T 2644/11 - Novelty and reference

EPO T 2644/11

For the decision, click here


Key points

• At issue was whether an earlier filing (D1) by the same applicant had disclosed the same invention and hence whether the claimed priority was valid. D1 also formed a A54(3) prior right. Accordingly, the Board seems to examine whether D1 discloses an anticipating embodiment.
• " The only question remaining is whether the reference to documents D2 and D3 in the sentence bridging pages 44 and 45 can be seen as an implicit disclosure of the water soluble silicones listed in claim 1. The crucial sentence reads as follows: "Non-limiting examples of suitable silicone hair conditioning agents, and optional suspending agents for the silicone, are described in [D2] and [D3] , which descriptions are incorporated herein by reference" 
• D2 mentioned a silicone falling under claim 1, however in a paragraph relating to non-ionic surfactants rather than in the paragrpaph of D2 relating to hair conditioning agents. Therefore, the Board finds that D1 does not anticipate the claim.
• The Board: " Independently of whether the skilled person would know or not that the silicones disclosed as nonionic surfactants could perform a hair conditioning function, he would not interpret the sentence in D1 as an invitation to scan the whole of the disclosure of D2 and D3 in order to find suitable silicone hair conditioning agents, but as a clear pointer to the part of the disclosure relating to silicones as hair conditioning agents." 

Summary of Facts and Submissions

I. European Patent No. 1 841 402 claiming priority of the US patent application 11/014,424 filed on 16 December 2004 was granted on the basis of 25 claims, claim 1 reading as follows:

"1. A shampoo composition comprising:

a) at least one minced polygalactomannan derivatized with a cationic substituent obtainable by; i) swelling a split of cassia with water in the presence of a cationic derivatizing agent capable of reacting with the hydroxyl group in the galactose and mannose units in the galactomannan backbone of the split to form a swollen split, optionally followed by dispersing the swollen split in a water/organic solvent mixture, and (ii) at least one step of wet-mincing the product obtained under (i);

b) a cleansing surfactant selected from anionic, cationic, amphoteric, and zwitterionic detersive surfactants, and mixtures thereof;

c) a water soluble silicone compound;

d) water."

Dependent claims 10 and 13 defined shampoo compositions according to claim 1 wherein the water soluble silicone was a polysiloxane containing a backbone segment represented by a specific chemical formula (claim 10) or was selected from one or more compounds represented by six chemical formulae (claim 13).

II. A notice of opposition was filed against the granted patent requesting revocation of the patent in its entirety.

III. During opposition proceedings the following documents inter alia were cited:

D1: WO-A-2004/113390 (filed on 19 June 2004 claiming the priority date of 20 June 2003 and published on 29 December 2004)

D2: US-A-5 104 646

D3: US-A-5 106 609

D8: US-A-4 840 811

D15: US-A-4 753 659

D19: US-A-5 656 257

D23: US 11/014,424 (priority document of the patent in suit)

D25: WO-A-2004/112733

IV. The decision of the opposition division announced at the oral proceedings on 6 October 2011 concerning maintenance of the patent in amended form was based on a single set of claims filed as main request during these oral proceedings and a description adapted thereto.

Claim 1 of the main request corresponded to claim 1 as granted with the amendment of the term "obtainable" into "obtained" in feature a) and the specification of the water soluble silicone according to original claim 10 or original claim 13.

V. The decision of the opposition division can be summarised as follows:

[...]

b) D1, which was filed by the same applicant as the patent in suit prior to the claimed priority, did not disclose the specific silicones listed in claim 1 of the main request. The claimed priority (D23), which was identical to the patent under dispute as filed, related therefore to a new combination of features in comparison with D1 with the consequence that the priority was valid for the subject-matter of the main request.

c) The subject-matter of the main request was novel over the disclosure of documents D1 and D25, which were both intermediate documents, as they did not disclose the specific water-soluble silicones of claim 1 of the main request.

[...]

Reasons for the Decision

Main request - priority and novelty

5. The appellant contested the validity of the claimed priority on the argument that the priority document D23 could not be considered as the first application according to Article 87 EPC in view of document D1. While the presence of a large overlap between the disclosures of D23 and D1 was accepted by both parties, the point of dispute was whether document D1 disclosed the specific water soluble silicones, which are listed in claim 1 of the main request. It is therefore on this point that the Board is called to decide.

5.1 Document D1 discloses silicones at several instances (e.g. page 36, line 18; page 44, line 27 to page 54, line 6). However, nowhere are water-soluble silicones of the specific chemical formulae defined in claim 1 explicitly disclosed. In this respect it it relevant to note that neither the generic disclosure on page 36 (line 18) mentioning "water-soluble agents (for instance silicones)", nor the list of generic classes on page 45 (lines 26 to 28) reading "Suitable silicone oils include polyalkyl siloxanes, polyaryl siloxanes, polyalkylaryl siloxanes, polyether siloxane copolymers, and combinations thereof" can be seen as anticipating the specific classes of silicones defined by specific chemical formulae as present in claim 1.

