T 2253/08 – Shaky Foundation

*** Translation from the French ***

[3.5] The only open question is whether the solution which the opposed patent provides to the problem can be derived in an obvious manner from the available prior art, i.e. whether it was obvious for the skilled person to associate, in a targeted way (de façon ciblée), a dialkyl tartrate and filters of a type derived from benzylidene camphor and/or dibenzoylmethane in order to improve its photoprotective power.

[3.5.1] Document D2 does not mention any UV filter and, therefore, obviously cannot as such suggest that the photoprotective power is improved when dialkyl tartrate is associated with filters of a type derived from benzylidene camphor and/or dibenzoylmethane.

[3.5.2] According to the [opponent] it was not surprising that these particular UV filters allow such an improvement because the [patent proprietor] itself acknowledged in paragraph [0008] of the patent under consideration that it was unexpected that other UV filters did not allow to improve the photoprotective index. A contrario this meant that the skilled person expected an improvement when using the claimed compositions.

However, this reasoning has to be rejected because it is not based on the prior art but on the conclusions of the [patent proprietor] when it made the invention (see paragraph [0008] of the patent: “the applicant has found …”). These conclusions cannot be an obstacle to inventive step as the latter is assessed on the basis of the prior art (A 56).

If you wish to download the whole decision (in French), please click here.