T 1168/08 – Unjustified

The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke the opposed patent. Claim 1 of this patent (and of the main request before the OD) read:

An antiperspirant or deodorant cosmetic aerosol composition suitable for topical application to the human skin, comprising:

i. an antiperspirant or deodorant active;

ii. a moisturising cream providing occlusion or humectancy;

iii. a non-polar hydrocarbon propellant and;

iv. a carrier for the antiperspirant or deodorant active.

According to the decision under appeal, the main request was not allowable as claim 1 lacked novelty in view of documents D1, D2, D4 to D6 and D14. The other requests either did not comply with A 123(2) (auxiliary requests 1 to 7) or lacked novelty (auxiliary request 8)

Together with the statement setting out the grounds of appeal, the patent proprietor submitted 32 sets of claims forming basis for their new Main and 1st to 31st Auxiliary Requests. Claim 1 of all those requests, compared to claim 1 as granted, was restricted by the use of an additional ingredient (v) defined to be a single non-volatile emollient or a mixture of emollients selected from fatty acids, fatty alcohol esters, slightly water-soluble ethers and alcohols, hydrocarbons, water-insoluble ethers, mineral oils and polyorganosiloxanes. The nature of the composition according to claim 1 was furthermore restricted in all requests by defining it as anhydrous and/or free from ethanol.

Claim 1 of the 1st, 5th-7th, 12th-15th, 17th, 21st-23rd and 28th-31st auxiliary Requests contained in addition the proviso that the claimed composition “does not contain from 0.01% to 5% by weight of a trihydroxy stearin suspending agent”.

In response to objections filed by the opponents, the patent proprietor filed revised 1st, 5th-7th, 12th-15th, 17th, 21st-23rd and 28th-31st auxiliary requests in order to correct a typing error concerning the place of the decimal in the amount of 0.01% defined in the proviso, which amount should read instead “0.1%”.

The Board then summoned the parties to oral proceedings (OPs) to be held on June 10, 2011. In preparation for the OPs, the Board issued a communication dated 5 April 2011 containing the preliminary and non-binding opinion that none of the requests appeared to meet the requirements of A 123(2).

Concerning the issue of novelty of claim 1 over the disclosure of Examples 6 and 7 of D18 raised by the opponents, the Board indicated, inter alia, that the question of whether the compositions 6 and 7 of D18 comprised “a moisturising cream providing occlusion or humectancy” had to be examined in view of the meaning to be attributed to this expression. Attention was drawn in this respect to the specification. It appeared in view of the relevant passages that the expression “a moisturising cream providing occlusion or humectancy” was meant to define any cream which would either reduce “the rate of transepidermal water loss through old or damaged skin” or protect “otherwise healthy skin from the effect of a drying environment”. As the patent in suit did not quantify the degree of reduction or protection qualifying a cream as being occlusive, it appeared that any cream providing any degree of reduction of the rate of transepidermal water loss or any protection from the effect of a drying environment should be considered as a cream providing occlusion.

On May 25, 2011, the submitted five sets of claims as their new main and 1st to 4th auxiliary requests. Claim 1 of the new main request read

Use of an antiperspirant composition for providing an antiperspirant effect while moisturising the skin, which composition comprises:

i. an antiperspirant active;

ii. a moisturising cream providing occlusion or humectancy;

iii. a non-polar hydrocarbon propellant and

iv. a carrier for the antiperspirant active.

In its decision, the Board first pointed out that the claims on file were filed at a very late stage of the proceedings (about two weeks before the OPs and more than two years after having received the reply of the opponents to the statement setting out the grounds of appeal). It then went on:

[3] The [patent proprietor’s] justification for the late filing of the new requests, namely that they had been filed in reaction to the Board’s communication, is not acceptable here, because the argumentation in support of the Board’s preliminary opinion that the claimed subject-matter had no basis in the application as originally filed and lacked novelty over D18 corresponded in substance to the reasoning of [opponent] II in reply to the grounds of appeal.

A Board communication under Article 15(1) RPBA is intended as guidance for the OPs. It helps the parties to focus their argumentation on issues that the Board considers crucial for reaching its decision. Where the Board’s communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justification for submitting new requests that the parties could have filed earlier.

