The present decision deals with an appeal of the patent proprietor after the Opposition Division (OD) had revoked its patent for lack of novelty and lack of inventive step.
Claim 1 of the main request read:
Composition for the oxidation dyeing of human keratin fibres, and in particular of human keratin fibres such as the hair, comprising, in a medium that is suitable for dyeing:- at least one oxidation base chosen from 4,5-diamino-1-hydroxyethylpyrazole and the addition salts thereof with an acid representing from 0.0005% to 12% by weight relative to the total weight of the dye composition, and- at least one mineral compound chosen from silicas, aluminium oxides or hydroxides, aluminium, magnesium and iron hydrosilicates alone or as a mixture, and zinc salts;the said composition not containing a combination of an oxidation base of the 4,5-diaminopyrazole type, a zinc salt and a derivative of 1,4-diazacycloheptane or a salt thereof, having the following formula:
in which R1, R2, R3 and R4, which may be identical or different, denote a hydrogen, a C1-C4 alkyl or hydroxyalkyl, or a C2-C4 dihydroxyalkyl;Z1 and Z2, which may be identical or different, denote hydrogen, chlorine, fluorine, a Cl-C4 alkyl, a Cl-C4 hydroxyalkyl, a Cl-C4 aminoalkyl, a C1-C4 alkoxy, a C2-C4 dihydroxyalkyl or an allyl group;R5 and R6, which may be identical or different, denote a hydrogen or a Cl-C4 alkyl.
The Board finds document D8 to be the closest prior art and then continues:
** Translated from the French **
[4.2] The [patent proprietor] has pointed out that the technical problem to be solved when starting from D8 was to provide compositions for oxidation dyeing leading to colorations the chromaticity and resistance to shampoo of which was improved.
[4.3] The solution proposed by the patent under consideration is the composition according to claim 1, characterised by the presence of a mineral compound as defined in claim 1.
The [patent proprietor] has indicated during the oral proceedings (OPs) before the Board that the choice of 4,5-diamino-1-hydroxyethylpyrazole as particular oxidation base among the diaminopyrazoles disclosed in document D8 was not causally linked to the improvement of the chromaticity and resistance to shampoo.
As a consequence, and according to the established case law of the Boards of appeal, this feature has to be ignored in the assessment of inventive step based on the technical problem related to the above mentioned effects, i.e. improving the resistance to shampoo and the chromaticity of the colorations. Therefore, the examination of whether the proposed solution successfully solves this problem is limited to the other features of claim 1 (T 22/81 [5.1,7]; T 26/01 [4.3] and T 176/04 [5.5]).
Success
[4.4.1] The [patent proprietor] refers in particular to the results of comparative trials […] comparing the resistance of the claimed compositions to shampoo with that of the compositions of D8, in order to demonstrated that the desired improvement of the resistance to shampoo has its origin in the claimed compositions.
These trials compare the resistance to shampoos of colorations obtained with a “comparative” composition A comprising 2.3% by weight of 4,5-diamino-1H-pyrazole-1-ethanol sulphate (oxidation base), 1.2% by weight of 1-methyl 2-hydroxy 4-aminobenzene (coupling agent) and reflecting a composition according to document D8, and colorations obtained with compositions B and C according to the invention and differing from composition A exclusively by the presence of 1.2% by weight of a mineral compound, i.e. a hydrophobic pyrogenated silica or kaolin.
The results obtained establish a greater coloration difference between a permed lock of hair comprising 90% of white hair, before and after 8 washings with shampoo when the coloration is done with composition A according to the invention (sic) (ΔE=22.9) with respect to the colorations obtained with comparative compositions B (ΔE=18.5) and C (ΔE=18.9).
This demonstrates in a convincing way that the particular composition of the comparative trial comprising 4,5-diamino-1H-pyrazole-1-ethanol as an oxidation base and 1-methyl 2-hydroxy 4-aminobenzene as coupling agent leads to a coloration that resists the effect of shampoo better than a coloration obtained with a composition according to document D8, which does not comprise the mineral compound.
[4.4.2] The [opponent] refers to the results of comparative trials filed […] in order to show that the improvement of the resistance to shampoo is not obtained for all the claimed compositions.
In a first trial, the resistance of a coloration to shampoo on 80% natural grey hair obtained with a composition Ia comprising 0.70% by weight of 4,5-diamino-1H-pyrazole-1-ethanol sulphate (oxidation base), 0.5% by weight of 1-methyl 2-hydroxy 4-aminobenzene (coupling agent) and corresponding to a composition according to document D8 is compared to that of a coloration obtained with a composition Ib according to the invention, which differs from composition Ia only by the presence of 0.5% by weight of a silica (Aerosil 200).
The results obtained in respect of resistance to shampoo also indicated that the coloration difference between a lock of natural grey hair before and after an ultrasonic bain in the presence of a detergent, which is equivalent to the effect of six consecutive washings with shampoo, is more pronounced when the coloration is obtained with comparative composition Ia (ΔE=1.8) than when it is obtained with comparative composition Ib according to the invention (ΔE=1.3).
Therefore, the results of this first comparison fully confirm those of the [patent proprietor], i.e. that a dyeing composition comprising 4,5-diamino-1H-pyrazole-1-ethanol sulphate as oxidation base and 0.5% by weight of 1-methyl 2-hydroxy 4-aminobenzene as coupling agent results in a coloration that resists the effect of shampoo much better than a composition containing silica.
However, in a second trial, the resistance to shampoo of colorations on natural grey hairs obtained with a composition IIa containing 0.7% by weight of 4,5-diamino-1H-pyrazole-1-ethanol sulphate (oxidation base), 0.5% by weight of 3-aminophenol (coupling agent) and corresponding to a composition according to document D8 is compared to that of a coloration obtained with a composition IIb according to the invention, which differs from composition IIa only by the same presence of 0.5% by weight of silica.
