T 0460/21 - A negative feature for inventive step

Key points

• The Main Request is considered to be not novel.
• Claim 1 of auxiliary request 4 differs from claim 1 of the main request by the additional feature: "... whereby compositions consisting of sodium citrate (15-30%), sodium silicate (15-30%), sodium percarbonate (15-30%), sodium carbonate (5-15%), sodium gluconate (5-15%) and non ionic vegetal surfactants (<5%) are excluded from the scope.""
• The Board: "Claim 1 of auxiliary request 4 differs from claim 1 of the main request by the exclusion of the compositions disclosed in D4. "
• D4 = MINTEL GNPD 1418505 "Phosphate-Free Automatic Dishwashing Tablets", "Attitude" by Company "Bio Spectra", published 31 October 2010
• The Board, on clarity: "In the present case, the use of brackets does not render the claimed subject-matter unclear. The ranges given in each of the brackets after each of the compounds of the disclaimed compositions can only relate to the relative amount of the respective compounds in weight %. The disclaimer is also a verbatim copy of the disclosure of document D4."
• Does the amendment provide for inventive step?
• The OD referred to G 1/03 in their decision. Possibly, the added feature is a disclaimer in the sense of that decision.
• "The opposition division considered the bleaching and/or highlighting composition for keratin fibers according to claim 1 of the main request not to be novel in view of the disclosure of document D4."
• The proprietor argues that the dishwasher tablet of D4 is not suitable for bleaching keratin (i.e. hair) fibers.
• "The composition disclosed in document D4 is thus suitable for bleaching and/or highlighting keratin fibres."
• D1 is considered to be the closest prior art.  "Document D1 does not suggest that gluconic acid leads to an increase in bleaching intensity. "
• The claim is considered to be inventive.
• Possibly, claim 1 of the main request would be inventive over D4 in a way because, also for that claim, D1 is the closest prior art. 
• The alternative, that the disclaimer* would be relevant for inventive step, does not seem plausible either under G1/03.
• * =  disclaimer to the disclaimer: the feature seems a disclaimer to me, but I may overlook something in the file. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t210460eu1

IV. Auxiliary request 4

11. Claim 1 of auxiliary request 4 differs from claim 1 of the main request by the exclusion of the compositions disclosed in D4. In its decision, the opposition division came to the conclusion that the amendments were allowable and that the claimed subject matter was novel.

12. Clarity (Article 84 EPC)

13. The opposition division considered claim 1 of auxiliary request 4 to lack clarity (see point 6.3 of the reasons of the impugned decision). The objection concerned the relative amounts of the components, which are indicated in brackets.

14. In the present case, the use of brackets does not render the claimed subject-matter unclear. The ranges given in each of the brackets after each of the compounds of the disclaimed compositions can only relate to the relative amount of the respective compounds in weight %. The disclaimer is also a verbatim copy of the disclosure of document D4.

15. Claim 1 of auxiliary request thus meets the requirements of Article 84 EPC.

Inventive step (Article 56 EPC)

16. The opposition division argued that the provision of a composition according to claim 1 of auxiliary request 4 was not based on an inventive step in view of document D1 as closest prior art (Article 56 EPC).

According to the opposition division, the claimed composition differed from a composition disclosed in tables II and III of document D1, in particular composition D thereof, in that gluconic acid and/or its salts were used as a chelating agent instead of mucic acid. The opposition division furthermore acknowledged that this difference led to a higher bleach intensity (higher L values), as shown in documents D12 and D13. The objective technical problem was seen in the provision of improved bleaching compositions for bleaching and/or highlighting hair.

The opposition division concluded that the skilled person would have changed mucic acid as disclosed in example D of document D1 for gluconic acid and/or its salts in order to obtain compositions with improved bleaching properties. They argued that the skilled person was aware of the difference in acid strength (pKa) of the two acids, and of the resulting difference in pH of the composition comprising them to be applied to hair. The skilled person would thus expect the observed difference in highlighting power. Furthermore, document D1 already suggested mucic acid as an alternative to gluconic acid.

17. The appellant disagreed with the final conclusion of the opposition division. In particular, they argued with reference to documents D12 and D13 that the difference in bleaching efficiency of the two acids was not the result of their difference in pKa, since the additional persulfate ingredients had a greater influence on the pH of the bleaching composition. The skilled person would thus not expect to obtain an increase in bleaching activity when replacing mucic acid by gluconic acid.

18. The board comes to the following conclusion:

Closest prior art

18.1 The appellant as well as the opposition division considered document D1 as closest prior art. The board sees no reason to deviate.

Technical problem

18.2 Document D1 discloses in example 2 (composition D of Table II) a hair decolorising composition, comprising potassium persulfate. This compound is, according to the definition of the patent in suit, a compound with bleaching and/or highlighting effect (see paragraph [0003], lines 42 to 43). The composition further comprises mucic acid.

The composition according to claim 1 of auxiliary request 4 differs from composition D of document D1 in that it contains gluconic acid and/or its salts as a chelating agent.

The board agrees with the opinion of the appellant and the opposition division that the comparative tests reported in documents D12 and D13 show that the use of gluconic acid instead of mucic acid leads to higher L values measured for hair which has been treated with the respective compositions.

The use of gluconic acid thus improves the bleaching effect.

The objective technical problem can thus, in accordance with the opposition division's decision, be formulated as to provide a composition for bleaching and/or highlighting keratin fibres with improved bleaching effect.

Solution provided

18.3 The board is satisfied that the provision of a composition according to claim 1, comprising gluconic acid and/or its salts as chelating agent, solves the technical problem.

Inventiveness of the claimed solution

18.4 Document D1 does not suggest that gluconic acid leads to an increase in bleaching intensity. The document mentions both acids as particularly preferred compounds of general formula (I), without giving preference to gluconic acid (see the lines 28 to 30 of page 8). The effect caused by the differing feature is not derivable from document D1. The effect is also not derivable from any other of the cited documents. There is, thus, no incentive for the skilled person to replace mucic acid by gluconic acid and/or its salts in composition D of Table II of document D4 in order to solve the objective technical problem.

The provision of a composition according to claim 1 of auxiliary request 4 is therefore based on an inventive step (Article 56 EPC).