No reader of the case law of the Boards of
appeal can ignore that clarity is not a ground for opposition but that clarity objections may be raised against claims that have been amended during opposition (appeal)
proceedings, if the lack of clarity arises from the amendment.
Sometimes even apparently minor amendments
can open the door to clarity objections, as the present decision shows.
Here the opponent filed an appeal against
the decision to maintain the opposed patent in amended form.
Claim 1 of the main request before the
Board was directed to a pearlized cleansing composition for personal care consisting
of ingredients (a) to (h). Ingredient (g) was defined to be “optionally,
one or more members selected from the group consisting of an effective amount
of a pH modifying agent; an effective amount of a viscosity modifying agent; an
effective amount of a preservative; fragrance; and a coloring agent”.
The opponent argued that in a claim
directed to a composition of matter and drafted with an open wording of the
type “composition comprising ...”, additional not specifically listed
ingredients could still be comprised in the claimed composition; consequently,
the exact assessment of the range of compounds falling under the definition of
classes of ingredients which are optional according to the wording of the claim
was not relevant for determining which compositions were excluded from the
extent of the claim; to the contrary, a closed wording of the type “composition
consisting of ...” did not allow the presence of additional not specifically
mentioned ingredients; therefore, in such a case the extent of all the classes
of components listed, including optional ones, had to be clear in order to
enable the skilled person to recognise the limits of the claimed composition. The
change from the open wording of claim 1 as granted to the closed wording of
claim 1 according to the main request rendered necessary the interpretation of
the meaning of the optional ingredient (g); therefore, objections to the
clarity of this ingredient (g) arising from the amendments to the granted claim
had to be allowed. In claim 1 the optional component (g) included some
functionally defined classes of compounds, the meaning of which was not
explained in the patent in suit; therefore, it was not clear which range of
compounds was encompassed by the wording “an effective amount of a viscosity
modifying agent”, which could theoretically include a multitude of very
different ingredients having more than one possible functional activity;
therefore, it was not possible for the skilled person to assess exactly the extent
of the claimed composition.
The patent proprietor argued that the
wording of component (g) had remained unchanged with respect to that of the
granted claim 1; therefore, its clarity could not be challenged. Moreover, the
classes of compounds listed as optional component (g) were well known to the
skilled person and some suitable compounds were listed in the description of
the patent in suit; therefore, claim 1 was clear.
The Board found the opponent’s arguments
more persuasive:
[1.1] Lack of clarity is not itself a ground for opposition and
according to the established jurisprudence of the Boards of Appeal of the EPO
objections to the clarity of claims are only allowable if they arise in
relation to the amendments made (see Case Law of the Boards of Appeal of the
EPO, 6th edition, 2010, point VII.D.4.1.4 […], as well as point VII.D.4.2 […]).
In the present case the [opponent] raised inter alia an objection as to the clarity of component (g) of claim
1 which reads: “(g) optionally, one or more members selected from the group
consisting of an effective amount of a pH modifying agent; an effective amount
of a viscosity modifying agent; an effective amount of a preservative;
fragrance; and a coloring agent”. Even though the wording of component (g) has
remained identical to that contained in the granted claim 1, the amendment of
granted claim 1 from the open wording “A pearlized cleansing composition for
personal care comprising ...” into the closed wording “A pearlized cleansing
composition for personal care consisting of ...” has rendered, in the [opponent]’s
view, the limits of the claim unclear insofar as component (g) is concerned.
Therefore, the objection to the clarity of the claim should be allowed.
[1.2] It is
undisputed that the closed wording of claim 1 according to the main request
implies that only the components specifically listed in the claim can be
contained in the pearlized cleansing composition. Therefore, also the meaning
of the optional component (g) is essential for defining the limits of the
claimed composition and for knowing which compositions are not encompassed by
the wording of the claim.
To the contrary, the granted
claim 1, because of its open wording, implied that additional amounts of
unspecified ingredients suitable for use in a pearlized cleansing composition
could still be included in the claimed composition. Consequently, the extent of
the optional component (g) was not important for defining the limits of the
claimed composition.
In fact, even though the
skilled person would have been uncertain if a certain amount of a compound X
could fall under the definition of component (g), the open wording of the claim
would have allowed anyway the presence of such a compound X as additional
ingredient not specifically listed in the claim and there would have been no
doubts upon the exact extent of the subject-matter covered by the claim.
Hence, even though the wording
of component (g) has not been modified with respect to that of the granted
claim 1, the amendment to the granted claim from an open wording to a closed
one has in the present case an influence on the assessment of the extent of the
claim insofar as component (g) is concerned.
Therefore, the possible
unclarity originates from this amendment and the objection raised by the [opponent]
as to the clarity of claim 1 with regard to component (g) is allowable.
[1.3] It is established jurisprudence of the Boards of the Appeal of the
EPO that, in order to insure legal certainty, a claim must clearly define the
matter for which protection is sought (see T 728/98 [3.1] as well as T 337/95 [2.2-5]).
Insofar as component (g) is concerned, claim 1 according to the main
request requires, for example, the optional presence of “an effective amount of
a viscosity modifying agent”. Therefore, the principle of legal certainty
requires the identification of the meaning of the above mentioned technical
feature in order to establish without any doubt the subject-matter covered by
the claim.
The description of the patent in suit does not contain any specific
definition for the term “viscosity modifying agent” and for its “effective
amount” and reports only two examples of viscosity modifiers, sodium chloride
and sodium cumene sulphonate, and some preferred concentrations (see paragraph
27).
Moreover, the Board remarks that many ingredients, which are
theoretically able to modify the viscosity of a composition, can have in the
same composition also other different functions. In fact, as discussed in the
oral proceedings, behenyl alcohol, which is component (b) of claim 1, is a
pearlizing agent but also increases the viscosity of the composition and sodium
chloride, one of the two viscosity modifying agents specifically cited in the
patent in suit, is also well known as electrolyte. Furthermore, solvents such
as water or ethanol could also be considered as viscosity modifiers because of
their solubilising properties.
From the above considerations
it results that, in the absence of a specific teaching in the patent in suit
which would suggest to the skilled person which compounds should be intended as
“viscosity modifying agents” and which not, the labelling of an optional
component as a “viscosity modifying agent”, which is essential for establishing
the limits of the extent of the claim, is arbitrary and depends on the mental
label the user wishes to apply to a specific ingredient (see, for example, T 586/97 [4.1.2.2]).
Therefore, a composition comprising an ingredient X, which would be part
of the extent of the claim if it is added in virtue of its ability to modify
the viscosity, would fall outside the extent of the claim if the viscosity of
the composition is modified by other components and the ingredient X is
included for another purpose, for example as an electrolyte.
Consequently, the functionally defined class of compounds “viscosity
modifying agent” does not identify clearly and unambiguously a limited range of
ingredients.
Moreover, the unclarity of the exact limitation conferred to the claim
by the wording of this specific component (g) is increased by the requirement
of the claim to comprise “an effective amount” of such an ingredient; in fact,
the meaning of “effective amount” is not specified in the patent in suit and,
for example, the amount of a component X, necessary for modifying the viscosity
of the composition, will depend on the other components present in the
composition and could be different for any compound and any composition.
The Board thus concludes that the wording of claim 1, for the reasons
mentioned above, does not allow the skilled person to recognize with certainty
which compositions are included and which are excluded from the extent of the
claim.
Claim 1 thus lacks clarity.
The patent was finally revoked.
Should you wish to download the whole
decision, just click here.
The file wrapper can be found here.
0 comments:
Post a Comment