T 0404/12 - Novelty of use

Key points

• A claim for use of a treatment composition for hair dyed with an acid-dye-type hair dye or preventing fading of color of the dyed hair, is found to be novel over a prior art disclosure of use of the same composition for for treating hair follow washing, dyeing or perm treatment, for maintenance of shine.
• " The Board cannot see, however, how this disclosure may be seen as anticipating the prevention of color fading of hair dyed with an acid-dye-type hair dye composition. Shine is a property of treated or untreated hair which is independent of whether the hair has been dyed or not. [] In addition, no evidence has been provided [] with regard to equivalence of shine maintenance with prevention of color fading in any specific condition and document D5 does not make any mention of the difficulty in color maintenance for dyed hair." 

T 0404/12 -  link (online 18.01.2016)

Summary of Facts and Submissions

I. European Patent No. 1 118 319 was granted on the basis of 5 claims, independent claim 1 reading as follows:

"1. Use of a treatment composition for hair dyed with an acid-dye-type hair dye composition wherein the treatment composition comprises the following components (A) (B), and (C) :
for preventing fading of color of the dyed hair.

Reasons for the Decision
Main request - novelty


3. The objection of lack of novelty over document D5 was based on the central argument that maintenance of shine of dyed hair, as disclosed in D5, was nothing different from prevention of color fading, the effect of the use of claim 1 of the main request.

3.1 It was not disputed that document D5 discloses compositions falling under those used in claim 1 of the main request (examples 7 to 10 in table 1) as conditioning compositions for treating hair (page 1, first paragraph), wherein the application of the composition may follow washing, dyeing or perm treatment (second full paragraph on page 4), and that maintenance of shine is also mentioned (page 1, end of first paragraph).


3.2 The Board cannot see, however, how this disclosure may be seen as anticipating the prevention of color fading of hair dyed with an acid-dye-type hair dye composition. Shine is a property of treated or untreated hair which is independent of whether the hair has been dyed or not. This is clear from document D5 itself, which discloses maintenance of shine for any kind of hair within the scope of the invention (page 1, paragraph 1) and the possibility of the hair being dyed as an optional unrelated feature (second full paragraph of page 4). In addition, no evidence has been provided by the respondents with regard to equivalence of shine maintenance with prevention of color fading in any specific condition and document D5 does not make any mention of the difficulty in color maintenance for dyed hair.


3.3 The prevention of color fading of hair dyed with an acid-dye-type hair dye composition is to be considered a functional technical feature of use claim 1 of the main request in line with the case law on second non-medical use (see in particular G 2/88 and G 6/88, OJ EPO 1990, pages 93 and 114). As this feature has not been made available to the public in D5, this document cannot take away the novelty of claim 1 of the main request.


3.4 For these reasons, also the objection of lack of novelty is not successful.