Saturday, 4 February 2012

T 197/10 – Self-Explaining

The opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

Claim 1 of the patent as granted read (in English translation):
Builder-containing laundry detergent or cleaning composition comprising a water-soluble builder block, alkali metal percarbonate and a cellulose derivative capable of removing dirt, obtainable by alkylation and hydroxyalkylation of cellulose, and additionally a compound which releases an organic percarboxylic acid under perhydrolysis conditions and/or an organic percarboxylic acid, wherein the builder block is composed of the components
(a) from 5% by weight to 35% by weight of citric acid, alkali metal citrate and/or alkali metal carbonate which may be replaced at least partly by alkali metal hydrogencarbonate,
(b) up to 10% by weight of alkali metal silicate having a modulus in the range from 1.8 to 2.5,
(c) up to 2% by weight of phosphonic acid and/or alkali metal phosphate,
(d) up to 50% by weight of alkali metal phosphate, and
(e) up to 10% by weight of polymeric polycarboxylate.
In its decision the OD came to the conclusion that in view of the definition for the expression “builder block” in the description of the opposed patent the claim had to be interpreted in such a way that the laundry detergent or cleaning composition only contained water-soluble builder substances. Therefore, claim 1 was novel over the examples of D4, which also contained the builder substance zeolite which was insoluble in water.

Before the Board, the opponent submitted that the term “comprising” indicated that further components such as a builder substance that was insoluble in water, could be present.

The patent proprietor responded that the skilled person would not know the expression “builder block” and would examine the description of the patent.

*** Translation of the German original ***

Novelty of the subject-matter of claim 1

[1] The [patent proprietor] has submitted that the expression “builder block” used in claim 1 was not necessarily clear for the skilled person. The skilled person did know builder substances but, not knowing what the expression “builder block” meant (emphasis added), he would consult the description and, when doing so, realize that this expression summarised all builder substances of laundry detergents or cleaning compositions and that all those substances had to be water-soluble. thus the presence of builder substances that were not water-soluble was excluded by the wording of claim 1.

[2] The Board cannon share the opinion of the [patent proprietor].

[2.1] Claim 1 describes a “Builder-containing laundry detergent or cleaning composition comprising a water-soluble builder block, […] composed of the components (a) […], (b) […], (c) […], (d) […], (e) […]”

[2.2] As the expression “builder block” in claim 1 is described as consisting of components (a)-(e) and as the remaining wording of the claim does not leave any doubt what is to be understood by the expression “builder block”, the skilled person has no reason to assume that the claim possibly contains an unclear expression. Therefore, there was no incentive for the skilled person to interpret the wording of the claim in the light of the contents of the description. As a consequence, the skilled person had no reason to assume that the expression “comprising” in claim 1 had a meaning different from its common meaning, i.e. that additional components could be present besides the listed components.

[2.3] When the claims are worded in such a clear and unambiguous manner that the skilled person can understand them without difficulty, there is no incentive to draw on the description for interpreting them. When there is a discrepancy between the claims and the description, then the unambiguous wording of the claims is to interpret according to what the skilled person would understand without consulting the description.

Thus, when there is a discrepancy between clearly defined patent claims and the description, the parts of the description that have no expression in the patent claims are, as a rule, not to be taken into account for the assessment of novelty and inventive step.

[2.4] In the present case, claim 1 of the impugned patent discloses that the laundry detergent or cleaning composition comprising a water-soluble builder block composed of components (a)-(e). As a matter of fact, this wording does not exclude that there may be further components, such as builder substances that are not water-soluble.

[2.5] Examples A to D of document D4, which were cited by the [opponent] define laundry detergent or cleaning compositions which are within the scope of claim 1 of the impugned patent and which further comprise the builder substance zeolite, which is not water-soluble.

[2.6] Therefore, in view of the above considerations, the claimed subject-matter is considered to be disclosed by examples A to D of D4.

[2.7] For the above reasons, claim 1 of the impugned patent does not comply with the requirements of A 54(1)(2) EPC 1973. […]

The patent is revoked.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

NB: A French summary of the decision can be found on Le blog du droit européen des brevets (here).