T 2532/17 - Reformulation as long as the spirit of the original disclosure of the invention is respected

 Key points

•  “ According to established jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, I.D.4.4.1), where a specific problem is identified in the description, the patentee, here the respondent, may be allowed to put forward a modified version of the problem if the issue of inventiveness has to be considered on an objective basis against a new prior art that comes closer to the invention than that considered in the original patent application or granted patent specification. ”
• “Since the problem objectively solved is the result actually achieved in relation to the closest state of the art, there is nothing to prevent the problem as first formulated from being modified as long as the spirit of the original disclosure of the invention is respected. A reformulation of the problem may be appropriate if an alleged effect of a described feature can be deduced by the skilled person from the application in the light of the prior art or if new effects submitted subsequently during the proceedings were implied by or related to the technical problem initially suggested.”
• “ Before turning to this question, it is however appropriate in the present case to consider the experimental evidence and technical arguments submitted by the parties in relation to free flowing.” [follows a discussion]
• “Turning now to the question whether the original disclosure of the patent in suit hinted at the achievement of free flowing particles when the pastilles are subjected to a temperature of 50°C, the original disclosure of the patent in suit, or even the patent in suit itself, is not concerned with any storage issues, let alone under certain time and temperature conditions associated as alleged by the [patentee] ... In any event storage of PEG based pastilles in relation to temperature has also not been shown to be an issue mentioned or implied by the teaching of [the CPA document] D19." 
• “It is therefore concluded that the flowability of the claimed pastilles after storage at 50°C or temperatures around that value is not implied by or related to the technical problem initially suggested. It cannot be deduced from the original disclosure of the patent in suit alone or in the light of the closest prior art. Under these circumstances, the flowability of the claimed pastilles after storage at 50°C cannot be taken into account for the formulation of technical problem solved over the closest prior art.”
  
  
• Later, when discussing obviousness, the Board also recalls that " the answer to the question as to what a person skilled in the art would have done in the light of the state of the art depends on the technical result the skilled person had set out to achieve (see T 0939/92, OJ EPO 1996, 309, reasons Nrs 2.4.2 and 2.5.3)." 

T 2532/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172532eu1.html

4. The parties were also in agreement that the definition of the product of granted claim 1 differs from that of substrate III in that:

(i) it is in the form of a unit dose consisting of 13 to 27 g of pastilles,

(ii) each pastille has a mass in the range from 0.95 mg to 2 g,

(iii) the molecular weight of the PEG is selected to be in the range of 5000 to 11000 and

(iv) the pastilles comprise 2 % to 12 % by weight of free perfume.

Problem successfully solved

5. Having regard to experimental report D22, the respondent reformulated the technical problem solved by the subject-matter of claim 1 over substrate III as the provision of a perfume scent additive product that dissolves well in the wash, provides for a beneficial scent experience to the user and has good flowability after storage. The appellants objected to the allowability of that formulation in so far as flowability after storage was concerned, arguing that this effect could not be taken into account, as it was not derivable from the application as filed.

5.1 Flowability after storage

5.1.1 According to established jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, I.D.4.4.1), where a specific problem is identified in the description, the patentee, here the respondent, may be allowed to put forward a modified version of the problem if the issue of inventiveness has to be considered on an objective basis against a new prior art that comes closer to the invention than that considered in the original patent application or granted patent specification. Since the problem objectively solved is the result actually achieved in relation to the closest state of the art, there is nothing to prevent the problem as first formulated from being modified as long as the spirit of the original disclosure of the invention is respected. A reformulation of the problem may be appropriate if an alleged effect of a described feature can be deduced by the skilled person from the application in the light of the prior art or if new effects submitted subsequently during the proceedings were implied by or related to the technical problem initially suggested. Before turning to this question, it is however appropriate in the present case to consider the experimental evidence and technical arguments submitted by the parties in relation to free flowing.

5.1.2 D22 is a technical report concerning among others the flowability of PEG based pastilles after storage at 50°C for 6 hours. D22 reports their flowability as a function of the molecular weight of the PEG. The pastilles are made of 88,11% by weight of PEG, 5,88 % by weight PMC slurry, 5,88 % by weight neat perfume and 0,13 wt % by weight of a dye solution. The three PEG employed in D22 have molecular weights of 4000, 9000 and 20000.

It is uncontested that D22 shows that the pastilles prepared with a PEG having a molecular weight of 9000 remained free-flowing after storage at 50°C for 6 hours whereas those prepared with a PEG having a molecular weight of 4000 stuck together, even to a great extent after the fused mass of pastilles had been hit to break it into smaller pieces.

