T 1392/08 – Desperately Seeking S … ynergy

I owe the knowledge of this decision to Le blog du droit européen des brevets.

The decision deals with an appeal against the refusal of an application by the Examining Division (ED). Claim 1 of the main request before the ED read :

1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing. the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said at least one of flavor and fragrance producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s).

The ED found this claim to lack clarity and sufficiency of disclosure and finally rejected it for a lack of inventive step. Here is what the Examiners had to say on clarity (click to enlarge):

 

As far as sufficiency was concerned, the ED studied the comparative trials provided by the appellant and then concluded:

The same arguments were found to apply to claim 1 of the second auxiliary request, which is almost identical to claim 1 of the main request before the Board:

1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said deodorant composition comprising said at least one of flavor and fragrance in an amount producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s); wherein said at least one of flavor and fragrance is citrus-type fragrance, mint-type fragrance, wood-type fragrance, fruit-and floral-type fragrance, greenery- and floral-type fragrance, peppermint-type flavour, mint-type flavour, lemon-type flavour or perilla-type flavor.

Here is what the Board had to say :

[2.1] Claim 1 of the main request is directed to a deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the phenolic compound and further at least one of flavour and fragrance. The amount of flavour and fragrance is defined using a functional feature, namely that the composition comprises “the at least one of flavour and fragrance in an amount producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s)”.

[2.2] Thus Claim 1 requires the use of an amount of flavour or fragrance to obtain a deodorant composition “producing a synergistic deodorizing effect”, that is to say an additional effect that goes beyond the sum of the effect of each component taken in isolation.

[2.3] A 83 requires that the European patent application disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The requirements of A 83 are met if at least one way is clearly indicated in the patent specification enabling the skilled person to carry out the invention, and if the disclosure allows the invention to be performed in the whole area claimed without undue burden, if necessary applying common general knowledge.

In the present case the requirements of A 83 will be fulfilled if the skilled person knows, without exceeding his normal skills and knowledge, what he has to do in order to obtain compositions showing a synergistic deodorizing effect.

[2.4] The application as originally filed indicates the amounts of the single components, phenolic compound, enzyme and flavour and fragrance to be used in the composition […], but is silent about the amount to be used in order to achieve a synergistic deodorizing effect. Moreover, none of the examples in the application demonstrates that a synergistic deodorizing effect is achieved.

The experimental results reported in the application […] demonstrate that the urine smell can be suppressed using the claimed deodorizing compositions but they do not show that a synergistic effect is obtained. The results on Table 18 indicate that the malodour smelling index is reduced from 5.0 to 0, but this result can also be explained by an additive effect of the components as conceded the appellant during the OPs. Concerning the other results in Table 18, it is again noted that very good results are obtained for the freshness index, cleanliness index and pleasant feeling index when using all the components of the deodorant compositions, but the data given in the table do not allow the conclusion that these results are achieved by the presence of a “synergistic effect”.

The same considerations apply for the experimental results described on Tables 19 - 35 of the application as filed.

[2.5] It follows that the examples in the application do not allow the skilled person to prepare compositions wherein the flavour and fragrance is present “in an amount producing a synergistic effect”. Moreover, the absence of any other instructions as to the factors which affect the occurrence of a synergistically increased deodorizing effect obliges the skilled person to rely exclusively on trial and error experiments to establish which amounts may be used in the claimed compositions.

[2.6] According to EPO practice (see the “Case Law of the Boards of Appeal of the EPO”, 5th edition 2005, Chapter II.A.4, page 177), when trial and error experiments are required the disclosure in the patent should provide adequate information leading necessarily and directly towards success through the evaluation of the initial failures and, therefore, only a few attempts should be required to transform failure into success.

[2.7] In the present case, the person skilled in the art attempting to arrive at suitable compositions can only start by arbitrarily selecting random amounts of phenolic compound, enzyme and flavour or fragrance and then verify if the chosen amounts provide the intended effect. However, in the case of initial failure the skilled person is left without any guidance as to how to modify the compositions to obtain one with the desired synergistic deodorizing effect. The extent of trial and error experiments for the preparation of deodorizing compositions according to Claim 1 amounts to an undue burden.

[2.8] This conclusion is not affected by the further experimental evidence filed by the appellant during the appeal proceedings […]. In these experiments the amount of phenolic compound and enzyme used was reduced by 7.5 times when compared with the amount used in the embodiment of Table 18 (and in all other examples). Independently of the question whether or not a synergistic effect is shown when using such small amounts, the board notes that there is no information in the application as filed pointing to the fact that in order to obtain compositions showing a synergistic deodorizing effect the compositions of the examples should be modified by drastically reducing the amount of phenolic compound and enzyme used.

[2.9] For these reasons the requirements of A 83, sufficiency of disclosure, are not met.

The Board then turns to claim 1 of the first auxiliary request as filed during the oral proceedings (OPs), which reads as follows:

1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said deodorant composition comprising said at least one of flavor and fragrance in an amount sufficient to remove the last remaining trace of odours which cannot be inactivated by said at least one phenolic compound and at least one enzyme; wherein said at least one of flavor and fragrance is citrus-type fragrance, mint-type fragrance, musk- and wood-type fragrance, fruit-and floral-type fragrance, greenery- and floral-type fragrance, peppermint-type flavour, mint-type flavour, lemon-type flavour or perilla-type flavor.

NB: One might wonder whether the deletion of the synergistic effect from claim 1 is in conformity with A 123(2), but it turns out that it is because this feature was only contained in claim 2 as filed, whereas claim 1 of the auxiliary request is a combination of claims 1 and 3 as filed.

[3.1] Claim 1 of auxiliary request 1 is also directed to a deodorant composition wherein the amount of the components is defined using a functional feature. The functional feature now requires that the flavour and fragrance is present “in an amount sufficient to remove the last remaining trace of odours which cannot be inactivated by said at least one phenolic compound and at least one enzyme”.

[3.2] The amended claims no longer require the production of a synergistic affect and overcome the objections of the board in relation to the main request. The requirements of A 83 will now be fulfilled if the skilled person knows, without exceeding his normal skills and knowledge, what he has to do in order to remove the last remaining trace of odours which cannot be inactivated by the phenolic compound and the enzyme.

[3.3] The examples of embodiments 1 to 10 in the application […] clearly allow the skilled person to put the invention into practice. The compositions of embodiments E1 to E10 show that the last trace of odours not eliminated by the phenolic compound and the enzyme is removed by the addition of certain amounts of a flavour or fragrance. Thus, for instance, the results of Table 18 indicate that the weak urine odour that remains using only a phenolic compound and an enzyme can be removed by the addition of 10 μl of citrus-type fragrance […]. On the basis of the examples and comparative examples of the present application, the skilled person thus obtains sufficient guidance with regard to the amount of flavour or fragrance to be applied in order to eliminate the last trace of odours.

[3.4] The board is also satisfied that the invention can be performed in the whole area claimed. The subject-matter of Claim 1 is limited to the nine specific flavours or fragrances for which experimental evidence was provided in the application as filed. In these examples several phenolic compounds and enzymes were also used. There is no reason to doubt that when using other phenolic compounds or enzymes similar results would be obtained.

[3.5] The board concludes that sufficient information and guidance is at the skilled reader’s disposal, enabling him to successfully carry out the invention. Hence the requirements of A 83 are met.

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