Saturday, 16 October 2010

T 1088/07 – Risky Multitasking

As we have seen in the preceding post, Claim 1 of the main request read:

A stabilized, concentrated, acidic antimicrobial composition characterized by forming a substantially clear diluted aqueous treatment composition upon dilution, said stable, concentrated, acidic antimicrobial composition comprising:
(a) from 5% to 95%, by weight of said concentrated composition, of an organic acid;
(b) from 1% to 80%, by weight of said concentrated composition, of a surfactant;
(c) a stabilizing agent;
(d) optionally, a buffer;
(e) optionally, optionally, [sic] toxicologically acceptable anti-foaming agent;
(f) optionally, toxicologically-acceptable preservative;
(g) optionally, perfume, flavoring agent, and/or coloring agent; and
(h) the balance comprising compatible, toxicologically-acceptable inert and/or minor ingredients;
wherein said concentrated composition has a pH of from 2 to 5 upon dilution; and
wherein a ratio of said stabilizing agent to said surfactant is from 10:1 to 1:20.

During the oral proceedings, the respondent filed auxiliary request 1 to 3 to replace the previously filed auxiliary requests. The respective claims 1 of these requests differed from claim 1 according to the main request in that they each included the following proviso inserted at the end of the claim: “wherein, if an ingredient from the above list can appear in more than one place, it appears in the first place that it can appear.” Here is what the Board had to say:

[4.1] The composition according to claim 1 of auxiliary request 1 is characterised by means of a structurally defined component (a), and a number of functionally defined mandatory and optional components. In addition, claim 1 comprises a proviso according to which, “if an ingredient from the above list can appear in more than one place, it appears in the first place that it can appear.” Since this proviso was introduced in the course of appeal proceedings, it must be examined whether claim 1 so amended meets the requirements of A 84.

A 84 stipulates that the claims shall define the matter for which protection is sought. Thus, the question to be answered in the present case is whether it is possible to reliably determine whether a particular composition falls within claim 1 or not.

It has not been disputed that a given ingredient may perform more than one function. Examples of such ingredients that can be derived from the patent in suit include polysorbates (nonionic surfactant and stabilizing agent […]), sodium carbonate (stabilizing agent and buffer […]), or polypropylene glycol (stabilizing agent and anti-foaming agent […]). The present proviso attempts to define a hierarchy for the classification of these ingredients. However, it is apparent that there are no clear and reliable criteria for establishing whether, in the context of a particular composition, a specific ingredient should be viewed as being multifunctional, or whether a particular functionality must be viewed as being dominant and any remaining functionalities disregarded.

Thus, for example, in claim 6 of auxiliary request 1, which depends on claim 1, “polysorbates” are listed as being one of the preferred stabilizing agents. This is inconsistent with the proviso in claim 1, according to which polysorbate should be placed “in the first place that it can appear”, that is, it should be classified as a surfactant (cf. patent in suit, paragraph [0038]).

An analogous inconsistency is present in Example III of the patent in suit, wherein TweenTM 81, which is a polysorbate, is said to be a stabilizing agent rather than a surfactant.

Similarly, the block copolymers known under the trade name Pluronic are classified as stabilizing agents in the patent in suit (paragraph [0046]), and as surfactants in document D3 […]).

The proviso thus introduces a subjective element into the determination of the subject-matter for which protection is sought. Different conclusions may be reached as to whether a given composition falls within the scope of the claim depending on an arbitrary step of classification. Consequently, the person skilled in the art on reading the claim 1 of auxiliary request 1 is not able to derive a clear definition of what is intended to be claimed.

The respondent effectively argued that claim 1 was clear since the skilled person would be able to understand wording used in the claims. However, as explained above, the claims must also be clear in their purpose of defining the subject-matter for which protection is sought, a requirement that is not fulfilled in the present case.

Consequently, claim 1 of auxiliary request 1 does not fulfil the requirements of A 84.

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