5.1.3 It is undisputed that it was known in the art, as illustrated by the data on page 8 of D20, that in the range of molecular weight tested in the experiments of D22 the solidification point of PEG slightly increases with its molecular weight. Whereas a solidification point of 53-58 °C is given for a PEG 4000, solidification points of 55-62 °C and 57-64 °C are given for PEG 10000 and PEG 20000, respectively. Appellant 2's submissions that PEG, like many polymers will start to become sticky on the outside of the particles, before they reach they solidification/melting point was not disputed either.

5.1.4 D22 does not show what happens with pastilles prepared with a PEG having a molecular weight lower than 9000, in particular with a PEG having a molecular weight close to the lower limit of 5000 defined in granted claim 1, which is much closer to 4000 than 9000, i.e. much closer to a PEG resulting in pastilles which are not free flowing after storage at 50°C. Accordingly and taking into account the considerations regarding stickiness in the previous paragraph, it cannot be deduced from D22 that the pastilles in accordance with claim 1 are over the whole breadth of claim 1 free flowing when stored at that temperature. A fortiori, it cannot be expected that the pastilles in accordance with granted claim 1 would remain free flowing when stored at a temperature higher than 50°C, since higher storage temperatures are expected to induce stickiness also for PEG having higher molecular weight.

5.1.5 D25 is an experimental report using pastilles having a composition similar to that used in D22. Two PEG having a molecular weight of 4000 and 8000 were tested. Appellant 2 has shown with D25 that pastilles made of PEG 4000 remained also free flowing after shaking when stored for the same period of time, but at a lower temperature, namely 40°C. This illustrates, as is already indicated in the above paragraph, that the ability of the pastilles in accordance with granted claim 1 to remain free flowing on storage depends on the storage temperature.

5.1.6 Turning now to the question whether the original disclosure of the patent in suit hinted at the achievement of free flowing particles when the pastilles are subjected to a temperature of 50°C, the original disclosure of the patent in suit, or even the patent in suit itself, is not concerned with any storage issues, let alone under certain time and temperature conditions associated as alleged by the respondent with a resulting lack of flowability of the pastilles when the PEG has a molecular weight below the lower limit of the range defined in granted claim 1. There is in particular no reason for the skilled person to consider that a specific temperature of 50°C was an issue for the present invention, when lower or even higher temperatures could have been equally considered, if to the benefit of the respondent one considered that the patent in suit was implicitly, e.g. in view of common general knowledge, concerned with storage issues. In any event storage of PEG based pastilles in relation to temperature has also not been shown to be an issue mentioned or implied by the teaching of D19.

For the same reasons and in the absence of any explanation or evidence as to why one would consider that a temperature of 50°C or around that value is known to the skilled person to be used for the handling of PEG based pastilles, the respondent's argument that one would immediately recognise that sufficient flowability of the pastilles at said temperature is inherently relevant to the manufacture of the claimed product also fails to convince. Finally, the further indication by the respondent that the physical stability of the pastilles is addressed in paragraph [0020] of the specification is not relevant, as this passage does not refer to temperatures around 50°C as a cause for their possible instability, but to the potential use of optional additives to be comprised in the pastilles which therefore should be controlled.

5.1.7 As also indicated in above point 3, the disclosure of D19 related to substrate III is, like the original disclosure of the patent in suit, concerned with achieving dissolution of a functionalized substrate during a wash and/or rinse cycle in order to release perfume compounds. This document also has not been shown to address, even implicitly, the flowability of particles made of these functionalized substrate, let alone at a specific temperature.

5.1.8 It is therefore concluded that the flowability of the claimed pastilles after storage at 50°C or temperatures around that value is not implied by or related to the technical problem initially suggested. It cannot be deduced from the original disclosure of the patent in suit alone or in the light of the closest prior art. Under these circumstances, the flowability of the claimed pastilles after storage at 50°C cannot be taken into account for the formulation of technical problem solved over the closest prior art.

5.1.9 Last but not least, even if to the benefit of the respondent the flowability of the pastilles after storage at 50°C were considered to be implied by the original disclosure, that effect which has not been shown to be achieved over the whole breadth of granted claim 1 for the reasons provided in above point 5.1.4 could not be taken into consideration on that basis alone.

5.2 Dissolution of the pastilles during the wash and scent experience for the consumer

5.2.1 It was not challenged that the ability of the pastilles to dissolve during a wash and/or a rinse cycle is implicit from the disclosure of the patent in suit, as the principle underlying the invention is that the PEG matrix minimizes free perfume diffusion, but dissolves well in water, which in particular results in the friable perfume microcapsules to deposit on the user's clothing (paragraphs [0010] and [0020] of the specification and corresponding passages in the application as filed on page 2, two last lines and page 6, lines 9-12). It is also unchallenged that the pastilles in accordance with granted claim 1 would dissolve well during a wash or a rinse cycle and as a consequence would release during a wash or rinse cycle both the free perfume and the friable perfume microcapsules contained in the functionalized substrate.

