Wednesday, 27 June 2012

T 768/08 – Lethal Process

This is an appeal against the refusal of the application under consideration by the competent Examining Division (ED).

Claim 1 of the main request before the Board read (Compared to Claim 1 as filed, additional features are underlined, deleted features are crossed out).
A hair treatment composition containing, as the internal phase of an emulsion which itself constitutes the hair treatment composition, a silicone component, comprising droplets of silicone blend the silicone component being provided as a single blend, and the single blend being in the form of an aqueous emulsion which is added to the composition during the manufacture, the silicone blend comprising
(iii) from 50 to 95% by weight of the silicone component of a first silicone having a viscosity of at least 100,000 mm**(2)/sec at 25ºC, and
(iv) from 5 to 50% by weight of the silicone component of a second silicone which is functionalised,
and wherein the weight ratio of the first silicone to the second silicone in the silicone component is from 6:1 to 2:1.
In what follows, the Board deals with the clarity of the request on file :

[3.2] Process steps, such as the features “the silicone component being provided as a single blend”, “the single blend being in the form of an aqueous emulsion” and “which is added to the composition during the manufacture”, which were not present in Claim 1 of the previous claims requests, have been included in Claim 1, which concerns a composition of matter, to define the internal phase of that composition of matter.

[3.3] Since Claim 1 attempts to define the internal phase of the composition of matter, a hair treatment composition, hence the hair treatment composition, by reference to features of the process of its manufacture, i.e. it contains product-by-process features, it has to be decided whether Claim 1 fulfils the requirements of clarity stipulated by A 84, in particular having regard to the product-by-process features used.

[3.4] Before dealing with the objections under A 84, it is worth recalling the principles underlying the requirements of clarity under A 84 for claims for products defined in terms of the process of their manufacture, e.g. product-by-process claims.

Principles underlying the requirements of clarity under A 84,
in particular as regards product-by-process claims

[4] The second sentence of A 84 stipulates that the claims must be clear (Principle of clarity).

[4.1] The principle of clarity established by A 84 is an aspect of a broad general principle of law, i.e. legal certainty, namely the requirement that e.g. legal texts be clear and precise, which conveys the idea of predictability (scope and purpose of the text must be predictable).

[4.2] As established in G 2/88 [2.5], as regards drafting and amending claims in respect of inventions which are the subject of European patent applications and patents, the principle of clarity requires that the wording used must be such as to define the matter for which protection is sought in terms of technical features of the invention, having regard to the particular nature of the invention, having regard also to the purpose of the claims. The purpose of the claims is to determine the protection conferred by the patent (A 69), and consequently the rights enjoyed by the patent proprietors, having regard to the patentability requirements of A 52 to A 57. Still according to G 2/88 [7], the technical features of the invention are the physical features which are essential to it. As regards a claim to a physical entity, the technical features are the physical parameters of the entity, which in appropriate cases may be defined functionally. Hence, a primary purpose of the claim is to permit, in order to assess the patentability requirements, a comparison with the available state of the art.

[4.3] Although the breadth of a claim does not necessarily imply a lack of clarity, it is nevertheless subject to a further aspect of the principle of legal certainty, the requirement of proportionality, namely the weighing up and balancing of the contribution to the art and the sought-for scope of protection, i.e. the defined scope must be commensurate to the contribution to the art. Hence, the allowable breadth of a claim and the relevant extent of the patent monopoly, as defined by the claim, should correspond to the technical contribution to the art, thus to the invention as disclosed in the description (T 409/91 [3.3]). This implies that if a claim does not contain all of the features which are essential to the definition of the invention, it is not supported by the description (A 84).

[4.4] Already since decision T 2/80 [2, last sentence], it is established case law (C.II.B.5.3.5) that the principle of clarity stipulated by A 84 requires that it must be possible to understand the claims without reference to the description. Hence, as regards clarity, reliance to the description, or to A 69, cannot be considered as a substitute for an amendment which would remove the lack of clarity. This is especially applicable in examination proceedings, where the value of future legal certainty is paramount. Hence, as established in the case law (C.II.B.5.3.5, in relation to T 1279/04), amendments rather than protracted arguments should be the answer to genuine difficulties of interpretation, in particular in examination proceedings.

[4.5] Chemical substances may be defined by scientific designations, chemical formulae (explicitly foreseen in R 49), physical and structural features, properties as well as by the process of their manufacture (product-by-process claims). Hence, as regards clarity, for each chemical substance, the question arises as to which of these formulations of definition can unambiguously define the sought-for subject-matter and how the claim should enable the claimed subject-matter to be distinguished from the prior art.

[4.6] Product-by-process claims fulfil the need of defining chemical substances (such as macromolecules, complex compositions), which cannot be defined by their structure but, by way of the process of their manufacture. The justification for that kind of claim lies in the acknowledgement that the inventor is rewarded, not because of the theoretical explanation of the structure of the product but, for making available the manufacture of the claimed product (Münchner Gemeinschaftskommentar, 7th edition, May 1985, A 84, Notes 107-109, which inter alia cites the BGH decision “Trioxan”, published in GRUR 1972, 80).

