Key points
- In what might be also relevant for G 1/23, a decision about sufficiency of disclosure and commercially available polymers.
- " Claim 1 relates to an aerosol hairspray product having a formulation which requires a mixture of a "hard" hairstyling polymer and a "soft" hairstyling polymer. The two types are defined by the chemical composition, glass transition temperature and molecular weight."
- " Paragraph [0042] of the patent discloses Acudyne**(TM), Balance**(®)CR, Amphomer**(®)and DynamX**(®) H2O as suitable polymers. The first three have the chemical nature of "hard" polymers; DynamX**(®) H2O is a "soft" polymer."
- " The appellant [opponent] argued that the types of polymers required by claim 1 were not clearly disclosed for the claimed invention to be reworked."
- " Of the polymers wich could be "hard" in view of their chemical composition, Balance**(®) CR did not have the required molecular weight. The appellant argued that there were reasonable doubts if any disclosed polymer had the required properties."
- " The appellant [opponent] did not argue, let alone provide evidence, that polymers having the properties required by claim 1 were either not available or could not be prepared. The appellant's argument hinged on whether polymers suitable for the claimed invention could be reliably identified."
- As a comment, the precise meaning of "available" and "could be prepared" (as well as the double negative in the sentence) could be an interesting aspect of G 1/23. Is it sufficient for Art. 83 that an ingredient of the claimed composition can be bought under its tradename? What if there is only a single supplier that is able to manufacture the ingredient using a secret process? What if manufacturing the ingredient without knowledge of the secret process requires inventive skills?
- " even if the polymers cited in the description of the patent lacked the properties required by claim 1, the Board sees no reason why a skilled person could not have found suitable alternatives."
3. Sufficiency of disclosure
3.1 Claim 1 relates to an aerosol hairspray product having a formulation which requires a mixture of a "hard" hairstyling polymer and a "soft" hairstyling polymer. The two types are defined by the chemical composition, glass transition temperature and molecular weight.
Paragraph [0042] of the patent discloses Acudyne**(TM), Balance**(®)CR, Amphomer**(®)and DynamX**(®) H2O as suitable polymers. The first three have the chemical nature of "hard" polymers; DynamX**(®) H2O is a "soft" polymer.
The patent discloses neither the glass transition temperature nor the molecular weight of these polymers.
3.2 The appellant argued that the types of polymers required by claim 1 were not clearly disclosed for the claimed invention to be reworked.
DynamX**(®) H2O was not a polymer but a blend whose glass transition temperature could not be easily established. The patent did not contain any example of a "soft" polymer as required by claim 1.
Of the polymers wich could be "hard" in view of their chemical composition, Balance**(®) CR did not have the required molecular weight.
The appellant argued that there were reasonable doubts if any disclosed polymer had the required properties.
Seeking further polymers having the sought properties, a skilled person would have needed to measure the glass transition temperature using the method in DIN EN 61006 following the patent's teaching. This standard, however, was for isolation materials, not hairstyling polymers. It included three methods whose results "should be compared with care". The neutralisation degree of a polymer was known to affect the glass transition temperature. The patent did not provide this parameter, either. For these reasons, it could not be determined whether a polymer had the glass transition temperature required by claim 1.
The appellant concluded that because the patent lacked an example of a polymer suitable for the claimed aerosol hairspray product and a reliable method for determining the properties of a polymer as claimed, the claimed invention was not sufficiently disclosed.
3.3 The appellant did not argue, let alone provide evidence, that polymers having the properties required by claim 1 were either not available or could not be prepared. The appellant's argument hinged on whether polymers suitable for the claimed invention could be reliably identified.
Acrylate and polyurethane polymers suitable for hairsprays are known from the prior art (see D6, page 1, "The Flexible Hold Challenge" section, lines 10 to 14 and 28 to 37). The glass transition temperature is a property frequently used for characterising polymers (D1, abstract; D2, column 3, lines 63 to 64), even if determining it may arguably be linked to the measurement method and neutralisation degree. The same holds for a polymer's molecular weight.
Thus, even if the polymers cited in the description of the patent lacked the properties required by claim 1, the Board sees no reason why a skilled person could not have found suitable alternatives.
3.4 The claimed invention is thus sufficiently disclosed for it to be carried out by a skilled person. The ground for opposition under Article 100(b) EPC does not preclude the maintenance of the patent as granted.
An unusual feature of this case is that the assessment of inventive step by the problem-solution approach relies on two different "objective technical problems" on the basis of the same "closest prior art", improvements as to a set of claimed embodiments and an alternative solution as to the rest of the claimed embodiments.
ReplyDeleteIt was the OD, but still a nice set-up: " The opposition division defined two technical problems starting from D5. The embodiment of claim 1 requiring a polyurethane "soft" hairstyling polymer credibly solved the problem of providing an improved hairspray composition. As the claimed solution would not have been obvious for a skilled person, it was inventive. The embodiments of claim 1 requiring other types of "soft" styling polymers only solved the problem of providing an alternative. As the prior art did not disclose suitable polyester or latex hairstyling polymers, the claimed solution was also inventive."
ReplyDeleteI can imagine an EQE Paper C (new style, where claims can also be inventive) with two alternative embodiments A and B, where A would have been obvious if it had no technical effect and B has no technical effect but is a non-obvious alternative.
In your suggestion for EQE, are you advocating a "dynamic interpretation" applied to the problem-solution approach ?
ReplyDeleteI don't have a strong opinion as of yet on the intended revision of the EQE. However, I do think that EQE Paper C could be made more realistic, and overall be a better exam, if some of the claims can be "valid" over the given prior art.
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