T 3224/19 - Technical effect

Key points

• This is a rather run-of-the-mill decision,  but serves as a reminder that a technical effect needs to meet more requirements than those of G 28/21 to support inventive step.
• In particular, the post-published evidence can still be late-filed and therefore inadmissible.
• In addition, the evidence (post-published or in the application itself) can be insufficient or insufficient for the full scope of the claims.
• Finally, the technical effect as such can be invoked late, e.g. if a proprietor first argues one technical effect and only in appeal argues a second technical effect (even if only using the examples in the application as filed as evidence). This third possibility is not illustrated by the present decision. 
• "Document D13 [experimental report filed before the OD] presents a comparison of four compositions I to IV.  ... However, composition I is also not a composition according to the closest prior art, example 2 of D2, which comprises 2-chloro-6-ethylamino-4-nitrophenol. Therefore, the results shown in document D13 can not demonstrate a technical effect caused by the differing technical feature."
• "The appellant [proprietor] submitted document D15 [further experimental report] with its statement setting out the grounds of appeal and requested to admit the document into the proceedings. The appellant argued that filing of the document at this stage of the proceedings was justified, because of a completely new line of argumentation brought forward during the oral proceedings before the opposition division. ... The board comes to the conclusion that that document D15 should have been submitted during the opposition proceedings. ... The board does therefore not admit document D15 into the proceedings". 
• "In conclusion, no technical effect has been shown related to the feature which distinguishes the claimed compositions from the closest prior art. The objective technical problem can thus, in line with the impugned decision, only be seen in the provision of alternative colouring compositions for keratin fibers."
• The appeal is dismissed.

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/t193224eu1

Technical problem

18.3 The objective technical problem solved by the invention is the provision of an alternative colouring composition for keratin fibers. The reasons are as follows:

Document D13 (comparative data filed by the appellant before the opposition division)

18.4 Document D13 presents a comparison of four compositions I to IV. Each of compositions II, III and IV contains one dye selected from the list according to claim 1 of auxiliary request 3 (Basic Yellow 87, HC Yellow 2, Acid Yellow 1, respectively). Composition I of D13 contains 2-chloro-6-amino-4-nitrophenol instead. Composition I is thus not covered by claim 1 of auxiliary request 3.

However, composition I is also not a composition according to the closest prior art, example 2 of D2, which comprises 2-chloro-6-ethylamino-4-nitrophenol.

18.5 Therefore, the results shown in document D13 can not demonstrate a technical effect caused by the differing technical feature. The fact that the compound 2-chloro-6-amino-4- nitrophenol also falls within the general formula (I) of document D2 does not change this conclusion.

Document D15 (comparative data filed by the appellant in appeal proceedings)

18.6 The appellant submitted document D15 with its statement setting out the grounds of appeal and requested to admit the document into the proceedings. The appellant argued that filing of the document at this stage of the proceedings was justified, because of a completely new line of argumentation brought forward during the oral proceedings before the opposition division.

19. The document contains, in addition to the data disclosed in document D13, colour stability data for a composition containing the dye 2-chloro-6-ethylamino-4- nitrophenol instead of 2-chloro-6-amino-4-nitrophenol. According to the appellant, the data showed that compositions containing a dye according to claim 1 of auxiliary request 3 show an improved colour stability compared to the composition according to example 2 of document D2, i.e. the closest prior art.

20. The board comes to the conclusion that that document D15 should have been submitted during the opposition proceedings. The reasons are as follows:

20.1 The opposition division informed the parties on 16 November 2018 with its communication attached to the summons to attend oral proceedings that the composition according to claim 1 of the main request (patent as granted) was i.a. not novel in view of the disclosure of example 2 of document D2 (see point 5.2.1). The same objection had been raised in the opponent's notice of opposition (see point 6.1). This example disclosed a colouring composition containing the nitro dye 2-chloro-6-ethylamino-4-nitrophenol. The opposition division further informed the parties that, should novelty be established, the distinguishing feature in view of D2 would possibly be the nature of the yellow direct dye. The nature of this dye was also identified to be the difference between the compositions according to claim 1 of auxiliary request 3 and example 2 of D2 (see points 6.2.3 and 5.2.1 of the communication). The opposition division also indicated in its communication that document D12 did not provide evidence for a technical effect caused by a different yellow dye (see the first lines on page 5 of the communication).

20.2 In response to the opposition division's communication, the appellant submitted auxiliary request 3 (identical to auxiliary request 3 of the appeal proceedings) on 3 July 2019. Auxiliary request 3 limited the subject-matter of claim 1 to compositions including at least one direct dye contained in a list of specific compounds. This list did not contain the compound 2- chloro-6-ethylamino-4-nitrophenol of example 2 of D2. At the same time, the appellant submitted document D13 in support of the patentability of its requests.

20.3 Since the opposition division, as well as the opponent, explicitly only referred to example 2 of D2 when discussing lack of novelty, and the opposition division furthermore mentioned in the context of inventive step the potential differing feature with respect to D2 to be the nature of the yellow direct dye, the appellant should have expected that example 2 of D2 was of utmost importance for the evaluation of inventive step. All the more so, since only this example was referred to by the opponent and the opposition division, and since it is the only example in D2 from which the claimed composition differs in a single technical feature, i.e. the nature of the yellow direct dye. In contrast, the composition according to example 1 of D2 contains a different coupling agent (agent 2-(2,4- diaminophenoxy)ethanol-dihydrochlorid as opposed to 1,3-bis(2,4-diaminophenoxy)propane according to claim 1 of auxiliary request 3). The composition according to example 1 of D2 furthermore also contains a monocyclic m-phenylenediamine, which is explicitly excluded from the compositions according to claim 1 of auxiliary request 3.

20.4 The appellant thus cannot have been surprised by the course of the oral proceedings before the opposition division and the negative decision taken with respect to inventive step in view of the disclosure of example 2 of D2. Document D15 should therefore have been filed already during the opposition proceedings.

20.5 The appellant did also not provide any reasons during the appeal proceedings why, in response to the opposition division's communication and in preparation for the oral proceedings before the opposition division, experimental data with respect to compositions according to example 1, rather than example 2, of document D2 have been provided.

21. The board does therefore not admit document D15 into the proceedings (Article 12(6) RPBA).

22. In conclusion, no technical effect has been shown related to the feature which distinguishes the claimed compositions from the closest prior art. The objective technical problem can thus, in line with the impugned decision, only be seen in the provision of alternative colouring compositions for keratin fibers.