In decision G 4/95 of the Enlarged Board of Appeal (EBA), it is pointed out that both opposition and opposition appeal procedures are primarily written procedures. In principle, OPs are scheduled at a point in time within an opposition or opposition appeal procedure when the written submissions of all parties, including the written presentation of facts and evidence by all parties, are complete.

In the present case, the [patent proprietor], at the latest after having received the submissions of [opponent] II that the claims proposed had no basis in the application as filed and that their subject-matter was in part anticipated by D18, should have submitted one or more additional set(s) of claims in order to overcome those objections if they considered it necessary. They chose, however, not to file any such request, the revised 1st, 5th-7th, 12th-15th, 17th, 21st-23rd and 28th-31st auxiliary requests filed with letter dated 2 December 2009 being submitted only in order to correct a typing error in the disclaimer contained in the previous requests, not to overcome the [opponent’s] objection, who had clearly objected to the introduction of that disclaimer, as it was made to overcome a novelty objection in view of prior art D18 that could not be considered as an accidental disclosure.

[4] The question also arises whether the new requests would overcome the existing objections.

Claim 1 of the main and 1st to 3rd auxiliary requests

[4.1] The [opponent’s] arguments had led the Board to the preliminary view, as indicated in the communication dated 5 April 2011, that D18 disclosed with its Examples 6 and 7 compositions that contained (i) an antiperspirant active comprising an aluminium salt (Aluminiumchlorohydrate), (iii) a non-polar hydrocarbon propellant (Propellant CAP 30), (iv) a volatile carrier fluid for the antiperspirant active (Cyclomethicone DC 245) and (v) an emollient ester of a fatty alcohol (Finsolv® TN). It was indicated in the Board’s communication that the homogenised mixture of Cyclomethicone DC 245, Finsolv® TN and Thixcin R that was contained in the compositions of Examples 6 and 7 of D18 was implicitly a moisturising cream providing occlusive properties within the meaning of the patent in suit, since Thixcin R was a known occlusive agent. Thus, the composition the use of which is now claimed in claim 1 of any of the present main and 1st to 3rd auxiliary requests was indicated in the Board’s communication to be disclosed in D18.

[4.2] The [patent proprietor] argued at the OPs before the Board that the use according to claim 1 of any of the new main and 1st to 3rd auxiliary Requests was novel over the disclosure of Examples 6 and 7 of D18, by virtue of the fact that the compositions described in Examples 6 and 7 of D18 were not described in that document to be used for the purpose of providing, in addition to the antiperspirant effect, also a moisturising effect for the skin. In other words, the sole definition in the present use claims of the purpose “while moisturising the skin” provided a distinguishing feature over the disclosure of D18, thereby overcoming in the [patent proprietor’s] opinion the [opponent’s] objection for lack of novelty. No other arguments were presented by the [patent proprietor] as to why the claimed use was novel over D18. It was in particular not argued that the composition the use of which is now defined in claim 1 of any of the present Main and 1st to 3rd Auxiliary Requests structurally differed from those disclosed in D18. The [opponent] also did not rebut the view that the homogenised mixture of Cyclomethicone DC 245, Finsolv® TN and Thixcin R provides occlusion.

4.3 According to decisions of the EBA G 2/88 and G 6/88 a claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under A 54(1) provided that such technical feature has not previously been made available to the public.

The question to be answered in the case under consideration is therefore whether or not in D18 a moisturising effect is disclosed. As shown above, the existence of an occlusive effect brought about by the creamy mixture obtained in Examples 6 and 7 of D18 has been implicitly made available to the public, as outlined in the Board’s communication dated 5 April 2011. Hence, the condition defined in decisions G 2/88 and G 6/88 to recognise novelty of the use of a known compound for a particular purpose is therefore here not fulfilled.

Thus, claim 1 as defined in any of the main and 1st to 3rd auxiliary requests does not prima facie overcome the existing objection of lack of novelty over D18. […]

[5] Accordingly, in view of the circumstances of the present case the late-filed main and 1st to 4th Auxiliary Requests that have been submitted in the absence of a proper justification and which are prima facie not allowable are in the interest of procedural economy not admitted into the appeal proceedings under A 114(2) in conjunction with Article 13(1) RPBA.

As a consequence, the appeal was then dismissed.

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