5.2 The only question remaining is whether the reference to documents D2 and D3 in the sentence bridging pages 44 and 45 can be seen as an implicit disclosure of the water soluble silicones listed in claim 1. The crucial sentence reads as follows: "Non-limiting examples of suitable silicone hair conditioning agents, and optional suspending agents for the silicone, are described in U.S. Reissue Patent 34,584, U.S. Pat. No. 5,104,646, U.S. Pat. No. 5,106,609, which descriptions are incorporated herein by reference", wherein the second and third cited documents correspond to D2 and D3.

5.3 Document D2 contains a section relating to hair conditioning agents and disclosing in particular silicone agents (column 16, line 25 to column 19, line 7). Therein it is first stated that examples of hair conditioning materials suitable for the compositions disclosed therein are volatile liquid hydrocarbons and silicone agents (column 16, lines 25 to 27); then it is specified that these materials have a low solubility in water (less than about 01.%, column 16, line 28 to 30); and finally silicones are exemplified by means of chemical formulae and reference to market products (column 16, line 42 to column 19, line 7). In a different part of the document (column 7, line 41 to column 9, line 65) examples of preferred classes of nonionic surfactants are given (column 7, lines 41 and 42) including silicone copolyols which may be polyalkylene oxide modified dimethylpolysiloxanes of a given technical formula (column 9, lines 1 to 44). The disclosure of document D3 is completely analogous including a section on silicones as hair conditioning agents (column 16, line 13 to column 18, line 65) and one on preferred classes of nonionic surfactants including silicone copolyols (column 7, line 38 to column 9, line 36).

5.4 While it was not disputed by the parties that the silicone agents disclosed in D2 and D3 as hair conditioning agents do not fall under the silicones listed in claim 1 and that those disclosed as nonionic surfactants do fall under them, there was disagreement on which classes could be seen as included in the disclosure of document D1 by means of the reference to D2 and D3.

5.5 The Board considers that the skilled person would find the sentence in D1 unequivocal and pointing to the silicones disclosed in D2 and D3 as hair conditioning agents. The fact that the sentence in D1 refers to "silicone hair conditioning agents" pointing to D2 and D3 and that D2 and D3 have a section relating to hair conditioning agents and addressing specific silicones does not leave any doubt about which part of D2 and D3 is incorporated by means of the reference. Independently of whether the skilled person would know or not that the silicones disclosed as nonionic surfactants could perform a hair conditioning function, he would not interpret the sentence in D1 as an invitation to scan the whole of the disclosure of D2 and D3 in order to find suitable silicone hair conditioning agents, but as a clear pointer to the part of the disclosure relating to silicones as hair conditioning agents.

5.6 The fact that in the analysis of novelty of a product claim the disclosure of a compound in a prior art document is relevant independently of the function attributed to it in the prior art disclosure, is not pertinent in this case. Here the water soluble silicones listed in claim 1 are not disclosed as such in document D1 and the reference to D2 and D3 makes it clear that silicones are referred to which are disclosed in those documents as accomplishing a specific function.

5.7 By virtue of the reference, therefore, only those silicones are incorporated in document D1 which are disclosed as hair conditioning agents in D2 and D3. As these silicones do not fall under the water soluble silicones listed in claim 1 of the main request, document D1 does not anticipate the subject-matter of claim 1 of the main request and cannot serve to put into doubt the fact that document D23 is the first application in the sense of Article 87 EPC, with the consequence that the arguments of the appellant contesting the validity of the priority must fail.

5.8 This conclusion is not in disagreement with the case law cited by the appellant and in particular with T 0153/85 (supra).

5.8.1 In that decision the situation was analysed in which a first prior art document disclosed specific copolymers and made reference to their preparation by a condensation reaction, using the method described in a second prior art reference. In the decision it was stated that, when assessing novelty, the disclosure of a particular prior document must always be considered in isolation; in other words it is only the actual content of a document (as understood by a skilled person) which destroys novelty. However, in a case, where there is a specific reference in one prior document (the "primary document") to a second prior document, when construing the primary document (i.e. determining its meaning to the skilled person) the presence of such specific reference may necessitate that part or all of the disclosure of the second document be considered as part of the disclosure of the primary document (point 4.2 in the grounds, third paragraph).

5.9 This approach has been followed in the present case in which the construction of document D1 has been made by taking into account the specific reference to D2 and D3, which, by virtue of its meaning to the person skilled in the art, implies the incorporation of a specific part of those documents. The fact that what was considered to be incorporated was not in agreement on what was the opinion of the appellant in this respect is not sufficient to justify a discrepancy in the case law.

5.10 By means of the same arguments detailed for the analysis of the validity of the priority, it is clear that document D1 cannot be novelty destroying for the subject-matter of claim 1, so that also the objection of the appellant of lack of novelty based on D1 fails.