T 0932/94 (Dye composition/WELLA) 13-01-1998

1. The appeal is admissible.

Main Request

2. The Respondents made no objection under Article 100(c) EPC and the Board considers that the requirements of Article 123(2) and (3) EPC are satisfied. Claim 3 includes a correction of imino in claim 5 on page 2, line 17, originally filed to amino in claim 4 on page 6, line 32, of the patent specification. This correction is in accordance with the chemical structure of betaines exemplified in the description of the application originally filed and that of the patent in suit as well as the IUPAC nomenclature of organic chemistry proposals for acylamino radicals.

3. The claims also fulfil the requirements of Article 84 EPC

3.1. For reasons of lucidity, the subject matter of claim 1 may be split up into the following schema:

A dye composition for treating hair consisting of:

(i) 0.01 to 10% by weight of a direct dye selected from the group of an anthraquinone, azo, nitro, basic, triarylmethane or disperse dye or any combination thereof;

(ii) 5 to 20% by weight of an anionic shampoo base;

(iii) 1 to 10% by weight of an auxiliary surfactant which is a betaine surfactant; and

(iv) conventional ancillary ingredients such as conditioning agents, opacifiers, pearlescent agents, sequestrants, perfumes, preservatives, glycols and water.

The components defined under (i) to (iii) are obligatory elements which are essential for the desired dying effect. It was, however, not contested that a marketable product usually contains further components for other purposes for which examples are given in feature (iv). From this, it becomes clear that components (i) to (iii) are different from the ancillary ingredients and particularly further dye components are excluded as ancillary ingredients. In these circumstances the terms "a dye composition ... consisting of" are consistent with the explanations in the description and the hair-colouring formulations according to the worked examples as originally filed corresponding to those in the patent specification.

3.2. Furthermore, the Appellant clearly stated that he does not seek protection for subject-matter covering, under the term "ancillary ingredients", such components which, having regard to their chemical structure or properties, would per se act as colorants.

The Board shares the Appellant's point of view that this statement is not in contradiction with the fact that some of the ancillary ingredients may interact with the direct dye component under (i), for example by influencing the nuance of the colour. Having regard to the comparative tests annexed to the grounds of appeal, the Board is convinced that the basic colouring effect of the claimed dye composition is indeed attainable by the obligatory components (i) to (iii).

3.3. Finally, it should be noted that the criteria to be taken into consideration when deciding on the meaning of the expression "consisting of" depend also on the particular specific technical field. In the present case the claimed subject-matter relates to products which find application in the field of cosmetics. In the Board's view, restricting the Appellant to specific types of ancillary ingredients only necessary when commercialising the claimed product but not necessary in order to attain an effect related to the obligatory components claimed, would be going to far. Having regard to the fact that it is common practice to include a major portion per weight of ancillary ingredients in commercialized cosmetic preparations, there leaves no doubt as to a completion of the percent by weight ranges required by the claimed composition.

Accordingly, the Respondents' objections that the subject-matter of claim 1 was not sufficiently clear or certain must fail.

4. Having regard to the outcome of point 3 above, it is clear that the wording of claim 1 excludes compositions as disclosed in document (12) comprising oxidation dyes. Furthermore, document (12) does not contain a reference to the amount of direct dyes to be included in a hair-colorant composition.

Henna is now excluded from claim 1 and the Respondents did not continue to object with respect to a lack of novelty over documents (3) to (5) relating to a henna colorant.

Since, furthermore, none of the other documents cited in the course of either the examination or opposition procedure discloses the combination of components of the colouring shampoo as set out in claim 1, the Board is satisfied that claim 1 relates to novel subject-matter.

5. The Board regards document (3) as the closest prior art

5.1. This prior art discloses on page 117, right column, second paragraph, a so-called "HENNA SHAMPOO" containing "Sodium Laureth Sulfate, Water, Lauryl Betaine, Myreth-3, Caprate, Hydrolyzed Animal Proteins, Glycerin, Henna Extract, Quaternium-23, Lactic Acid, Methylparaben, Methanal, Propylparaben". Taking account of the use of trade names and abbreviations well-known in the field of cosmetics, the said shampoo comprises each of the obligatory components as required by claim 1, except the use of henna extract instead of a synthetic direct dye.

5.2. As regards the problem underlying the patent in suit, the Appellant has argued that the comparative examples annexed to the grounds of appeal would contain enough evidence to prove that an increase in colour intensity may be attained by the claimed dye composition.

