T 1316/06 – Limited Transfer

As is well known to most practitioners, the Boards of appeal of the EPO hold that the state of the art to be considered when assessing inventive step includes not only the documents in the specific field of the application, but also relevant documents in neighbouring fields and/or a broader general field of which the specific field is part, that is to say any field in which the same problem or one similar to it arises and of which the person skilled in the art of the specific field must be expected to be aware (T 176/84). This does not mean, however, that the skilled person will necessarily transfer teachings from one field to the other, as the present decision illustrates.

** Translated from the French **

[6.2] Document D4, also cited by the [opponent] in order to demonstrate the obviousness of the solution, concerns detergent and conditioning compositions intended to be applied onto skin. It is undisputed that it teaches the skilled person to add silicone in a non-emulsioned form, which, due to the greater size of the silicone particles with respect to the pre-emulsioned form, provokes an increase of the silicone deposit on skin and, therefore, an improvement of the conditioning effect on skin […].

There is no doubt that at the date of filing of the application, the person skilled in the field of conditioning shampoos could not ignore the existence of document D4, which belongs to the neighbouring field of skin detergent compositions. Nevertheless, this does not mean that for the skilled person any teaching applying to skin would apply in the same way to a substrate of different structure, such as hair, and even less so for a property that only concerns hair, such as smoothing.

The [opponent] has not provided any evidence or document whatsoever showing that the skilled person would have transferred a technical teaching concerning skin to a technical application aiming at conditioning hair.

The argument according to which the shampoo obtained by the claimed process would automatically be in contact with the scalp and thus with skin is not relevant because the problem to be solved is to improve the smoothing of dry hair and not, as in document D4, the improvement of the hydration and nourishing of skin. Document D4 can at best confirm the ex post facto explanation provided by the [patent proprietor] according to which the improvement of the smoothing obtained by the introduction of the oil in a non-emulsioned form is due to the greater size of the silicone oil drops.

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