5.2.2 The Board, having regard to the molecular weight of the PEG making up the substrate of the claimed pastilles and the known water solubility of such polymers reported on page 9 of D20, has no reason to have a different opinion. This has been in addition confirmed with experimental evidence D22 (see "Wash Dissolution Study" and "Headspace Study" in points 3 and 4, respectively). On the other side, an improvement of these properties with respect to substrate III of D19 has not been shown, nor has it been claimed by the respondent.

5.3 Accordingly, the Board concludes that the problem successfully solved by the subject-matter of granted claim 1 over substrate III of D19 is the provision of a perfume scent additive product which dissolves well in the wash or the rinse and has an acceptable release of perfume.

Obviousness of the solution

6. It remains to be decided whether the skilled person desiring to solve the problem identified above would, in view of the disclosure of D19, possibly in combination with other prior art documents or with common general knowledge, have modified the substrate III of D19 in such a way as to arrive at the product defined in granted claim 1.

Molecular weight of the PEG and units dose comprising pastilles having a mass from 0.95 mg to 2 g

6.1 As mentioned in above point 3 it undisputed that D19 aims at a complete dissolution of the binder material of the functionalized substrate, i.e. PEG for substrate III, during the wash and/or rinse cycle. According to paragraphs [0023] and [0024] suitable water soluble materials for that purpose are PEG with molecular weights of 4000 or 8000 and mixtures thereof. Moreover, considering the known water solubility of PEG over a broad range of molecular weights encompassing said values of 4000 and 8000 recommended in D19 (D20, page 9), it would have been obvious for the skilled person to take any PEG having a molecular weight as defined in granted claim 1, in particular any PEG whose molecular weight is up to a value of 8000, in order to provide a perfume scent additive product which dissolves well in the wash or the rinse and as a consequence has an acceptable release of perfume.

The respondent submitted that the most preferred water solubility according to paragraph [0018] of D19 was at least 95 % and that the skilled person would rather select a substrate PEG having a molecular weight of 200 to 600, reference being made to pages 8 and 9 of D20 indicating the water solubility of PEG as a function of its molecular weight. D19, however, does not indicate that a water solubility of 95% is preferred. It is merely indicated that the water-soluble material has a water-solubility of at least 50 %, alternatively at least 75 %, or even at least 95 %. This argument therefore cannot convince. PEG having molecular weight in the range of 4000 to 12000 are indicated on pages 8 and 9 of D20 to have a water solubility comprised between 55 % and 53 %, i.e. a solubility in water as recommended in D19, in line with the recommendation in paragraph [0024] of D19 of using PEGs with a molecular weight of 4000 and 8000 as non-limiting examples of PEG.

As to the use of pastilles, it is confirmed in paragraph [0029] and Figure 1 of the specification that the term "pastilles" refers to granules obtainable by a pastillation process. D19 describes in its paragraph [0168] that the functionalized substrate can be in any form suitable to administer the article comprising said functionalized substrate into a wash and/or rinse cycle in a conventional washing machine. According to the same paragraph, the functionalized substrate is in unit dose form including tablets, pouches, capsules, beads, and sachets. Functionalized substrates in the form of pastilles are not disclosed in D19, but the use of such particle shape for administering a wash additive embedded in a water soluble PEG substrate also comprising perfume in order to obtain among others a rapid release of the perfume additive is known from D2 (page 15, last full paragraph; page 2, 4th paragraph; paragraph bridging pages 3 and 4; page 4, first and second full paragraphs; last paragraphs of page 4; penultimate and last full paragraph of page 5; page 12, sixth and seventh paragraphs). On that basis the skilled person faced with the problem identified in above point 5.3 would have found it obvious to use functionalized substrates in the form of a unit dose of multiple pastilles whose binder material is a PEG having a molecular weight within the range defined in granted claim 1.

Having regard to the desire expressed in paragraph [0175] of D19 to completely dissolve the PEG within the wash or rinse cycle in order to release the scent additives and the information in said paragraph that thicker substrates are expected to take more time to dissolve in aqueous solution than thinner ones, it would have been also obvious for the skilled person that the mass of the pastilles had to be taken into account in order to adjust the speed of release of the additives contained in the PEG. The selection of a mass in the range of 0.95 mg to 2 g for the pastilles is considered to be the result of the above imperative, i.e. a size which allows for a suitable dissolution of the PEG matrix, which size can be determined by mere routine experimentation and is therefore obvious to the skilled person.