On considering the experimental evidence on file, particularly that according to Anlage 4 annexed to the grounds of appeal showing for a direct cationic dye with an azo group, namely 1-(2'-nitro-4'amino)-phenylazo-2-hydroxy-7- trimethylammoniumchloride-naphthalene, in combination with the obligatory components of claim 1 a decrease in colour intensity, the Board is not convinced that the alleged increase in colour intensity is achievable over the whole group of direct dyes claimed, and is thus not convinced that the objective problem could be seen in general in an improvement of colour intensity. In its conclusion the Board did not overlook the fact that Anlage 2 annexed to the grounds of appeal shows an increase in colour intensity to be attained by using a direct nitro dye instead of lawson, a chemical component responsible for the colouring effect of henna. However, although this is a good example of one specific class of direct dyes and the Respondents did not file any counter-experimental evidence, the nitro dye tested according to Anlage 2 cannot, in view of the results for the dye with an azo group, be considered representative of the other members of the group of claimed dyes forming heterogenic classes as to their chemical structure and properties.

5.3. According to the Appellant's submission, claim 1 should be regarded as implicitly restricted to non-cationic dyes because it was common general knowledge that cationic dyes were not compatible with an anionic shampoo base and under these circumstances the comparative examples annexed to the grounds of appeal would contain enough evidence to prove that an increase in colour intensity could be attained for each of the members of the group of direct dyes mentioned in claim 1.

In this respect, it is to be noted that, in response to a question by the Board, the Appellant itself has confirmed that neither the description nor the worked examples of the patent in suit contained a reference to the use of non-cationic dyes. Accordingly, in the absence of any additional proof by the Appellant and taking into account that the Respondents contested the alleged common general knowledge, the Board cannot accept an implicit disclosure of non-cationic dyes comprised by the patent in suit. Therefore, it is not possible to base a discussion of the problem to be solved on claimed subject-matter deemed to be restricted to non-cationic dyes.

5.4. Accordingly, with regard to document (3), the problem to be solved can only be seen in the provision of a colouring shampoo allowing an extended palette of colouring shades of the hair.

The solution proposed by the patent in suit is, in accordance with claim 1 of the main request, a dye composition consisting of a specified group of direct dyes within defined percent-by-weight ranges of the dyes, of the anionic shampoo base and the betaine surfactant.

Having regard to the experimental evidence on file, the Board finds it plausible that the problem has been solved. This was not contested by the Respondents.

5.5. There is nothing in document (3) itself to suggest that the skilled person should have investigated hair colorants other than henna.

5.6. However, if confronted with the problem as stated above, the skilled person inevitably would turn to other prior art relating to hair colorants and first of all take into account documents containing technical information more generally with respect to dyestuffs in the field of cosmetics.

Document (14), titled "Harry's Cosmeticology", contains such information. "Chapter Twenty-seven" relating to "Hair Colorants" discloses, on pages 526/527, under the heading TEMPORARY HAIR DYES, a large list of dyestuffs. Expressly mentioned are: azo dyes belonging to the chemical classes of acid, basic, disperse and metallized dyes; anthraquinone dyes belonging to the chemical classes of acid dyes and disperse dyes; triphenylmethane belonging to the chemical classes of acid dyes and basic dyes. Nitrophenylenediamines are mentioned on page 529 under the heading SEMI-PERMANENT COLORANTS.

Since claim 1 relates to broad ranges of percent-by-weight of the obligatory components covering quantities which are commonly used in the formulation of hair colorants and for which no particular advantage or effect to be achieved has been shown, the Board can only conclude that the subject-matter of claim 1 according to the main request relates to an obvious choice of a colouring shampoo consisting of direct dyes well-known in the art and, accordingly, does not involve an inventive step as required by Article 56 EPC.

For the above reasons, the appeal must fail in respect of the main request.

Auxiliary Request 1

6. As already set out under point 6.2 above, the restriction of claim 1 to non-cationic dyes finds no basis in the description of the patent in suit as originally filed.

Since the said restriction also does not represent a "disclaimer" based on an accidental novelty-destroying prior art disclosure, which means prior art relating to a different purpose and solving a different problem, claim 1 does not meet the requirements of Article 123(2) EPC.

Therefore, the appeal must also fail in respect of the first auxiliary request.

