This is an examination appeal.
*** Translation of the German original ***
The Board first dealt with the main request, claim 1 of which read:
Cosmetic preparation comprising a combination of(a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI);(b) at least one non-ionic polymer;(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7).
[2.1] The Examining Division (ED) noted in the impugned decision that the subject-matter of claims 1 and 9 lacked novelty over the disclosure of documents D2, which belonged to the state of the art pursuant to A 54(3).
[2.2] The Board endorses this argument and the conclusion of the ED. Document D2 […] discloses examples of “Styling Mousse 3” and “Styling Mousse 4”, respectively, i.e. SM24, SM25, SM26, SM29, SM30, SM31, SM32, SM35, SM36, SM37, SM40, SM41, SM42, and SM43, each of which comprises a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI), i.e. the copolymers S2, S3, S4, S7, S8, S9, and S10, as well as a non-ionic polymer, i.e. hydroxyethyl cellulose, and cetyltrimethylammonium chloride. Thus all the features of claims 1 and 9 of the main request are disclosed in document D2.
[2.3] The appellant argued that the subject-matter of claim 1 was novel because the composition of preparations such as “Styling Mousse 4” was not disclosed directly and unambiguously in document D2 because it contained the product Dow Corning 949®Cationic the composition of which was not unambiguous. An ambiguous prior art document could not destroy the novelty [of the claimed subject-matter].
The Board does not find this argument persuasive because the exact composition of the product Dow Corning 949®Cationic in the examples “Styling Mousse 3” and “Styling Mousse 4” of document D2 is not relevant for the question of whether present claim 1 is novel. The respective examples clearly contain all three components (a), (b), and (c) of the claimed preparations. As present claim 1 is “open”, i.e. may contain components other than (a), (b), and (c), it is irrelevant what the respective examples of document D2 may contain in addition to that.
[2.4] Thus document D2 discloses all the features of claims 1 and 9 of the main request. Therefore, the Board comes to the conclusion, for the above reasons, that the subject-matter of claim 1 lacks novelty within the meaning of A 54(3).
The Board then discussed auxiliary request 1, claim 1 of which contained a disclaimer:
Cosmetic preparation comprising a combination of(a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI);(b) at least one non-ionic polymer;(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7),with the exception of recipes containing:2.00% by weight of cetrimonium chloride;7.00% by weight of Polyquaternium-46;0.1-1% by weight of a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI) in a ratio of (60/5/30/5), (55/5/35/5), (55/8/29/8), or (55/10/29/6);0.20% by weight of ceteareth-25;0.50% by weight of panthenol;0.05% by weight of Benzophenon-4;0.20 % by weight of Dow Corning 949®Cationic;15.00 % by weight of ethanol (96%);0.20 % by weight of hydroxyethyl cellulose;6,00 % by weight of propane/butane;ad 100 % by weight of water;which are adjusted to a pH of 5 to 6 by adding lactic or phosphoric acid. (my emphasis)
Clarity of the claims (A 84)
[3.1] The ED noted in the impugned decision that the subject-matter of claim 1 was not clear, because of the use of the trademark “Dow Corning 949®Cationic” in the disclaimer.
[3.2] A 84 in connection with R 43(1) requires the claims to be clear and to define the matter for which protection is sought in terms of the technical features of the invention. This requirement ensures that the public is not left in the dark as to which subject-matter is encompassed by the claims, and which is not. The Board is of the opinion that it follows from this principle of legal security that claims are to be considered as lacking clarity within the meaning of A 84 if they do not allow to draw that distinction (see T 337/95 [2.2-5]). Claims that contain an unclear technical feature, however, cause confusion as to the subject-matter that is actually encompassed by the claims. Because of this lack of legal security such claims, therefore, are unclear within the meaning of A 84. This is all the more true if the unclear feature is essential for distinguishing the claimed subject-matter from the state of the art (see T 728/98 [headnote 1]).
[3.3] In the present case claim 1 contains the trademark “Dow Corning 949®Cationic” in a disclaimer that has been introduced in order to restore novelty over prior art pursuant to A 54(3), i.e. document D2 […]. According to the established case law of the Boards of appeal, however, the use of a trademark is to be considered as unclear because it is not certain that the meaning of the trademark will remain unchanged until the expiration of the patent (see interlocutory decision T 762/90 [4.1.1]). As in the present case [the appellant] has not filed any evidence to the contrary, the Board endorses the argumentation of the ED according to which the trademark “Dow Corning 949®Cationic” corresponds to a blend that could be varied at any time. Thus this trademark has no clear-cut meaning, nor does the subject-matter of claim 1.
[3.4] The Board is not persuaded by the submissions of the appellant in favour of the clarity of claim 1, for the following reasons:
[3.4.1] The appellant referred to decision T 623/91 in which a composition referring to a trademark was excluded by means of a disclaimer without infringing A 84.
However, in the case underlying the cited decision [the patent proprietor] had provided evidence (see point [2.1] of the reasons) that in all likelihood a case of a change of the ranges of the corresponding chemical composition would lead to a change of the trademark. In the present case, however, the appellant has never submitted such an argument, and the Board has no reason to assume that the meaning of the trademark Dow Corning 949®Cationic would remain the same until the expiration of the patent.
[3.4.2] The appellant also submitted that the use of this trademark in claim 1 of the auxiliary request should nevertheless be allowed because otherwise it was not possible to exclude the novelty destroying compositions of document 2 by means of a disclaimer.
