The present appeal was directed against the decision of the Examining Division (ED) to reject the application under consideration on the ground of lack of inventive step.
Claim 1 of the main request before the Board read (in English translation):
Cosmetic composition for making up keratin fibers, characterised in that it comprises at least one wax, in that it has a solids content of greater than or equal to 45.5% by weight and a plateau Gp modulus of rigidity of greater than or equal to 5,500 Pa and less than 60,000 Pa, and in that it combines at least one non-ionic surfactant with an HLB of greater than or equal to 8 and at least one gelling polymer selected from the group consisting of homopolymers or copolymers of acrylic or methacrylic acid, and the salts and esters thereof, copolymers of acrylic acid and of acrylamide, polyacrylic acid/alkyl acrylate copolymers, AMPS (polyacrylamidomethylpropane-sulphonic acid), AMPS/acrylamide copolymers, AMPS/poly-oxyethylenated alkyl methacrylate copolymers, and mixtures thereof.
The Board found the reasoning of the ED to be deficient.
*** Translated from the French ***
[3] A decision to refuse an application under A 111(2) has to be reasoned. The purpose of this requirement is to enable the party who is adversely affected and, in case of an appeal, also the Board of Appeal to examine whether the decision can be considered to be justified or not. To this aim, the decision has to contain, in logical sequence, those arguments which justify the tenor. This implies that the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision and arranged to form the reasoning that leads to the decision, so that the reasoning allows to understand how the legal provisions are applied to the circumstances of the case (see T 278/00 [2]).
[4] When assessing inventive step, as here, the approach to be chosen results from A 56 itself: it has to be examined whether, having regard to the state of the art within the meaning of A 54(2), the invention is obvious or not to a person skilled in the art. It is to this aim that the Boards of appeal have developed the “problem-solution” approach. This approach also has to be applied in first-instance proceedings (see the “Guidelines for Examination in the EPO”, part C-IV).
It appears that the ED in the impugned decision did not intend to depart from this approach (see point 12 of the decision) but it has applied it in an atypical manner in order to “avoid its pitfalls”, which, as will be demonstrated, makes its reasoning deficient and results in non-compliance with R 111(2).
[5] For the ED (see page 7 of the decision, point 3), the basic notion is the notion of “difficulty” encountered in order to reach the “target aimed at” (but fixé). This is an autonomous notion that is completely disconnected from the prior art, the prior art being considered in the impugned decision only to check whether the solution to the difficulty was already taught therein.
[6] The ED has started the analysis of the case (page 7 and 8, point 5) by asserting that “the reality of the difficulty” of obtaining a solids content of greater than or equal to 45.5% by weight and a plateau Gp modulus of rigidity of less than 60,000 Pa had not been established. Then, having asserted that the “type of formulation sought by the applicant (aqueous mascara)” was known to the skilled person, and so were the non-ionic surfactants with an HLB of greater than or equal to 8 and the gelling agents defined in claim 1, the ED has pointed out that “the composition claimed by the applicant [did] not present any objective (within the meaning “on the basis of the facts brought to the attention of the division”) formulating difficulty for the skilled person” and that, therefore, the subject-matter of claim 1 lacked inventive step.
This global and abstract analysis is the very exemplification of a subjective approach. At no time the ED cites the prior art corresponding to the aqueous mascara itself, which is said to be known, to the non-ionic surfactants with an HLB of greater than or equal to 8, and to the gelling agents, which are also said to be known, which would enable to know what led the ED to conclude that, having regard to the state of the art within the meaning of A 54(2), the invention was obvious to a person skilled in the art. The argument according to which the non-ionic surfactants with an HLB of greater than or equal to 8 and the gelling agents defined in claim 1 are known or available on the market does not as such constitute a description of the prior art based on which the obviousness of the invention and, therefore, the correctness of the impugned decision with regard to inventive step can be verified.
[7] Despite the conclusion mentioned in point 5 of the reasons for the decision (page 8), the ED has then checked, in points 6 and 7 of the reasons, whether, in view of the examples of the application and the comparative trials according to annex II filed by fax on May 28, 2008, the non-ionic surfactants with an HLB of greater than or equal to 8 could be considered to have a fluidifying effect in aqueous compositions containing waxes. However, the ED has not assessed the fluidifying effect of non-ionic surfactants with an HLB of greater than or equal to 8 within the context of the prior art. The analysis of the examples of the application and of the comparative trials according to annex II filed by fax on May 28, 2008 alone cannot establish whether the invention was obvious to a person skilled in the art, having regard to the state of the art within the meaning of A 54(2).
[8] The only example of the prior art that has been cited, D1, mentioned in the notification of September 15, 2005, has been discarded during the oral proceedings on the ground, given in the written decision, that the question of whether the solids content was increased with respect to D1 was tantamount to a tautology and that the document was not relevant.
[9] The ED then provided a lengthy theoretical justification for its having taken liberties with the problem-solution approach. However, in point 12 of pages 12 and 13, its decision notes that it was important to know the known mascaras and the research carried out by the applicant in order to objectively establish the particular technical effect invoked. Thereby the ED admits that the assessment of inventive step can only be carried out by starting from the prior art and it condemns its own approach.
[10] When reading the decision, the reader is confused to the point that when he reaches the passage entitled “Decision” (page 15) according to which the present application is refused for lack of inventive step, he wonders whether the reason is that the there is no fluidifying effect of non-ionic surfactants with an HLB of greater than or equal to 8 in aqueous compositions containing waxes, or the absence of a “difficulty”. In both cases, he is not enabled to know on which concrete elements these conclusions are based. By replacing the conventional objective approach by an approach based on the notion of “difficulty” and on the obviousness of the solution, without any relation to the prior art according to A 54(2), the ED has taken a decision that does not allow [the Board] to check whether the analysis of the facts and the conclusions drawn are correct. Therefore, this decision is not properly reasoned within the meaning of R 111, which is a major [procedural] violation that requires the case to be remitted to the first instance.
[11] The Board also notes that these same reasons which deprived the [applicant] of the possibility of preparing an appeal also left it destitute in the first instance proceedings. Although it expected to discuss inventive step in view of prior art D1 as well the question of whether adding a gelling polymer involved an inventive step or not, as was indicated in the annex to the summons for oral proceedings, it could not contest the unknown and vague notions of “difficulty” and “target aimed at” which it was confronted with in the decision, nor could it answer in a useful way the objections made [by the ED] which were not based on any prior art within the meaning of A 54(2). This qualifies as a violation of the right to be heard.
The Board then set aside the decision and remitted the case for further prosecution.
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