T 172/07 – Table Dancing

The opponent filed an appeal against the decision of the Opposition to maintain the patent in amended form.

Claim 1 as granted read :

1. A hair cleansing composition comprising the following components:

Claim 1 of the main request before the Board read :

1. A hair cleansing composition comprising the following components:

In what follows, the Board examines whether the main request on file complies with the requirements of A 123(3).

Amendments

[3] Compared with Claim 1 as granted, Claim 1 according to the main request (request underlying the decision under appeal) comprises the feature

(B) one or more acids selected from malic acid, succinic acid and maleic acid : 0.01 to 5 wt.%

as a replacement of the feature of Claim 1 as granted

(B) one or more acids selected from alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3-dicarboxylic acid, aromatic carboxylic acid : 0.01 to 5 wt.%.

[3.1] Succinic acid [HOOC-(CH2)2-COOH] (IUPAC name butanedioic acid) is also known as ethane-1,2-dicarboxylic acid.

Malic acid [HOOC-CH2-CHOH-COOH] (hydroxybutanedioic acid) is also known as hydroxysuccinic acid.

Maleic acid is the (cis form)-Butenedioic acid (IUPAC name (Z)-Butenedioic acid) of formula HOOC-CH=CH-COOH.

Therefore, succinic, malic and maleic acids are all (ethane or ethene) 1,2-dicarboxylic acids and malic acid also belongs to the class of alpha-hydroxy acids.

[3.2] The amendments made to granted Claim 1 thus consist in:

(a) the deletion of the classes beta-hydroxy acid, 1,3-dicarboxylic acid and aromatic carboxylic acid; and

(b) the restriction or narrowing down of the classes alpha-hydroxy acid and 1,2-dicarboxylic acid to three of their specific acids, all belonging to the class 1,2-dicarboxylic acid, one of which (malic) also belongs to the class of alpha-hydroxy acids.

[3.3] Whilst the definition of the chemical nature of the component (B) of the composition defined in Claim 1 as granted has been amended as indicated above, the amount of component (B) has not been altered.

Scope of Claim 1 as granted

[4] Claim 1 as granted essentially consists of a table with three columns, the first identifying the component (A, B or C), the second defining its chemical nature and the third specifying the amount of the component.

[4.1] Having regard to the itemization of component, chemical nature and amount (of the component) given in Claim 1, it is immediately apparent that the amount defined in Claim 1 relates to the component as such, rather than to each of its possible, specific constituents.

[4.2] This immediate recognition is fully in line with the description of the patent in suit, as apparent from Paragraph [0012], stating

“As the component (B), one or more of the above-described acids can be used. The component (B) is added in a proportion of from 0.01 to 5 wt.%, preferably from 0.05 to 3 wt.%, notably from 0.1 to 2 wt.% based on the whole composition.”.

No further passages of the description deal with the proportion of component (B). In the examples (Table 1), an amount of acid of 0.5 wt.% is illustrated.

[4.3] Claim 1 as granted thus encompasses any hair cleansing composition comprising 0.01 to 20 wt.% of component (A), 0.01 to 5 wt.% of component (B) and 5 to 40 wt.% of component (C). As regards component (B), Claim 1 as granted unambiguously requires that it be one or more acids selected from alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3-dicarboxylic acid and aromatic carboxylic acid and that the total amount of the one or more acids making component (B) be in the range of 0.01 to 5 wt.%.

Scope of Claim 1 of the main request

[5] Claim 1 of the main request encompasses any hair cleansing composition comprising 0.01 to 20 wt.% of component (A), 0.01 to 5 wt.% of component (B) and 5 to 40 wt.% of component (C). As regards component (B), Claim 1 of the main request requires that it be one or more acids selected from malic, succinic and maleic acids and that their total amount be in the range of 0.01 to 5 wt.%. No requirement whatsoever is established for 1,2-dicarboxylic acids other than malic, succinic and maleic acids. Nor is any requirement stipulated for e.g. 1,3-dicarboxylic, beta-hydroxy or aromatic carboxylic acids.

Alleged extension of the protection conferred

[6] To illustrate with a case in point whether or not the protection conferred has been extended, the Board considers a hair cleansing composition comprising, in addition to components (A) and (C) within the amounts given in Claim 1, 4 wt.% of malic acid and 6 wt.% of fumaric acid (malic and fumaric acids are illustrative 1,2-dicarboxylic acids according to the patent in suit, Paragraph [0010], first sentence). Fumaric acid is the (trans form)-Butenedioic acid (IUPAC name (E)-Butenedioic acid) of formula HOOC-CH=CH-COOH.