Composition of the pastilles

6.2 The appellants' argument that D19 teaches in paragraphs [0053] and [0098] to incorporate free perfume in addition to the perfume microcapsules is undisputed. According to said paragraph [0053] the perfume encapsulated in the PMC and the free perfume provide a total perfume loading level of from about 1 % to about 95 % by weight of the functionalized substrate. D19 does not comprise any limitation as to the proportion of perfume encapsulated in the PMC and free perfume.

Since the selections within the teaching of D19 of (i) the amount of free perfume defined in granted claim 1 and (ii) of an amount of encapsulated perfume as provided by the amount PMC defined in granted claim 1, have not been shown to be associated with any technical effect, it must be concluded that the use of the amounts of free perfume and PMC defined in granted claim 1 are arbitrary and therefore obvious measures for the skilled person seeking to solve the problem identified in above point 5.3. Having regard to the amount of PMC used for substrate III, the possibility to use less PMC and add free perfume while being in the ranges taught in D19 for both the free perfume and the encapsulated perfume would have been an obvious measure for the skilled person.

The respondent submitted that according to paragraphs [0053] and [0023] of D19 the most preferred total perfume loading was from 30 to 60 wt % and the most preferred amount of PEG was from 65 to 80 wt %, respectively. The respondent argued on that basis that D19 taught away from the present invention. This argument must fail, not only because those cited passages of D19 only concern possible embodiments within the teaching of D19 without indication of any degree of preference, but also because the answer to the question as to what a person skilled in the art would have done in the light of the state of the art depends on the technical result the skilled person had set out to achieve (see T 0939/92, OJ EPO 1996, 309, reasons Nrs 2.4.2 and 2.5.3).

In the present case, having regard to substrate III the skilled person is merely seeking to provide a perfume scent additive product which dissolves well in the wash or the rinse and has an acceptable release of perfume, but not a product resulting in a higher level of perfume released during a wash or rinse cycle. The selection of any amount of free perfume and perfume encapsulated in the PMC providing a total perfume loading level within the range taught in paragraph [0053] of D19, e.g. amounts of free perfume as low as 2 % free perfume and amounts of perfume encapsulated provided by amounts of PMC lying at the lower part of the range defined in granted claim 1, constituted therefore an obvious solution to the problem posed.

Concerning the obviousness of using the amount of PEG defined in granted claim 1, that amount ranging from 80 % to 91 % by weight is almost fully encompassed by the amount taught in paragraph [0023] of D19, which explicitly describes levels of PEG up to about 90 %, alternatively up to 85 %, alternatively up to 80 % by weight. It goes without saying that the obvious measures of reducing the amount of PMC present in substrate III while adding a small amount of free perfume would have led the skilled person to use a higher level of PEG. It has to be noted in this context, as was stressed by appellant 2 during the oral proceedings, that the water present in substrate III of D19 originates from the use of a PMC slurry for preparing the functionalized substrate. This is generally indicated in paragraph [0117] of D19 and more specifically in the experimental part of this document in paragraph [0211]. This is also reflected by the compositions of substrates I to III shown in Table B (paragraph [0216]) which all contain the same proportions of encapsulated perfume, capsule wall and water. Accordingly, starting from substrate III any substantial reduction of the amount of encapsulated perfume would be accompanied with a substantial reduction of the amount of water and capsule wall, allowing for the presence of at least 2 % by weight of free perfume and even more PEG. The respondent's argument that the skilled person modifying the closest prior art by adding free perfume to substrate III would have had to reduce the amount of PEG below the amount defined in granted claim 1 is therefore not convincing.

Accordingly, starting from substrate III of D19 the skilled person using in an obvious manner less PMC while adding a small amount of free perfume would have arrived thereby in an obvious manner at a functionalized substrate whose composition is in accordance with granted claim 1.

Mass of the plurality of pastilles

6.3 Finally, the skilled person, depending on the type of perfume selected, the desired scent experience and the amounts of free perfume and encapsulated perfume contained in the composition of the functionalized substrate, would have adjusted by routine experimentation the amount of pastilles to be contained in a unit dose. Accordingly, the use of 13 to 27 g of pastilles for a unit dose was also obvious to the skilled person.

6.4 Consequently, starting from substrate III and faced with the problem of providing a perfume scent additive product which dissolves well in the wash or the rinse and has an acceptable release of perfume, the skilled person on the basis of the teaching of D19 would have considered the variables defined in granted claim 1 and varied them by mere routine experimentation, arriving thereby in an obvious way at unit doses falling within the ambit of granted claim 1.

6.5 The main request is therefore not allowable, as the subject-matter of its claim 1 does not involve an inventive step.