T 0681/21 - Synergy and G 2/21

Key points

• "The respondents [proprietors] argued that the distinguishing feature of claim 1 at issue would provide an unexpected advantage in terms of improved softness and in particular a synergy due to the combination of the silicone with a CPP."
• "The board notes that this formulation of the technical effect differs from that identified in the patent, and thus it is important to verify whether such a formulation is in accordance with the conclusion of the Enlarged Board of Appeal in G 0002/21 (reasons 94) that "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention".

• "In the present case it is not in dispute that the application as filed does not relate to a synergistic effect arising from the combination of a silicone with CPP or any other component. Also the fact that the application as filed (page 2, lines 7-8) indicates the CPP to be a preferred cationic polymer without explaining the reason for this preference cannot foreshadow that the claimed combination would provide any type of synergism. The respondents did also not file any evidence that it was common general knowledge that silicone and cationic polymers may provide a synergism in terms of improved softness."

• Note: If the application as filed mentioned improved softness as an advantage of the invention, requiring a specific mention of a synergy seems rather strict. 

• "Therefore, it follows from the above reasons that the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and has to be disregarded."

• Turning to the evidence (obiter), it seems: " these data are not apt to show any possible improvement due to the choice of CPP as an additional softener and, in the absence of any other comparison against the closest prior art, it can only be concluded that improved softening has not been convincingly proven across the entire scope of claim 1."

•  In the board's view, it was thus obvious for the skilled person faced with the technical problem posed to try as an alternative to the composition of example E4, one comprising any combination of the softening agents suggested by the description such as one comprising the silicone of example E4 with any cationic polymer disclosed in the description [of E4], for example a CPP."" 

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/t210681eu1

Main request - Inventive step

1. The invention relates to a fabric treatment composition including a silicone that displays improved softening. According to paragraph [0005] an object of the invention is to improve the softening performance of a silicone during the laundry process. Paragraph [0006] states in this respect that if the silicone is provided as part of a separate composition instead of adding it as part of the laundry detergent, the softening performance is improved.

1.1 There was unanimity among the parties that D1, example E4, represented the closest prior art, as said example discloses (paragraphs [0125]-[0126]) a fabric treatment composition which is not part of a laundry detergent, and comprising 80 wt% of polyethylene glycol and 7 wt% of polydimethylsiloxane (PDMS), with said composition thus differing from the subject-matter of claim 1 as granted in that it does not contain 0.1 to 5 wt% of a cationic polysaccharide polymer (in the following CPP).

1.2 The board notes that since D1 already provides a fabric treatment composition comprising silicone, with said composition being not part of the laundry detergent used, the technical problem identified in the patent in suit is thus already solved.

1.2.1 The respondents argued that the distinguishing feature of claim 1 at issue would provide an unexpected advantage in terms of improved softness and in particular a synergy due to the combination of the silicone with a CPP.

1.2.2 The board notes that this formulation of the technical effect differs from that identified in the patent, and thus it is important to verify whether such a formulation is in accordance with the conclusion of the Enlarged Board of Appeal in G 0002/21 (reasons 94) that "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention".

1.2.3 In the present case it is not in dispute that the application as filed does not relate to a synergistic effect arising from the combination of a silicone with CPP or any other component. Also the fact that the application as filed (page 2, lines 7-8) indicates the CPP to be a preferred cationic polymer without explaining the reason for this preference cannot foreshadow that the claimed combination would provide any type of synergism. The respondents did also not file any evidence that it was common general knowledge that silicone and cationic polymers may provide a synergism in terms of improved softness.

Therefore, it follows from the above reasons that the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and has to be disregarded.

1.2.4 The board further notes that the only data available from the respondents and comparing the alleged invention with a composition at least in part similar to the closest prior art, and thus comprising a PDMS non-ionic silicone, are those in D8 concerning the sensory hand evaluation of washed terry towelling. These data however only show that a composition 1 (according to claim 1 at issue) comprising 1.67 wt% PDMS and 0.67 wt% CPP is found softer than a composition A comprising 1.67 wt% of the silicone and no CPP, which result is for the skilled person already to be expected because of the greater amount of softeners contained in composition 1. Therefore, these data are not apt to show any possible improvement due to the choice of CPP as an additional softener and, in the absence of any other comparison against the closest prior art, it can only be concluded that improved softening has not been convincingly proven across the entire scope of claim 1.

1.2.5 It follows that the objective technical problem underlying the invention and solved by the composition of claim 1 at issue has thus to be formulated in less ambitious terms, namely as the provision of a further fabric treatment composition comprising silicone.

1.3 As to the question whether the proposed solution was obvious or not, the board notes that D1 (paragraph [0037] and claim 4) teaches that the disclosed fabric treatment compositions should comprise softening agents selected from polysiloxane, clay, cationic polymers or mixtures thereof, and it lists as suitable cationic polymers (paragraph [0047]) also polyquaternium-4, -10 and -24, all being cationic hydroxyethylcellulose (polysaccharide) polymers, i.e. CPPs. Moreover, the description (paragraph [0051]) teaches to use 0.1 to 10 wt% of such softening agents.

In the board's view, it was thus obvious for the skilled person faced with the technical problem posed to try as an alternative to the composition of example E4, one comprising any combination of the softening agents suggested by the description such as one comprising the silicone of example E4 with any cationic polymer disclosed in the description, for example a CPP.

In this respect the board cannot follow the respondents' argument that the skilled person would rather consider the only cationic polymer disclosed in the examples of D1 (see example E5), which is not a CPP, and would disregard the CPPs disclosed in the description within the list of alternative cationic polymers, because D1 does not contain any teaching that would have led the skilled person away from trying any of the cationic polymers disclosed.

It was thus obvious for the skilled person to add a small amount, for example 1 or 2 wt% of a CPP, to the composition of example E4, and thus arrive in an obvious manner at a composition having all the features of claim 1 at issue.

1.4 The board thus concludes that the subject-matter of claim 1 according to the main request lacks an inventive step within the meaning of Article 56 EPC.