T 2554/22 - D1 is not a realistic starting point

Key points

• "The Board considers the Opposition Division's approach to select D7 as closest prior art document and to analyse inventive step starting from this document to be correct."
• "D7 deals with the same problem as the patent, namely adherence of colour to hair by means of forming a film around them, using aminosilicone polymers. This is extensively described throughout D7, as set out above. This problem is not addressed in the general part of D1, neither with respect to pigments nor with respect to any other type of coloured material. As outlined above, D1 is mainly concerned with the avoidance of storage stability problems of hair conditioner compositions containing direct dyes and proposes a specific surfactant combination for this purpose."
• " It is correct that D1 mentions prevention of colour fading using aminosilicone polymers on page 16. However, this disclosure is part of a three page description of silicone polymers as optional ingredients for the provision of "smoothness and softness on dry hair" (page 13 second paragraph). One out of nine example compositions uses a film-forming aminosilicone, "aminosilicone-2", but film-forming properties neither of "aminosilicone-2" nor of the resulting composition are mentioned in D1. One has to refer to the product data sheet D2 in order to obtain this information."
• A skilled person would have to deeply dig into D1, supplemented by D2, to realize that part of this document may be directed to the same purpose than the patent and was using similar means, i. e. film-forming compositions containing aminosilicones for adherence of pigments or coloured materials to the hair.
• "The Board does not deny that in case of several "close" prior art documents a skilled person may have used any of them as a starting point and it may be necessary to assess inventive step from multiple angles. However, in the present case a skilled person addressing the problem of the patent would not have started from D1, but from D7. In this sense, in the present situation D1 is not a "realistic starting point"."
  
  
• "The appellant did not contest the Opposition Division's conclusion that the provision of the compositions defined in the patent claims were based on an inventive step when starting from D7. Thus, this issue is not object of the appeal proceedings."
• "The appellant argued that, independent from the selection of the closest prior art discussed above, the claimed compositions would still be obviously derivable when starting from D1. The Board disagrees, for the reasons outlined below. "
• "To be obviously derivable from D1 a skilled person would have to start from D1 in the first place. That this is not realistic in the present circumstances has been reasoned above."
• "if one nevertheless takes example 4 of D1 as a starting point, claim 1 of the patent does not differ from this example composition only in that the molecular weight of the aminosilicone is not known, as submitted by the appellant. Claim 1 of the patent also requires the presence of components (c) and (d), i. e. an ether of a polyhydric alcohol and a thickening system comprising a deposition enhancer and a thickening polymer as defined in the claim. 
• "The objective technical problem starting from D1 was the provision of alternative compositions useful for enhancing colour adhesion to the hair. "
• "even if a skilled person would have used D1 a starting point it would not have arrived at the compositions defined in the claim. This confirms that D1 is not "closer" to the claimed invention than D7, as argued by the appellant. It also confirms that the Opposition Division's choice of D7 as the document representing the closest state of the art was not flawed, as argued by the appellant [opponent]."
• The patent is maintained as granted. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222554eu1