Auxiliary Request 2

7. Claims 1 to 5 according to this request are restricted in respect of the obligatory present dye component to a composition consisting of a direct nitro dye. This restriction can be regarded as a direct response to the Respondents' objections with respect to the broadness and heterogeneity of the group of direct dyes covered by claim 1 of the main request. Furthermore, it is to be noted that each of the "Formulations 1 to 4" according to the worked examples of the patent in suit as originally filed contains nitro dyes. Therefore, the Board sees no reason to refuse auxiliary request 2 as being late filed.

7.1. In view of the said restriction, the considerations under points 2 to 5, 6 and 6.1 above relating to the requirements of Articles 123, 84 and Article 100(a) in regard to Articles 54 and 56 of the main request, apply to auxiliary request 2 as well.

7.2. Claim 1 of auxiliary request 2 relates to a homogenic class of direct dyes and accordingly the objections raised under points 6.2 and 6.3 above are no longer relevant to the subject-matter of this request.

Therefore, in relation to document (3), the problem to be solved is the provision of a colouring shampoo showing improved colour intensity of a henna shade.

The problem is solved by the dye composition for treating hair according to claim 1, consisting of defined amounts of a direct nitro dye in combination with defined amounts of the anionic shampoo base and betaine to be included in the composition.

7.3. Comparative examples A1 and A2 of the so-called Anlage 2 annexed to the grounds of appeal contain an anionic shampoo base and a betaine and contain, on the one hand, the colorant of the closest prior art and, on the other, a colorant representative of the class of direct nitro dyes as required by claim 1. The Respondents did not dispute that 6-chloro-4-nitro-2-aminophenol, the colorant used in comparative example A 2, shows per se a similar shade nuance as lawson, the colorant used in comparative example A 1, which is responsible for the colouring effect of henna. According to test results of colour measurements expressed in the said comparative examples in the form of the so-called L*; a*; b*-system, the inclusion of a direct nitro dye in the shampoo base known from document (3) shows an increased colour intensity over lawson included in the same shampoo base. The Respondents did not contest these L*; a*; b*-values but argued that 6-chloro-4-nitro-2-aminophenol would per se show a more intensive shade than lawson. However, in the absence of any proof provided by additional prior art or by counter-experimental evidence, the Board cannot take into consideration the said objection in respect of the problem underlying the patent in suit.

Since both the closest prior art and the dye composition according to the request under discussion contain an auxiliary surfactant which is a betaine, the Board likewise cannot share the Respondents' point of view that, in addition to comparative examples A 1 and A 2, there is a need for further comparative examples relating to a colorant on a henna basis but without a betaine surfactant and showing an effect of a betaine surfactant on the L*; a*; b*-values as set out in the comparative examples, A 1 and A 2.

The fact that document (3) does not disclose quantities of the components to be included in the shampoo colorant, is not opposed to the conclusion that comparative examples A 1 and A 2 do indeed provide sufficient evidence as to an increase in colour intensity over the closest prior art.

Accordingly, the Board sees no reason to doubt that the problem has indeed been solved.

7.4. As regards the question of obviousness of the solution to the said problem, the Respondents have argued that nitro dyes as such, as well as their chemical and physical properties, and in particular their use as direct dyes in colouring shampoos, are so well known in the art that there is no need to file counter-experimental evidence or to make reference to specific prior art documents. They also argued that it is a straightforward procedure to deny, in the case of the said restriction to direct nitro dyes, the required inventive step of the claimed subject-matter.

In the Board's judgment, however, the inclusion of a direct nitro dye in the shampoo base known from document (3) in order to increase the colour intensity of a specific shade does not establish a straightforward situation. Having regard to the test results according to "Anlage 4" annexed to the grounds of appeal, it is proven that, for example, in the case of the inclusion of a specific direct azo dye in a shampoo base as known from document (3), a drastic decrease in colour intensity occurs.

In these circumstances the Board can only conclude that the Respondents have, by way of hindsight, argued that it would have been foreseeable to attain an increase in colour intensity of henna shade by the claimed solution.

Since there is also not the slightest hint in any of the cited documents of the said effect on colour intensity, there is no need, with respect to the subject-matter of auxiliary request 2, to discuss in detail either citation, taken singly or in combination. It is again pointed out that with respect to auxiliary request 2 the Respondents did not refer to specific prior art. Thus, there is no basis for the Board to conclude that the required inventive step is lacking and claim 1 as well as dependent claims 2 to 5 satisfy the requirements of Article 56 EPC.