T 678/09 – The Trap Is In The Detail

Drafting disclaimers that fully comply with the requirements of G 1/03 is far from easy, as the present decision once more illustrates.

The Opposition Division (OD) had revoked the opposed patent inter alia for non-compliance with the requirements of A 123(2).

Impressive claim 1 of the main request (which was also the main request before the OD) read (in English translation)

1. Cosmetic compositions for topical use for protecting the skin and/or hair from UV radiation, comprising

(a) a UV-filter having the general formula I

wherein in A: R¹ is 2-ethylhexyl, R² is tert-butyl, X is NH

(b) another UV-filter selected from the group consisting of ethoxylated ethyl p-aminobenzoate (25 mol), 2-ethylhexyl p-methoxycinnamate, 2-phenylbenzimidazolesulfonic acid and its salts, 2-hydroxy-4-methoxybenzophenone, 2-hydroxy-4-methoxybenzophenone-5-sulfonic acid, 3-(4'-methylbenzylidene)-d,1-camphor, 2,4,6-tri(p-(2-ethylhexoxycarbonyl)anilino)-1,3,5-triazine, 4-(tert-butyl)-4'-methoxydibenzoylmethane,

as well as conventional cosmetic thinning agents, auxiliaries and carriers customary in cosmetics

with the exception of:

(1) cosmetic and/or dermatologic compositions containing

(i) 4-(tert-butyl)-4'-methoxydibenzoylmethane

(ii) at least one triazine derivative of the following formula

wherein R’ is 2-ethylhexyl and R is tert-butyl, and

(iii) at least one alkyl β-β’-diphenyl-acrylate or alkyl α-cyano-β, β’-diphenylacrylate of the following formula

 wherein

• R₇ and R’₇, which are identical or not, are present in m- or p-position and chosen from among: hydrogen, a linear or branched C_1-8 alkoxy group and a linear or branched C_1-4 alkyl group;

• R₈ is a linear or branched C_1-12 alkyl group

• R₉ is hydrogen or a –CN group, and wherein these compositions do not contain any 2-ethylhexyl p-methoxycinnamate;

in a cosmetically and/or dermatologically acceptable carrier;

(2) Oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 2-ethylhexyl-4-methoxycinnamate, 4.0 g of triglyceryl methylglucose distearate; 1.0 g of glyceryl stearate; 7.4 g of C₁₂-C₁₅ alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0;

or oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 3-(4’-methylbenzylydene)-camphor, 4.0 g of triglyceryl methylglucose distearate, 1.0 g of glyceryl stearate, 7.4 g of C₁₂-C₁₅ alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0;

or oil/water day-cream consisting of 1.5 g of compound C, 3.5 g of 2-hydroxy-4-methoxybenzophenone, 4.0 g of triglyceryl methylglucose distearate, 1.0 g of glyceryl stearate, 7.4 g of C₁₂-C₁₅ alkyl benzoate, 5.0 g of avocado oil, 5.0 g of diisopropyl adipate, 0.2 g of Carbomer 940, 0.3 g of imidazolidinyl urea, 0.2 g of methylparaben, 0.1 g of propylparaben, 0.15 g of aminomethyl propanol, 3.0 g of glycerine, and distilled water q.s. to 100.0;

wherein compound C is a sunscreen compound of the following formula:

where R = (CH₃)₃C–; R₁ = R₂ = C₄H₉–CH(C₂H₅)–CH₂; X=O;

(3) Cosmetic composition, comprising a cosmetic substrate containing 1 to 5% by weight of a dibenzoylmethanes of formula (I)

wherein Q means methoxy and and G means ter-butyl

and 1 to 6% by weight of a composition of formula (II)

where R = (CH₃)₃C–; R₁ = R₂ = C₄H₉–CH(C₂H₅)–CH₂; X=O;

with the proviso that the weight ratio of the compounds of formula (II) and formula (I) is of at least 1.

The Board agreed that this request violated A 123(2):

*** Translation of the German original ***

Document D9 (disclaimer 2, first alternative)

[3.4.2] Document D9 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a p- methoxycinnamate in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the methoxycinnamate the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 2-ethylhexyl-4-methoxycinnamate is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure.

The first alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the first alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D9 in respect of all the components used and their quantities. Only the brand names (Markenbezeichnungen) “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. As mentioned in the impugned decision […] these designations are synonyms of these brand names that are generally acknowledged in manuals, so that their use instead of the brand names is not objectionable under A 84 or under A 123.

The [opponent] pointed out that the designation “Carbomer 940” was also a brand name the use of which in an amended claim was to be objected  under A 84.

However, the [opponent] has only asserted that the designation “Carbomer 940” was a brand name (Markenname) without providing any evidence. The fact that individual manufacturers use this designation for their corresponding commercial product does not necessarily mean that it is a brand name, all the more as this designation is also used in general manuals and their chemical composition is, therefore, considered to be generally known. Therefore, this argument of the [opponent] is not successful.

The [opponent] also argued that the brand name “Abiol©” was a specific compound, i.e. N,N’’- methylenbis (N'-(3-hydroxymethyl)-2,5-dioxy-4-imidazolidinyl)urea and not “imidazolidinyl urea”.

However, the designation “imidazolidinyl urea” is only a generally known common name of this very compound to the IUPAC designation of which the [opponent] refers. Therefore, this argument cannot succeed either.

Document D10 (disclaimer 2, second alternative)

[3.4.3] Document D10 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a benzylidenecamphor derivative in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the benzylidenecamphor derivative the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 3-(4’-methylbenzylydene)-camphor is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure.

