Monday 6 September 2010

T 1630/07 – Single Or Double?


T 332/87 is one of the major decisions of the Boards of appeal concerning combination of features inside a document of the prior art. In point [2.2] of the reasons, we find the following statement:
Normally, […] the disclosure of a document has to be considered as a whole and not only on the basis of the examples thereof. It is the overall disclosure which the skilled person can unambiguously take from a document which is decisive for establishing whether such disclosure is novelty destroying or not. This means that, when examining novelty, different passages of one document may be combined provided that there are no reasons which would prevent a skilled person from such a combination. In general the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document.
The present case deals with the question of whether this decision is applicable. The Opposition Division (OD) decided that T 332/87 did not allow to combine within document D6 the disclosure of example 2-3 (or 2-15) with that of the optional use of inorganic electrolytes such as, among others, sodium, magnesium or calcium sulphates, because the specific examples 2-3 and 2-15 differed from other examples e.g. for the additional presence of a fatty acid, and thus could not be seen as illustrative of the general teaching. To arrive at the claimed subject-matter required the combination within D6 of one of the examples given for the FC composition disclosed in this citation with one of the optional inorganic electrolyte ingredients exemplified in the description. Thus, applying the “selection within two lists” principle, the OD acknowledged the novelty of the claims as maintained vis-à-vis D6.

The opponent filed an appeal and contested this reasoning. In its opinion, example 2-3 and 2-15 of this citation were representative of the general technical teaching of D6 despite the presence therein of the optional unsaturated fatty acid, because this was perfectly in line with the disclosure in this citation as to the sorts and the relative amounts of the essential and optional ingredients, as well as with the common general knowledge of the skilled person on how to control the equilibrium of saponification of esterquats suspended in waters. Hence, similarly to the case of T 332/87, it was perfectly allowable to combine any of these examples with the optional incorporation of inorganic electrolytes such as, among others, sodium, magnesium or calcium sulphates, also disclosed in D6. Accordingly, one arrived at the claimed subject-matter by the single selection of one of the sulphate salts from the list of examples of the inorganic electrolytes.

[1.1] [Claim 1] defines a FC composition comprising a water dispersed esterquat, an alkali metal or alkaline earth metal sulphate and an unsaturated C8-C24 fatty acid at a given esterquat / fatty acid ratio […].

[1.2] The [opponent] has disputed the novelty of this claim only on the basis of D6. It has considered erroneous the conclusion of the OD that the example 2-3 and 2-15 was not representative of the general technical teaching of D6 […].

Hence, in the opinion of [opponent], it was allowable under the ruling given in T 332/87 to combine within D6 the disclosure of the FC composition of example 2-3 (or 2-15) with that of the optional incorporation therein of inorganic electrolytes as disclosed in the passage at page 11, lines 48 to 51, (“the cited passage”) and reading
“The composition of this invention can incorporate therein such an inorganic electrolyte as NaCl, CaCl2, MgCl2, NaNO3, NaNO2, Na2SO4, MgSO4, or CaSO4 for the adjustment of the viscosity thereof. …”.
This combination thus rendered available to the skilled person a FC composition as that of example 2-3 added with any of these specific examples of inorganic electrolyte ingredients. Accordingly, one arrived at the claimed subject-matter by means of a sole selection in a list of alternatives, that required for selecting any of the three exemplified sulphate salts.

[1.3] The Board notes that the decision T 332/87 [2.2], after having recalled that normally the disclosure of a document has to be considered as a whole, rules that
“the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document”.
It is thus immediately apparent to the Board that the situation decided in this case law is at most comparable to just a segment of the whole [opponent’s] line of reasoning based on D6.

Indeed, in the present case, as explicitly acknowledged by the [opponent] too […], the relevant point is not just whether the prior art patent document renders available to its skilled reader the combination of an example with a generally applicable instruction (that to possibly add an inorganic electrolyte) also contained in this patent document, but rather if it renders available this combination as well as the further needed selection within such combination (i.e. the selection of the sulphates among the exemplified inorganic electrolytes).

Moreover, the Board notes that D6, which is essentially concerned with esterquats and liquid softening compositions containing them, teaches that several optional components may be incorporated in such compositions. In particular, it is disclosed […] that the esterquat compositions may further comprise one of several components for improving certain properties. One of those components is a fatty acid for enhancing the softness and only examples 2-3 and 2-15 are describing such compositions in a ratio esterquat / fatty acid according to present claim 1.

Thus, as observed by the OD, the example 2-3 (or 2-15) cannot be considered representative for the general technical teaching of D6, but just for a specific embodiment thereof, which may only be derived from D6 by selecting one of the possible optional components. Hence, the Board finds that the whole line of argument of the [opponent] cannot possibly be justified by just the ruling in T 332/87, and that the segment of this line of argument most similar to that considered in this decision is not supported by this case law.

[1.4] The Board notes instead that the skilled reader of D6, in order to arrive at the disclosure of the subject-matter of claim 1 as maintained, must (at least) first select example 2-3 (or 2-15) among the examples representative for specific embodiments disclosed therein, and then select any of “Na2SO4, MgSO4, or CaSO4” among the specific examples of the optional inorganic electrolytes listed in the cited passage.

Thus, the Board finds that the present case is rather to be decided according to the established case law already recalled in the decision under appeal, i.e. by taking into account that a prior art document does not render available matter whose identification requires twofold selection among two lists of alternatives in that document (see Case Law of the Board of Appeal, 5th Edition, 2006, I.C.4.2.3).

[1.5] Therefore, the Board concurs with the finding of the OD that the subject-matter of claim 1 as maintained is novel vis-à-vis the disclosure of D6, and concludes, thus, that this claim complies with the requirements of A 54(1) and (2).

If you wish to download the whole decision, just click here.

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