[6.1] The illustrative composition is not encompassed by Claim 1 as granted, for the following reasons:

(a) the amount of fumaric acid is 6 wt.% (i.e. the amount of one item of one of the defined classes of acids making up Component B is already above 5 wt.% as defined); and,

(b) since malic and fumaric acids are both 1,2-dicarboxylic acids, Component (B) is made up of 1,2-dicarboxylic acids in a total amount of 10 wt.% (again, well above 5 wt.% as defined).

[6.2] By contrast, the same illustrative composition is encompassed by Claim 1 of the main request, as:

(a) malic acid is present in amount of 4 wt.%, i.e. within the range of 0.01 to 5 wt.% as defined; and,

(b) since Claim 1 of the main request no longer defines any quantitative conditions for the class of 1,2-dicarboxylic acids, let alone for fumaric acid, the presence of 6 wt.% of fumaric acid (a 1,2-dicarboxylic acid not defined as such in Claim 1 of the main request) is not excluded by the open formulation of Claim 1 of the main request (as comprising = including what is defined but not excluding further components not defined, unless otherwise specified).

[6.3] The Board arrives at the same conclusion if the illustrative composition mentioned by the parties during the appeal proceedings is considered, namely a hair cleansing composition comprising 4 wt.% of malic acid and 4 wt.% of an aromatic carboxylic acid, in addition to components (A) and (C) within the amounts given in Claim 1. Phthalic acids are illustrative aromatic carboxylic acids according to the patent in suit, Paragraph [0010], last sentence. Phthalic acids include o-phthalic acid, i.e. benzene-1,2-dicarboxylic acid of formula C6H4-1,2-(COOH)2. Hence, considering the 4 wt.% of malic acid and the fact that malic and o-phthalic acids are both 1,2-dicarboxylic acids, Component (B) of the illustrative composition is made up of two 1,2-dicarboxylic acids in a total amount of 8 wt.%, i.e. above 5 wt.% as defined. Therefore, the illustrative composition is not encompassed by Claim 1 as granted.

[6.4] By contrast, again, the same illustrative composition is encompassed by Claim 1 of the main request, as:

(a) malic acid is present in amount of 4 wt.%, i.e. within the defined range of 0.01 to 5 wt.%. And,

(b) Claim 1 of the main request no longer defines any quantitative conditions for the class of 1,2-dicarboxylic acids, let alone for o-phthalic acid, so that the presence of 4 wt.% of o-phthalic acid (a 1,2-dicarboxylic acid) is not excluded by the open formulation of Claim 1 of the main request.

[6.5] Therefore, embodiments that were not encompassed by Claim 1 as granted are in fact encompassed by Claim 1 of the main request, so that the protection conferred has been extended, contrary to A 123(3).

[6.6] Consequently, the main request is not allowable.

Alleged divergence between two decisions of the Boards of Appeal

Request of a referral to the Enlarged Board of Appeal (EBA)

[7] It follows from the foregoing that in the present case the extension of the protection conferred is immediately apparent, so that the Board need not refer to the decision invoked by the [patent proprietors] (T 1556/07) nor to that invoked by [opponent 2] (T 2017/07).

[7.1] As to the request of the parties for a clarification of the impact on the present case of the decisions invoked, the Board, by way of obiter dictum, may only note that:

[7.1.1] T 2017/07 concerned the following amended Claim 1 (compared with Claim 1 as granted):

“1. A hair dye composition which comprises (A) an acid dye and (B) an alkylene carbonate having 3-5 carbon atoms in total, said composition exhibiting a pH of 2-6, and having a buffer capacity of 0.007-0.5 gram equivalent/L, wherein the content of the alkylene carbonate having 3-5 carbon atoms in total is 0.5-50% by weight, the alkylene carbonate being propylene carbonate, and wherein the composition contains neither benzyloxyethanol nor benzyl alcohol.”

The amendment concerned the narrowing down of a class of compounds (alkylene carbonate) to an entity thereof (propylene carbonate).

The competent Board decided that the amendment was not allowable under A 123(3), as other alkylene carbonates with 3-5 carbon atoms might be present in any amount after the amendment.

The decision was based inter alia on the implicit proviso (Claim 1 as granted) that Component B was to be 0.5-50 wt.% in total.