The second alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the second alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D10 in respect of all the components used and their quantities. Only the brand names “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. This replacement of the brand names is not to be objected, for the reasons given [above] for the first alternative.

The [opponent] argued that besides the objections regarding the replacement of the brand names “Synthalen® K” and “Abiol©” by the designations “Carbomer 940” and “imidazolidinyl urea” made in view of the first alternative, the specific composition of Example 4 of document D10 also contained “perfumes”, which were absent from the second alternative of disclaimer 2.

However, it has to be noted that the oil/water day-cream of Example 4 already has a total amount of 100.0 % even without the addition of “perfumes”. Therefore, the addition of “perfume” cannot be part of the oil/water day-cream disclosed in Example 4 and, therefore, does not have to be incorporated into the second alternative of disclaimer 2. As a consequence, this argument of the [opponent] cannot succeed.

Document D11 (disclaimer 2, third alternative)

[3.4.4] Document D11 discloses in its claim 1 cosmetic compositions for the protection of human skin from sun radiation, comprising a 1,3,5-triazine derivative in combination with a 2-hydroxy-4-methoxy-benzophenone derivative in a cosmetically and/or dermatologically acceptable carrier. Both for the 1,3,5-triazine derivative as well for the benzylidenecamphor (sic) derivative the alkyl radicals of the ester and the amide group have to be chosen from lists. Only Example 4 discloses an oil/water day-cream wherein 2-hydroxy-4-methoxy-benzophenone is used as UV-filter – according to a UV-filter of list (b) of the opposed patent – in combination with a 1,3,5-triazine referred to as “compound C” – corresponding to triazine A of the opposed patent. Therefore, only the specific oil/water day-cream of Example 4 contains all the features of claim 1 of the opposed patent and, therefore, constitutes a novelty-destructive disclosure.

The third alternative of disclaimer 2 was incorporated into claim 1 in order to exclude this novelty-destructive part of the disclosure of document D9. According to the wording of the third alternative of disclaimer 2, what is excluded is an oil/water day-cream that is identical with the one of Example 4 of document D10 in respect of all the components used and their quantities. Only the brand names “Synthalen® K” and “Abiol©” were replaced by the designations “Carbomer 940” and “imidazolidinyl urea”. This replacement of the brand names is not to be objected, for the reasons given [above] for the first alternative.

[3.4.5] Therefore, the Board is of the opinion that the introduction of disclaimer 2 with its first, second and third alternatives intended to exclude the novelty-destructive parts of the disclosures of documents D9, D10, and D11, is allowable and does not violate A 123(2).

Document D13 (first disclaimer)

[3.4.6] Document D13 discloses cosmetic and/or dermatologic compositions containing a combination of several UV-filters in a cosmetically or dermatologically acceptable carrier. It discloses cosmetic and/or dermatologic compositions containing the UV-filter combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane with a UV-filter based on a 1,3,5-triazine derivative, wherein the preferred 1,3,5-triazine derivative corresponds to the triazine A claimed in the opposed patent. If at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate is added as a further UV-filter to this composition, its stability to light is increased […].

Thus document D13 discloses both compositions containing a combination of at least three UV-filters and compositions containing only two UV-filters, i.e. 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A.

According to the wording of disclaimer (1) […], however, only cosmetic and/or dermatologic compositions containing at least three UV-filters, i.e. a combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane, a 1,3,5-triazine derivative corresponding to triazine A of the opposed patent and at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate.

As a consequence, compositions that contain only the two UV-filters 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to triazine A of the opposed patent are not excluded from claim 1 of the opposed patent by the wording of disclaimer (1) and document D13 is still novelty-destructive for them (sic). As a consequence, the wording of the disclaimer is not appropriate for excluding the whole part of claim 1 that is not novel. Thus the passage introduced into claim 1 as “disclaimer (1)”, which is not found in the application documents as filed, is not a valid disclaimer within the meaning of decision G 1/03 and the introduction of this passage into claim 1 of the main request does not comply with the requirements of A 123(2).

The [patent proprietor] argued that the production of each composition began by providing the individual component; the [components] were added subsequently.  Therefore, page 9, lines 22 to 24 mentions a composition containing two UV-filters only as an intermediate step, but the cosmetic compositions constituting the invention of document D13 always contained a combination of three UV-filters. The disclosure of D13 that was to be excluded by the disclaimer was only defined by the features disclosed in combination (im Zusammenhang), i.e. a cosmetic and/or dermatologic compositon containing at least one alkyl-β, β’-diphenylacrylate or alkyl (α-cyano)-β, β’-diphenylacrylate in addition to the two UV-filters 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A, but free of octyl methoxycinnamate.

However, it has to be noted that on page 9, lines 22 to 24, document D13 discloses a cosmetic sunscreen composition containings a combination of 4-(tert-butyl)-4’-methoxydibenzoylmethane and the 1,3,5-triazine derivative corresponding to claimed triazine A as UV-filters.

Whether this is a preliminary stage of the cosmetic composition containing three UV-filters or a reference composition of the then prior art is not relevant as far as the disclosure is concerned. Therefore, the argument of the [patent proprietor] cannot succeed.

[3.4.7] […] As claim 1 […] does not comply with the requirements of A 123(2) because of the presence of disclaimer 1, the Board is of the opinion that a detailed discussion of the allowability of disclaimer 1 is superfluous.

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