T 2273/10 – The Crux With Preferences

This appeal was filed after the Opposition Division had revoked the opposed patent the claims of which were directed at hair cleaning compositions.

The statement of grounds of appeal (SGA) contained a main request and two auxiliary requests.

On October 23, 2012, the patent proprietor filed a new main request and new auxiliary requests 3 to 5.

On November 12, 2012, the patent proprietor filed new pages 10ter comprising two tables with disclaimers, both for the main request and auxiliary requests.

Oral proceedings (OPs) were held on November 16, 2012.

*** Translation of the French original ***

Admissibility of the third auxiliary request

[1.1] [Opponent 4] argued that the third auxiliary request, which had been filed during the OPs, was late filed and requested [the Board] not to admit it.

[1.2] In its response, the [patent proprietor] has referred to its letter dated October 23, 2012, and in particular to the following passage […]:

“Third auxiliary request

It is identical to the main request filed together with the SGA, except that:

(a) claim 1 has been amended by deleting potassium chloride

(b) the correction of the second disclaimer corresponding to example 8 of document D2-2, indicating that

(i) the glycerine concentration is 2% by weight rather than 4% by weight

(ii) sodium hydroxide is used in a quantity (qs) that is sufficient to obtain a pH value greater than 6, or citric acid is used in a quantity (qs) that is sufficient to obtain a pH value greater than 5.5”

[1.3] The Board notes that the three versions of page 10ter of the third auxiliary request that have been filed by letters dated February 8, 2011, October 23, 2012, and November 12, 2012, have finally been limited to one single version in the request filed during the OPs. Moreover, page 10bis has been added. Thus the complete set of claims has been presented for the first time during the OPs.

[1.4] The argument of the [patent proprietor] according to which the omission of page 10 was an obvious error is not valid. The skilled person would only have considered that the wording of claim 1 of the third auxiliary request was identical to the wording of claim 1 of the main request filed together with the SGA – with the exception of amendments (a) and (b) mentioned in the above mentioned letter – if there had not been any contradictions between this information and the actual wording of claim 1 of the third auxiliary request.

[1.5] However, there is such a contradiction, insofar as claim 1 of the third auxiliary request differs from claim 1 filed together with the SGA by additional features:

The first disclaimer on page 10ter filed with the SGA contains PEG 120 Methyl Glucose Trioleate (Glutamate LT) and the second disclaimer mentions 0.3% by weight of a perfume. The version filed during the OPs discloses PEG 120 Methyl Glucose Dioleate (Glutamate DOE-120) and 0.1% by weight of a perfume.

[1.6] As a consequence of these additional differences, which are not described in the letter of the [patent proprietor], the skilled person has no reason to assume that the rest of claim 1 of the third auxiliary request has to be identical to claim 1 of the main request filed with the SGA. Consequently, the omission of page 10bis does not constitute an obvious error.

[1.7] Moreover, in cases where considerable amendments are filed, the patent proprietor has to present complete requests sufficiently in advance so as to give the other parties the opportunity to prepare the OPs. This duty has not been complied with in the present case.

[1.8] Therefore, the Board exercises its discretion and decides not to admit the third auxiliary request filed during the OPs.

Main request – A 123(2)

[2.1] Compared to claim 1 as filed, claim 1 of the main request inter alia contains the features that at least one electrolyte is sodium chloride or potassium chloride in amounts of 0.5 to 3% by weight, and that the total quantity of surfactant(s) is greater than 5% by weight of the active ingredient.

[2.2] The [opponents] argued that these features corresponded to a selection from several lists. The [patent proprietor] replied that claim 1 corresponded to a combination of the most preferred features of the invention.

[2.3] The Board does not share the opinion of the [patent proprietor].

[2.4] Claims 1, 12 and 13 as filed disclose that ingredient (b) of the liquid cleaning composition can be an electrolyte (in general), an alkali metal salt, sodium chloride, potassium chloride, or potassium sulphate.

The last paragraph of page 4 as filed gives the same information but in addition specifies that sodium chloride, potassium chloride and potassium sulphate are preferred and that sodium chloride is particularly preferred.

[2.5] Thus, the selection of sodium chloride and potassium chloride corresponds to the selection of a preferred ingredient and the particularly preferred ingredient.

[2.6] Claims 14 and 15 as filed give information regarding the content of electrolytes that are present in the composition. Contents greater or equal to 0.25, from 0.25 to 5%, and particularly from 0.5 to 3% by weight are mentioned. Consequently, the selected content corresponds to a more particularly preferred feature.

[2.7] Finally, claims 23 and 24 disclose the overall quantity of surfactants with respect to the total weight. The following contents are disclosed: greater than 5%, from 5 to 50%, from 6 to 50%, from 6 to 30% and from 8 to 25% by weight.

The second paragraph of page 9 of the description as filed mentions that the most general content is greater than 5% by weight, that 5-50% is preferred and that the other values are more preferred. “Greater than 5% by weight”, as mentioned in claim 1 of the main request,  corresponds to the most general range.

[2.8] Consequently, the argument that of the [patent proprietor] that claim 1 only contains the most preferred features is not correct.

[2.9] The application as filed discloses several possibilities for each of the three features mentioned above. In order to reach the claim wording, the skilled person has to make selections in several lists. These selections refer to preferred or non-preferred features.

Moreover, the choice does not correspond to a limitation of the lists; rather, specific values or ranges have been chosen. Consequently, this is a selection and not a limitation of the lists.

[2.10] Thus claim 1 of the main request does not comply with the requirements of A 123(2).

The appeal was dismissed.

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