[4.7] However, as correctly mentioned in the said Münchner Gemeinschaftskommentar (Note 108, which inter alia states that the Guidelines do not set any clarity restricting conditions on the drafting of product-by-process claims, with reference the opinion expressed by Bühling in GRUR 1974, 299), it is established case law of the Boards of Appeal of the EPO (C.II..B.6.1, 6.2 and 6.3), since T 150/82, that the choice of a product-by-process format for drawing up a claim is not at the free disposal of the applicants, unless two specific conditions are fulfilled:

(a) the claimed product itself fulfils the patentability requirements (which implies that a new and inventive process for manufacturing a known product cannot be used to define the known product with a product-by-process claim) (established case law, C.II.B.6.2); and,

(b) there is no other information available in the application for satisfactorily defining the claimed product by reference to its composition, structure or testable parameters (established case law, C.II.B.6.3, in particular T 956/04  [3.2]).

[4.8] According to T 150/82 [10, last sentence], the requirement that
“the form for a claim to a patentable product as such defined in terms of a process of manufacture (i.e. product-by-process claims) should be reserved for cases where the product cannot be satisfactorily defined by reference to its composition, structure or some other testable parameters” was to be established “in order to minimise uncertainty” (emphasis added by the Board).
[4.9] As regards the requirement that the claimed product itself fulfils the patentability requirements, it implies that all of the specific process conditions (such as starting materials and reaction or formulation or preparation conditions), needed to necessarily obtain the claimed product, as inevitable process product, whose novelty could then be established by e.g. comparative tests, should be defined by a product-by-process claim (Case law, C.II.B.6., in particular with reference to T 300/89, T 552/91 and T 956/04 [3.5.3-5, 3.6.7, 3.7-8]). Therefore, for such a claim to be clear, the product-by-process features should make it possible to establish the distinctions of the inevitable product of the product-by-process claim over the prior art.

[4.10] A combination of product and process features in a product claim is permissible (Case Law, II.B.6.4). However, as regards the process-by-product features, the criteria developed in T 150/82 apply (Case law, C.II.B. 6.4, e.g. T 129/88 [2.2.1-4]).

Lack of clarity (A 84)

[5] Claim 1 concerns a hair treatment composition, i.e. a composition of matter, in the form of an aqueous emulsion, the internal phase of which (i.e. the phase dispersed in the continuous water phase) comprises a silicone component. Claim 1 does not define precisely what the silicone component is, but indicates that it is provided as a single blend, in the form of an aqueous emulsion, which is added to the composition during manufacture. Also the term “single blend” is not defined as such (i.e. what kind of blend is meant). The weight percentages and ratios of the silicones comprised in the single blend are specified, which however can only relate to the those used in the preparation of the blend.

[5.1] The alleged contribution to the art by the claimed composition, as gathered from the application as filed […], is the provision of intimate blends of combinations of silicones which result in individual particles comprising a mixture of silicones. This alleged contribution was to be contrasted to the known, separate addition of emulsions of each of the constituent silicone components to the hair composition […]).

[5.2] It is apparent from the above that the alleged contribution relies on a particular intimacy of the combination of silicones, such as to result in individual particles comprising an intimate mixture of silicones. However, neither any degree of intimacy of the blend nor any constitution of the individual particles of the internal phase is defined in Claim 1.

[5.3] Moreover, still from the application as filed, in particular from the detailed description of the alleged invention, it can be gathered that:

(a) The single blend may simply be in form of a silicone mixture which can be added to the composition during manufacture […].

(b) It is however preferred that the single blend be in the form of an aqueous emulsion which is added to the composition during manufacture […].

(c) Pre-formed aqueous emulsions of silicone may have advantages in that they themselves may be easier to handle or process than the raw silicone ingredients of the silicone component […]

(d) When the silicone present in the composition is added as an already homogenised mixture, it will be present in the hair treatment composition as a homogeneous mixture of silicones […]. That is, each silicone droplet in the composition will have essentially the same composition and will comprise a mixture (typically a solution) of the two types of silicone which together make up the silicone component of the composition, i.e. first silicone and second silicone […].

[5.4] It follows from the foregoing that:

(a) aqueous emulsions of the silicone ingredients may be used, i.e. may be put together, e.g. in form of a single emulsion, which will then contain a single blend of silicones; or, more particularly,

(b) the silicones may firstly be blended (pre-blending step) and homogenised, then the homogenised pre-blend can be emulsified, in order that each droplet essentially has the same composition. Finally, that pre-homogenised and pre-emulsified single blend in form of an aqueous emulsion is added to the final composition during manufacture.

[5.5] Hence, the term “single blend” of Claim 1 encompasses not only an aqueous emulsion of pre-blended, homogenised and pre-emulsified silicones but also an aqueous emulsion obtained from blending two separate pre-emulsified silicone ingredients into a single aqueous emulsion, the internal phase of which will be made up of the silicone ingredients in their respective droplet form, hence of a single blend of silicones, in controlled particle sizes, uniformly dispersed in the emulsion, suitable to be added to the final composition.

