T 9/10 – Hidden Danger

Something attorneys amending claims – especially in the chemical field – have to be aware of is the risk of adding features that apparently limit the claim but which de facto enlarge the scope of the claim. We have already seen such cases (e.g. here and here), here is yet another one.

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

Claim 1 as granted read:

A skin cleansing composition comprising

(A) 3 to 80 wt.% of an oil component,
(B) 1 to 45 wt.% of a hydrophilic nonionic surfactant,
(C) 1 to 45 wt.% of a lipophilic amphiphile,
(D) 3 to 80 wt.% of a water-soluble solvent and
(E) 3 to 80 wt.% of water,
and having an isotropic liquid phase exhibiting a bicontinuous structure.

Claim 1 of the main request before the Board read:

A skin cleansing composition comprising

(A) 3 to 80 wt.% of an oil component,

(B) 1 to 45 wt.% of a hydrophilic nonionic surfactant, having an HLB value of more than 8 and having a hydrophobic group with 8 or more carbon atoms,

(C) 1 to 45 wt.% of a lipophilic amphiphile, selected from nonionic surfactants having an HLB value of 8 or less, fatty alcohols having 8 to 25 carbon atoms, fatty acids having 8 to 25 carbon atoms and monoalkylphosphoric acids having 8 to 25 carbon atoms,

(D) 3 to 80 wt.% of a water soluble solvent and

(E) 3 to 80 wt.% of water,

and having an isotropic liquid phase exhibiting a bicontinuous structure.

The Board found this request to violate A 123(3):

[1.1.1] Claim 1 as granted defines a skin cleansing composition comprising inter alia “1 to 45 wt.% of a hydrophilic nonionic surfactant”, referred to as component (B).

[1.1.2] The use of the term “comprising” in connection with a numerical range defining the amount of a component implicitly means, that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see the head note of T 2017/07).

[1.1.3] In the present case this means that the protection conferred by claim 1 as granted, as far as component (B) is concerned, is restricted to skin cleansing compositions containing not less than 1 wt.% and not more than 45 wt.% of any kind of hydrophilic nonionic surfactant.

[1.1.4] The same considerations apply for components (A) and (C) to (E) in claim 1 as granted.

[1.1.5] In Claim 1 of the main request, the following definition is given for component (B): “1 to 45 wt.% of a hydrophilic nonionic surfactant, having an HLB value of more than 8 and having a hydrophobic group with 8 or more carbon atoms”.

[1.1.6] Given the amended definition of component (B) in the main request, this feature is to be regarded as restricting component (B) to the specific group of hydrophilic nonionic surfactants with the defined HLB value and number of carbon atoms in the hydrophobic group.

[1.1.7] As however the wording of claim 1 according to the main request is restricted as far as the specifically defined component (B) is concerned, due to the non-exclusive term “comprising” any other hydrophilic nonionic surfactant with HLB values and/or a number of carbon atoms in the hydrophobic group outside the definition given may be present in the skin cleansing composition.

[1.1.8] Consequently, since claim 1 as granted excludes any hydrophilic nonionic surfactant in an amount less than 1 and more than 45 wt.%, whereas claim 1 according to the main request allows the presence in undefined amounts of any hydrophilic nonionic surfactants not having the specific HLB values and/or the number of carbon atoms in the hydrophobic group, the protection conferred by claim 1 according to the main request is extended in comparison with the protection conferred by claim 1 as granted, contrary to the requirement of A 123(3).

[1.1.9] Similar considerations apply to feature (C) of the claimed composition.

To download the whole decision, click here.

The file wrapper can be found here.