[7.1.2] T 1556/07 concerned the following amended Claim 1 (compared with Claim 1 as granted):

“1. Composition for the decolouring or bleaching of hair, which is mixed directly prior to use with an aqueous oxidizing agent preparation and is characterized in that it is in the form of a bleaching composition suspension and comprises a combination of

(a) 0.1 to 80 per cent by weight of at least one organically lipophilic compound from the group of plant and animal fats, oils and waxes, of paraffin hydrocarbons, of higher alcohols and ethers, of aliphatic and aromatic esters, and of silicone oils;

(b) 0.1 to 40 per cent by weight of at least one inorganic or organic thickener with lipophilic character which, with the lipophilic compound, forms an oleogel or lipogel which is chosen from alkali metal carboxylates, alkaline earth metal carboxylates, aluminium carboxylates, copolymers of alkenes, cross-linked organic polymers and lipophilicized sheet silicates, or mixtures of these thickeners;

(c) 0.1 to 40 per cent by weight of at least one inorganic or organic thickener with hydrophilic character, which is chosen from polymers from the group of celluloses, alginates, polysaccharides and acrylic acids;

(d) 10 to 65 per cent by weight of at least one inorganic persalt;

(e) 10 to 45 per cent by weight of at least one alkaline-reacting salt;

and optionally auxiliaries and additives.”

The amendment concerned the deletion of one option for component (b), the class “alkali metal carboxylates”.

The Board found that the wording of Claim 1 was clear per se, so that to fulfil its requirements it was sufficient that the composition contained 0,1 to 40 wt% of at least one of the thickeners chosen from the given list of classes, or 0,1 to 40 wt% of any mixtures of them, independently of whether or not further thickeners were present (point [3.2.2] of the reasons).

That clear definition could not be changed by a general statement in the description that a total amount of 0.1 to 40 wt% of thickeners should be used (point [3.2.3] of the reasons). Hence, the decision did not acknowledge any implicit proviso by Claim 1 as granted that component (b) was to be 0.1-40 wt.% in total.

[7.2] Since the present case shares with T 2017/07 a narrowing down of a claimed class (1,2-dicarboxylic and alpha-hydroxy acids) to some of its entities, the conclusions of T 2017/07 apply to the present case.

[7.3] As a matter of fact, the Board arrives at the same conclusion as T 2017/07, and the implicit proviso cited by T 2017/07 is in the present case rather explicit (point [4.1], supra), so that no divergence from T 2017/07 arises.

[7.4] Consequently, the narrowing down of the classes 1,2-dicarboxylic and alpha-hydroxy acids to 3 specific entities thereof, as carried out for Component (B) in the definition of Claim 1 of the main request, which openly defines a composition, broadens the scope of protection, with the consequence that such amended claim in appeal proceedings extends the protection conferred by the granted patent (A 123(3)).

[7.5] That the narrowing down of classes to species as decided in T 2017/07 is a different situation from the deletion of a class as in T 1556/07 is acknowledged in T 1556/07 itself (point [3.2.5] of the reasons), and thus need not be detailed further.

[7.6] Given the circumstances (a decision is possible on the facts of the case, which arrives at the same conclusion as a previous decision of another Board on a similar case (T 2017/07), it may be left undecided whether or not in the present case the deletion of a class (e.g. aromatic acids, 1,3-dicarboxylic acids, beta-hydroxy acids) from the definition of Component (B) in Claim 1 of the main request extends the protection conferred, i.e. whether or not the ratio of T 1556/07 applies.

[7.7] Attention is however drawn to the fact that the present situation is rather different from that decided in T 1556/07, at least because the definition of the amount of Component (B) in Claim 1 is specifically itemized in its own column in the Table and is clearly in line with the disclosure of the amount of component (B) in the patent specification, so that the requirement of how much of Component (B) can be present in the claimed composition is unambiguously fixed (points [4], supra).

[7.8] Less important differences arise from the fact that not one (as in T 1556/07) but more classes of Claim 1 as granted have been deleted and from the fact, apparent from Paragraphs [0009] and [0010] of the patent in suit, that illustrative acids such as mandelic, salicilic, o- and m-phthalic acids belong to more than one of the classes alpha-hydroxy acid, beta-hydroxy acid, 1,2-dicarboxylic acid, 1,3-dicarboxylic acid and aromatic carboxylic acid. Hence, the classes defined in Claim 1 as granted overlap, with the result that the deletion of one class, e.g. aromatics, does not remove all of its elements but only those other than alpha-hydroxy, beta-hydroxy, 1,2-dicarboxylic or 1,3-dicarboxylic acids.

[7.9] Therefore, the situation at issue is different from that decided in T 1556/07, so that it is not apparent that the ratio of T 1556/07 applies in the present case.

[7.10] Since a decision is possible on the facts of the case at issue, which arrives at the same conclusion as a previous decision of another Board on a similar case (T 2017/07), there is no need for a referral to the EBA in view of the alleged contradiction between the two decisions invoked. Nor is it apparent that the deletion of a class of chemical entities in a claim for a composition openly formulated concerns a point of law of fundamental importance that cannot be decided on the facts of each case. Therefore, the request for a referral is refused.

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