T 1056/09 – Side By Side Yet Independent

The appeal was against the revocation of the patent under consideration by the Opposition Division.

Claim 1 of the main request on file read (in English translation):

Microbicidal active substance concentrate, which in aqueous solution contains

a) 5 to 30% by weight of at least one aliphatic, saturated mono- and/or dialdehyde comprising up to 8 carbon atoms and

b) 0.1 to 30% by weight of at least one nonionic surfactant of the formula

wherein k is equal to 4 and R a saturated or unsaturated, linear or branched alkyl radical with 6 to 10 carbon atoms or one phenylalkyl radical with 10 to 18 carbon atoms, wherein the weight percentage contents refer to the total amount of the aqueous solution respectively and wherein the amount of non-ionic surfactants of the formula

wherein k represents a whole number from 2 to 8 and R a saturated or unsaturated, linear or branched alkyl radical with 6 to 10 carbon atoms or one phenylalkyl radical with 10 to 18 carbon atoms, is 0.1 to 30% by weight.

The Board found the request to comply with the requirements of A 123 and A 84 and then examined its novelty:

*** Translation of the German original ***

[5.1] The [opponent] pointed out that the contents of document D1 destroyed the novelty of the claimed subject-matter. In particular, the [opponent] referred to column 4, lines 12 to 14 of D1

according to which the amounts of aldehyde and alcohol in the disinfectant concentrate of this document and the amounts of aldehyde and surfactant in claim 1 overlap. Moreover, the [opponent] added that the alcohol of document D1 was structurally identical to the surfactants of claim 1 of the opposed patent (see column 3, lines 44 and 45).

Moreover, the [opponent] submitted that the surfactant of formula R-(O-CH2-CH2)k-OH, where k = 4 and R represents 8 carbon atoms, which was mentioned in claim 1 of the opposed patent, was disclosed in document D1. In column 3, lines 45 to 47 it is mentioned that this alcohol has a chain of 8 carbon atoms and that the number of ethoxylate units in the alcohol can be 4. Therefore, the [opponent] excluded that the subject-matter of the main request was not novel (sic).

[5.2] The [lack of ?] novelty of a chemical substance is only acknowledged when the features of the claimed substance in combination were disclosed in this very combination in a disclosure of the prior art. In the present case it was only contested that the group of surfactants of formula R-(O-CH2-CH2)k-OH, where k = 4 and R represents 8 carbon atoms, was disclosed in document D1.

[5.2.1] The only relevant passage concerning the group of surfactants is found in column 3, lines 44 to 47. The skilled person can see from this passage that the length of group R can vary between 2 and 8 carbon atoms. The skilled person can also see that the number of ethoxylate units in the alcohol extends from 1 to 4. Nevertheless, contrary to the opinion of the [opponent], the Board considers that although both lists were listed (aufgeführt) side by side in the description of document D1, they are independent of each other. In other words, there is no indication in document D1 from which it can be derived that, when the group R contains 8 carbon atoms, there necessarily have to be 4 ethoxylate units in the alcohol of formula R-(O-CH2-CH2)k-OH (see Case Law of the Boards of appeal, 6th edition, I.C..4.1.1.c).

[5.3] As document D1 was the only document used to challenge the novelty of claim 1, the Board comes to the conclusion that the claimed subject-matter of claim 1 of the impugned patent is novel (A 54).

The Board then remitted the case to the first instance for further prosecution.

To download the whole decision (in German), click here.

The file wrapper can be found here.