T 2322/15 - Not credible from the data

Key points

• Claim 1 is directed to a hypoallergenic high intensity fragrance composition in which all the ingredients are natural, which comprises A)  at least 4 fragrance ingredients selected from a list of fragrances, B) essential oils, and wherein C) a list of ingredients is excluded (the compounds recited in the exclusion list are not present, or present at less than 100 ppm [edit 26.11.2019]).
• "The feature that all the ingredients of the composition must be "natural" does not make it possible to clearly distinguish the claimed composition from the state of the art as natural compounds can also be synthesized. In any case, it is not a feature characterising the invention, as the appellant itself indicated that the fact that the ingredients are natural products did not provide any technical contribution with respect to the alleged improvement of the odour strength. [...] Therefore, this feature is disregarded when assessing obviousness (see T 22/81, [r.] 5.1 and 7".
• "The fragrance ingredients listed in claim 1 [under A] are known fragrances having no structural characteristic in common. Accordingly, it cannot be predicted for example from structure similarities between the individual fragrances listed in claim 1 that higher odour strength would also be expected for any combination of the listed individual fragrances. It is therefore not credible from the data provided by the appellant that the odour of all fragrance compositions according to claim 1 would also be more intense than that of the compositions disclosed in [D15]."
• "The [patentee] contends that the burden of proof lies by the [opponent'] to prove that the technical problem is not solved across the breadth of the claims. However, in the present case, since the extrapolation of the higher odour intensity of the four fragrance compositions tested to any composition of claim 1 lacks the required reasoning or experimental evidences to support its plausibility, the burden to prove that the technical effect alleged by the [patentee] is not achieved across the breath of claim 1 has not been shifted to the [opponents]."

[ Claim 1 of AR-7 appears to read as follows in relevant part]

"1. A hypoallergenic high intensity fragrance composition in which all the ingredients are natural, which comprises by weight:
a) [75% to 100% of at least 4 fragrance ingredients selected from the following ingredients: allyl hexanoate, n-amyl acetate, iso amyl acetate, n-amyl propionate, anisic aldehyde, benzaldehyde, benzyl acetate, butyl acetate, decalactone gamma, ethyl 2-methyl butyrate, ethyl butyrate, ethyl caproate, ethyl caprylate, ethyl heptanoate, ethyl lactate, ethyl propionate, heliotropine, trans hex-2-en-al, cis hex 3-en-l-ol, cis hex-3-en-l-yl acetate, cis hex-3-en-l-yl propionate, hexyl acetate, iso butyl acetate, L-menthol, methyl benzoate, methyl salicylate, methyl anthranilate, octalactone gamma, 2-phenyl ethyl acetate, 2-phenyl ethyl alcohol, l-terpinen-4-ol, terpineol alpha, vanillin, 3-hydroxy-2-methyl-4-pyrone] 
b) 0 to 25% of essential oils;
c) 0 to 25% of fragrance ingredients, other than those characterized under a) above;
wherein the sum of a), b) and c) must equal 100%;
wherein each of the following ingredients, if present in the fragrance composition, is present in an amount of less than 100 ppm (weight/weight): amyl cinnamic aldehyde, amyl cinnamic alcohol, anisyl alcohol, benzyl alcohol, benzyl benzoate, benzyl cinnamate, benzyl salicylate, cinnamic aldehyde, cinnamyl alcohol, citronellol, coumarin, eugenol, farnesol, geraniol, hexyl cinnamic aldehyde, hydroxycitronellal, hydroxymethylpentylcyclihexenecarboxaldehyde, isoeugenol, lilial, limonene, linalool, methyl heptine carbonate, 3-methyl-4-(2,6,6-trimethyl-2-cyclohexen-l-yl)-3-buten-2-one, citral, Oakmoss extract, treemoss extract."

EPO T 2322/15 -  link


2.2 Technical problem underlying the patent-in-suit

The Appellant stated that the technical problem was the provision of fragrance compositions having higher fragrance intensity.

2.3 Solution

The proposed solution is the [hypoallergenic high intensity fragrance ] composition of claim 1 of the seventh auxiliary request characterized in that all the ingredients of the composition are natural and that it comprises at least 85 to 100% of at least four flagrances selected from

 allyl hexanoate, n-amyl acetate, iso amyl acetate, n-amyl propionate, anisic aldehyde, benzaldehyde, benzyl acetate, butyl acetate, decalactone gamma, ethyl 2-methyl butyrate, ethyl butyrate, ethyl caproate, ethyl caprylate, ethyl heptanoate, ethyl lactate, ethyl propionate, heliotropine, trans hex-2-en-al, cis hex 3-en-l-ol, cis hex-3-en-l-yl acetate, cis hex-3-en-l-yl propionate, hexyl acetate, iso butyl acetate, L-menthol, methyl benzoate, methyl salicylate, methyl anthranilate, octalactone gamma, 2-phenyl ethyl acetate, 2-phenyl ethyl alcohol, l-terpinen-4-ol, terpineol alpha, vanillin and 3-hydroxy-2-methyl-4-pyrone.