However, there is no right to the use of a disclaimer in a claim. A disclaimer may be allowable if it inter alia serves to re-establish novelty by distinguishing a claim over a prior art document under A 54(3), but it must meet the requirements of clarity and conciseness of A 84 (see G 1/03 [headnotes II.1 and II.4]). Among other things, this means that a disclaimer is not allowable if the necessary limitation can be expressed in simpler terms in positive, originally disclosed features in accordance with R 43(1), first sentence (see G 1/03 [3, penultimate paragraph]). In the present case novelty can indeed be re-established by positive features (see e.g. claim 1 of auxiliary request 2, point  below).
[3.5] As for the above reasons the technical feature “Dow Corning 949®Cationic” lacks clarity, this expression causes confusion as to which subject-matter is actually encompassed by the claims, and which is not. Because of this lack of legal security claim 1 does not comply with the requirement of clarity pursuant to A 84. Thus auxiliary request 1 of the appellant cannot be allowed.
So the Board finally discussed the second auxiliary request, claim 1 of which read:
Cosmetic preparation comprising a combination of(a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI);(b) at least one non-ionic polymer chosen from: the group of homopolymers of vinylpyrrolidon or vinylcaprolactam, the group of copolymers of vinylpyrrolidon and vinyl acetate, the group of terpolymers of vinylpyrrolidon, vinyl acetate and propionate, the group of polyvinyl caprolactam, polyvinylamids, the group of copolymers of vinylpyrrolidon and dimethylaminoethyl methacrylate, the group of terpolymers of vinyl-caprolactam, vinylpyrrolidon and dimethylaminoethyl methacrylate, the group of terpolymers of vinylpyrrolidon, vinylimidazole and Methacrylamide or the group of terpolymers of vinylpyrrolidon, vinylimidazole and vinyl caprolactam;(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7). (my emphasis)
 The Board does not see any reason to diverge from the positive decision of the first instance as to the novelty of the subject-matter of auxiliary request 2. As a consequence of the listing of the non-ionic polymers (b) the subject-matter of auxiliary request 2 is novel over the disclosure of document D2 because this document does not disclose these particular polymers (b) in combination with the copolymer (a) and cetyltrimethylammonium chloride (c). The subject-matter of auxiliary request 2 is novel over the disclosure of document D1 because the latter does not disclose cetyltrimethylammonium chloride.
Inventive step and remittal
[5.1] When assessing inventive step the ED used the problem-solution approach. At first, this approach consists in determining the closest prior art and the objective technical problem with respect to the latter, which is solved over the entire scope of claim 1. When doing so, it is necessary to assess the technical results or effects, respectively, which are obtained by the claimed invention over the determined closest prior art (see e.g. T 1/80 and T 248/85 and Case Law, 6th edition, 2010, Section I.D.2(c)).
[5.2] However, the ED refused to take into account the comparative trials of the appellant for the formulation of the objective technical problem because they concerned a teaching that could not be derived from the original application, i.e. that the use of cetyltrimethylammonium chloride was related to improved foam properties. Moreover, it was not possible to derive from the original application that cetyltrimethylammonium chloride was “an essential feature” of the claimed preparation, in particular because other embodiments had been described as “advantageous according to the invention” (“erfindungsgemäß vorteilhaft”).
[5.3] However, the problem-solution approach does not require the application to describe which feature is responsible for precisely which advantage or technical effect, respectively (see e.g. T 818/93 [5.2, 4th paragraph]). In order to comply with the requirement of inventive step all that is needed is that for the skilled person the claimed subject-matter results from the state of the art in a way that is not obvious (naheliegend) (A 56). It is common practice to incorporate features taken from the dependent claims or from the description into an independent claim in order to make its subject-matter patentable and to use the effects and advantages related to those features as a basis for a (re)formulation of the technical objective (see e.g. T 39/93 ). There is no provision according to which the part of the originally claimed subject-matter which is considered to be patentable at the end of the examination has to be particularly highlighted (hervorgehoben) or described as an essential feature of the invention. (NB: I think it is clear what the Board intended to convey in the last sentence, but as it stands it is weird.)
[5.4] In the present application all disclosed embodiments are said to be according to the invention. In response to the objections raised by the ED it became necessary to limit the claimed subject-matter to a particular embodiment, i.e. preparations containing cetyltrimethylammonium chloride, in order to re-establish novelty and inventive step. Whether this limited embodiment is particularly highlighted as such in the application and whether other embodiments have been disclosed to be “advantageous according to the invention” is irrelevant for the assessment of its inventive step.
[5.5] Before the ED the appellant formulated the technical objective with respect to the closest prior art to be the definition of cosmetic preparations having a more stable foam with smaller bubbles. This objective is mentioned almost literally in the original application […]. As evidence for the successful solution of this problem by the preparations according to the claims containing cetyltrimethylammonium chloride the appellant has referred the first instance to comparative trials, which the ED has not taken into account. However, in order to determine the objective technical problem, it is necessary to assess the technical results or effects, respectively, which are obtained by the claimed invention over the determined closest prior art (see point [5.1] above).
[5.6] Thus [the Board] notes that the first instance has not yet completely examined [the application] on the basis of the principles developed by the Board, i.e. by determining the objective technical problem and its solution. As a consequence of this incorrect application of the problem-solution-approach the inventive step analysis is based on an error, i.e. the comparative trials D3 as well as V1 and V2 filed on September 7, 2007, and September 24, 2010, have not been taken into account in the determination of the objective technical problem over document D1. As a consequence it is necessary to remit the case to the first instance for further examination.
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