It turns out that those results show that this time the coloration difference is greater for the composition IIb according to the invention (ΔE=3.5), to be compared with ΔE=3.2 obtained with the comparative composition IIa without silica.
[4.4.3] It is true that the [patent proprietor] has provided comparative trials showing that the resistance of colorations is improved for compositions comprising a specific coupling agent (1-methyl 2-hydroxy 4-aminobenzene). The [opponent] has shown that this improvement disappears when this specific coupling agent is replaced by 3-aminophenol, which means that the mere presence of a mineral compound is not sufficient for obtaining an improvement of the resistance to shampoo of colorations obtained with a composition according to document D8 and comprising 4,5-diamino-1H-pyrazole-1-ethanol sulphate as oxidation base.
It follows that the Board cannot ignore the fact that the improvement of resistance to shampoo does not necessarily result from the mere addition of a mineral compound, but that it can depend on other factors such as the presence of a particular coupling agent.
Claim 1 does not contain any limitation as regards the structure of the coupling agent or its presence in the compositions. It follows that claim 1 comprises the embodiment where the composition comprises 3-aminophenol, for which it has been shown by the [opponent] that no improvement of the resistance to shampoo is found when the coloration is obtained with a composition comprising the association of 4,5-diamino-1H-pyrazole-1-ethanol and 3-aminophenol.
As a consequence, these comparisons allow to conclude that the part of the technical problem relating to the improvement of the resistance of colorations to shampoo, as defined by the [patent proprietor] (see point [4.2] above) is not solved by all the compositions covered by claim 1.
Given that an effect can only be taken into account for the definition of the technical problem if it is possible to obtain it over the entire range that is covered by the claim (see T 626/90 [4.3.2]; T 939/92 [2.5.4]) and that it has been established above that the resistance of the coloration is not improved for the all the claimed compositions, the technical problem defined above (see point [4.2]) needs to be reformulated in a less ambitious way that does not include the improvement of the resistance to shampoo.
[4.4.4] According to the [patent proprietor] the counter trials of the [opponent] made on natural hair could not reduce the value of the [patent proprietor’s] trials on permed hair because the effects obtained on natural hair could not be transposed to permed hair.
However, the [opponent] has supplied experimental data showing without ambiguity that the improvement of the resistance of the coloration on natural hair to shampoo was not obtained for all the claimed compositions, thereby highlighting the influence of other features, in particular of the presence of a particular coupling agent, on whether the effect is obtained.
The [patent proprietor] has only put forward that the effect on the resistance of the coloration is reversed for permed hair with respect to natural hair, without relying on any document or providing any experimental evidence. Its only argument is that the amplitude of the effect is different, and this argument is not relevant here because what is at stake is the reversal of the effect and not its weakening.
The [opponent] having provided evidence for the absence of the effect on the resistance of the coloration on natural hair, the onus of proof is on the [patent proprietor] for establishing that an improvement that is not found on natural hair would be found on permed hair. In the absence of any evidence confirming that the claimed effect is obtained on permed hair for compositions comprising 3-aminophenol as coupling agent, or of any argumentation which would make it credible, the mere allegation of it being obtained over the whole region covered by the claim is purely speculative and cannot be taken into account in the assessment of inventive step.
As a matter of fact, the established case law of the Boards of appeal, each party to the proceedings shall carry the onus of proof for the facts it alleges, and if a decisive fact is not proven, the decision is taken to the detriment of the party that is unable to discharge its onus of proof, i.e. in the present case the [patent proprietor] (see T 270/90 [2.1]; T 355/97 [2.5]).
As a consequence, even under the assumption that the technical problem was [to improve] the resistance of colorations on permed hair to shampoo, which the [patent proprietor] refused to accept - despite an indication by the Board during the OPs – as far as the main request was concerned, the alleged improvement of the resistance of the composition to shampoo cannot be taken into account in the assessment of inventive step.
[4.4.5] As far as the improvement of chromaticity is concerned, the [patent proprietor] has filed […] comparative trials intended to show that the presence of mineral compounds such as silica, alumina, boehmite, montmorillonite, or zinc sulphate in a dyeing composition results in an improvement of the chromaticity of the coloration.
However, other comparative trials, here the trials of the technical note 2 of June 6, 2008, based on which the [patent proprietor] argued that the resistance of the coloration was improved (see point [4.4.1] above) show that the chromaticity of a coloration obtained on permed hair with a dyeing composition comprising 4,5-diamino-1-hydroxyethylpyrazole (comparative composition A; a*=31.5, b*=19.5) is not improved when kaolinite (composition C according to the invention; a*=30.0, b*=18.8), which is a aluminium hydrosilicate mineral compound that is part of the proposed solution, is used, but rather reduced. This fact has not been contested by the [patent proprietor].
An effect can only be taken into account in the definition of a technical problem if it can be obtained over the whole region covered by the claim (see T 626/90 and T 939/92). As in the present case it has not been established that the technical effect concerning the chromaticity of the colorations, on which the [patent proprietor] wanted to base the inventive step, can be obtained for all the solutions proposed in the patent under consideration, the technical problem as defined above (point [4.2]) needs to be reformulated in a less ambitious manner that does not include the chromaticity of the coloration.
[4.5] Under these circumstances, as the [patent proprietor] has not proposed another effect that could be taken into account, the problem is to propose an alternative to the prior art compositions for the oxidation dyeing of keratin fibres.
As so often when this conclusion is reached, the request was found not to involve an inventive step.
Finally the appeal was dismissed.
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