The feature that all the ingredients of the composition must be "natural" does not make it possible to clearly distinguish the claimed composition from the state of the art as natural compounds can also be synthesized. In any case, it is not a feature characterising the invention, as the appellant itself indicated that the fact that the ingredients are natural products did not provide any technical contribution with respect to the alleged improvement of the odour strength. The Board furthermore notes that the comparisons submitted by the appellant in the statement of the grounds for appeal have been carried out with compositions comprising ethyl methyl phenyl glycidate, which is not a natural occurring product, as acknowledged by the parties during the oral proceedings. Therefore, this feature is disregarded when assessing obviousness (see T 22/81, OJ EPO 1983, 226, points 5.1 and 7 of the reasons).

2.4 Success

The results of comparative experiments filed with the statement of the grounds of appeal (document (30)) show that fragrance compositions 1 to 4 according to the invention had higher odour intensity than fragrance composition K disclosed in the closest prior art document (15).

The respondents did not contest the higher odour strength of fragrance compositions 1 to 4 when compared to fragrance composition K, but respondent III submitted that it was not credible that this effect was obtained across the whole scope of claim 1.

Since a purported technical effect can only form the basis for a finding of inventive step if it would be credible that it is obtained across the claimed scope, it must be examined whether the higher odour strength shown for the four particular claimed compositions of the comparative report (document (30)) can be extrapolated to any compositions having at least four ingredients as listed in claim 1 of the seventh auxiliary request.

The fragrance ingredients listed in claim 1 are known fragrances having no structural characteristic in common. Accordingly, it cannot be predicted for example from structure similarities between the individual fragrances listed in claim 1 that higher odour strength would also be expected for any combination of the listed individual fragrances. It is therefore not credible from the data provided by the appellant that the odour of all fragrance compositions according to claim 1 would also be more intense than that of the compositions disclosed in document (15).

The appellant contends that the burden of proof lies by the respondent to prove that the technical problem is not solved across the breadth of the claims. However, in the present case, since the extrapolation of the higher odour intensity of the four fragrance compositions tested to any composition of claim 1 lacks the required reasoning or experimental evidences to support its plausibility, the burden to prove that the technical effect alleged by the appellant is not achieved across the breath of claim 1 has not been shifted to the respondents.

2.5 Reformulation of the technical problem

The technical problem has therefore to be reformulated in a less ambitious manner, namely as the provision of alternative hypoallergenic fragrance compositions.

2.6 Obviousness

Finally, it remains to be decided whether or not the proposed solution to this objective technical problem is obvious in view of the state of the art.

Claim 14 of document (15) taught that the content of the cosmetic composition consists of at least 80% of fragrances selected from inter alia benzyl acetate, benzaldehyde, heliotropine, cis hex-3-en-1-ol, amyl acetate, terpineol, vanillin, 2-phenylethanol and 2-phenylethyl acetate. Claim 3 of document (15) taught that the composition can be made of at least four fragrances selected from inter alia benzyl acetate, benzaldehyde, heliotropine, cis hex-3-en-1-ol, 2-phenylethanol and 2-phenylethyl acetate

In view of that prior art, providing a cosmetic composition comprising at least 85% of at least four fragrances selected from benzyl acetate, benzaldehyde, heliotropine, cis hex-3-en-1-ol, 2-phenylethanol and 2-phenylethyl acetate lies within the routine activity of the skilled person faced with the problem of providing an alternative fragrance composition. He would thereby arrive at the claimed subject-matter without exercising an inventive activity.

The appellant argued that the skilled person would have no incentive to provide a composition according to claim 1 of the seventh auxiliary request, even for providing a further hypoallergenic composition. However, nothing was submitted by the Appellant from which the Board could reasonably conclude that the skilled person would have been discouraged from following the straight teaching of document (15) regarding the amount and the nature of the fragrance ingredients. As no specific motivation is required to make an arbitrary choice of a particular embodiment from a host of embodiments in order to provide a mere alternative, the subject-matter of claim 1 lacks an inventive step pursuant to Article 56 EPC.