter of the patent beyond the content of the application as filed. However, the passage on page 14 to which the [patent proprietor] refers is limited exclusively to the particular example 6 which associates para-phenylenediamine and 2,4 diamino1 (β hydroxyethyloxy)benzene dihydrochloride and thus cannot be interpreted as a general teaching limiting the first oxidation base to para-phenylenediamine and associating it with each of the twelve specific couplers according to claim 1 as amended. Therefore, this argument has to be dismissed.

Moreover, the case differs from the cases where limitations have been carried out in chemical formulas of the Markush type as in decisions T 615/95 and T 50/70. As a matter of fact, in those cases the limitation does not result from the individualisation of particular combinations as in the present case, but conserve the generic nature of the chemical formula defining the claimed products (T 615/95 [6] and T 50/70 [2.1, 3rd paragraph]).

[3.5] Consequently, the amendment of claim 1 according to the main request extends the subject-matter of the patent beyond the content of the application as filed and, therefore, does not comply with the requirements of A 123(2). As a consequence, the request has to be dismissed.

I guess many of us will have to change their drafting techniques in view of this severe application of A 123(2). I plan to deal with this question after we have seen some more recent A 123(2) decisions.

If interested in Markush claims, you might also have a look at another recent post.

To read the whole decision (in French), you may click here.