T 233/06 – Unfounded Presumption

** Translation from the French **

[10.3] When carrying out comparative trials in order to demonstrate the problem solved by the claimed subject-matter, the comparison has to be such that it convincingly shows that the distinctive feature(s), here the use of an alkyl(C8-C20)betaine, indeed allows to solve said problem in respect of the closest prior art.

[10.4] When dealing with complex cosmetic systems comprising a blend of a plurality of components that may have interactions [with each other], it is not possible to affirm a priori that in such compositions replacing one component by another of different structure but having the same function will necessarily lead to the same sensorial properties. For the same reasons, it is not possible to consider that an improvement of the smoothing (lissage) that is obtained by replacing cocoamidopropyl betaine and disodium cocoamphodiacetate by cocoylbetaine within the particular context of compositions B and C tested in document D14 would also have to be observed when the same substitution is made within the different context of example 11 of document D4, which is the closest prior art. As a consequence, in the absence of evidence or technical arguments which would make it credible, it cannot be considered that the improvement of smoothing that was found with respect to compositions B and C used in document D14 proves that such an improvement is also obtained with respect to the compositions of example 11 of document D4.

[10.5] The patent proprietor has argued that the comparison offered in document D14 rested on the principle put forward in decision T 197/86, according to which it could be necessary to modify the elements of comparison such that they differed by the distinctive feature only. However, in order for it to be possible to draw conclusions from the comparison offered in view of the problem solved with respect to the closest prior art, this [approach] presumes that the influence of the modification carried out on the closest prior art, in order to bring out the role of the distinctive feature, can be estimated in a reliable manner, which has not been demonstrated for the present trials. Therefore, the experimental report contained in document D14 cannot persuade the Board.

The Board then considers the comparative trials according to document D15, which are not found to provide credible evidence for the whole domain of claimed compositions. The Board concludes:

[10.9] According to the case law of the Boards of appeal, each party to the proceedings separately bears the burden of proof for the facts it alleges. If a fact which is important for the decision is not proven, the decision is taken to the detriment of the party which carries the burden of proof for this fact (see Case Law of the Boards of appeal of the EPO, 5th edition, 2006, VI.K.5.5.1.1). In the present case, it follows from the above that the allegation of the patent proprietor according to which the use of an alkyl(C8-C20)betaine, as compared to the use of cocoamidopropyl betaine or disodium cocoamphodiacetate, all other tings being equal, would result in an improvement of the smoothing of both wet and dry hair, has not been made credible in view of the technical arguments and the elements of proof cited. As a consequence, the improvement of the smoothing over the whole claimed domain is pure speculation and the shifting of the burden of proof in favour of the patent proprietor cannot possibly take place.

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