[5.6] The attempt by the appellants to reduce the breadth of the term “single blend” of Claim 1 to a pre-blended, homogenised and pre-emulsified silicone blend, hence to each particle of the emulsion containing a mixture or a solution of the silicones, as illustrated in the description of the application as filed […], amounts to reading additional features and limitations into Claim 1, not explicitly specified as such in Claim 1, but presented as features of a particular embodiment of the alleged invention only in the description, in order to avoid an objection of lack of novelty. This improper claim interpretation is not allowable, as established in the case law (supra) (C.II.B.5.3.4, for instance with reference to T 939/99 and T 681/01).

[5.7] Also, in the present case, although the silicones themselves are polymers, the clarity of the definition at issue relates to the way of blending and emulsifying them, for the purpose of cosmetic preparations, not to their structure, however complex it may be. Cosmetic preparations containing emulsified silicones are well known, as apparent from the prior art cited in the search report, in particular from D3 mentioned in the decision under appeal. In this field, the emulsions and compositions are normally defined by their structure and properties. Hence, already for those reasons, a product-by-process definition is likely to render difficult any comparison with the prior art. In fact, as shown by the file history of the present case, despite the comparative tests provided, the crux of the decision under appeal still lies in the difficulty of assessing novelty over the prior art, e.g. D3.

[5.8] Above all, in the present case, the claimed composition, in particular its internal phase, can be defined structurally by reference to the constitution of each of the droplets, as illustrated in the description of the application as filed […], in order to make clear where the alleged distinctions from the prior art lie. For this very reason Claim 1 must be refused for lack of clarity under A 84, in compliance with the second requirement set by T 150/82.

[5.9] In view of this decision, the further objections under A 84 raised by the Board need not be pursued in the present decision.

[5.10] As apparent from the foregoing, Claim 1 lacks any process features relating to the steps of pre-blending and homogenising the silicones before emulsifying them in form of an aqueous emulsion. Hence, even if a product-by-process definition were the only way of defining the composition, the question whether that lack of definition of essential steps inevitably led to the claimed product, i.e. whether Claim 1 lacks clarity under A 84, would arise. However, still in view of the above decision, this question also need not be dealt with.

[5.11] Therefore, the sole claims request maintained by the appellants is not acceptable. […]

The appeal is dismissed.

If I understand this correctly, whenever the invention has been described via process features although a structural description was possible, the claim has to be refused for lack of clarity, even if the process features as such are perfectly clear. In T 2019/09, Board 3.3.01 had come to the same conclusion not long ago (cf. the corresponding post on this blog).

As a corollary, if such a claim is granted, it should not be possible to raise this objection in an opposition.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Michael Thesen said...

What is the impact on application drafting? After all, the 2nd criterion asks whether a structural definition is possible based on the information in the application and does not pertain to the theoretical possibility of such a definition.

A structural definition of the product is sometimes possible (e.g. giving grain sizes, dimensions of contact surfaces between grains etc. of a sintered material) but not desirable with regard to the scope of protection.

Is it, in such a case, better not to mention the (possible but undesired) stuctural definition in the specifcation risking to step over the 1st criterion without backup?

oliver said...

Hello Michael,

You might be right. If there is no hint in the application that a structural definition is feasible, the ED is unlikely to raise the objection.

oliver said...

What I find intriguing about this approach is that the case law somehow extends the concept of clarity by making it encompass something like easiness-to-search or easiness-to-compare-with-the-prior-art. I doubt the founding fathers meant this when the clarity requirement was drafted. The clarity requirement concerns the skilled person rather than the skilled Examiner. But then, it is true indeed that applicants should be hindered from giving known or obvious subject-matter the appearance of novelty and/or inventive step by finding exotic ways of presenting it. And as there is nothing but the clarity requirement to fight against such abuse, I think this approach can be approved.

Kimiko Loko said...

Hi Oliver,

there are more ways to fight against the abuse you mentioned. For example, raising a lack of novelty, as the subject matter would be implicit in the state of the art.

Michael Thesen said...

I think that the first requirement, i.e. that

(a) the claimed product itself fulfils the patentability requirements (which implies that a new and inventive process for manufacturing a known product cannot be used to define the known product with a product-by-process claim) (established case law, C.II.B.6.2)

is sufficient to prevent such abuse (and has a clear basis in the statutory provisions). Adding furhter requirements will inevitably result in a loss in the scope of protection and deprives the inventor of at least a part his (fundamental) right to the invention.

Of course, the burden of proof for the above requirements should on the applicant's side unless the novel and non-obvious properties of the product are plausible - just as for other technical effects.

If, on the other hand, the product is the inevitable result of a kown process, then it would indeed not be novel, as Kimiko Loko suggests.

I think that Art. 84 is inapropriate for this rejection also for other reasons: Art. 84 relates to the clarity of the claims alone and the question wheter or not a definition is clear does not depend on whether or not other (potentially clearer) definitions would be possible.