T 2610/11 02-12-2014

Reasons for the Decision

1. The appeal is admissible.

Inventive step:

2. Claim 1 is directed to a skin preparation for external use containing vitamin A or a derivative thereof, a fatty acid monoglyceride and cholesterol in specific relative amounts. The skin preparation of claim 1 comprises a lamellar structure containing a fatty acid monoglyceride as a main component.

3. Closest prior art:

3.1 The respondent (patent proprietor) considered that Example 2 of document D10, which is a comparative example, represented the closest prior art. Although this finding was disputed, the board will examine whether an inventive step can be acknowledged starting from this embodiment of D10.

Document D10 relates to skin care compositions containing retinoids, which are free of irritating side effects, efficacious and cosmetically elegant and do not necessitate special ingredients or manufacturing, storageor handling precautions (page 9, lines 1 to 13).

Example 2 of document D10 discloses a skin care composition comprising a water phase and an oil phase. The oil phase contains 0.787% by weight of glyceryl monostearate, 1.977% by weight of cholesterol and 0.165% by weight of a 40% w/w mixture of vitamin A in polysorbate 20.

3.2 It has not been disputed that this composition contains vitamin A as required by feature (a) of claim 1, a fatty acid monoglyceride and cholesterol, which are the sole three compounds required by claim 1.

It has also not been disputed that the amount of glyceryl monostearate is 11 parts per weight per part by weight of vitamin A and hence within the limits defined by feature (b) of claim 1.

3.3 The respondent argued that document D10 contemplated compositions containing liposomes, which are lamellar structures, but also compositions in the form of emulsions (page 1, lines 7-11). Example 2 was silent as to whether it was an emulsion or a liposome composition. In the absence of this information, the respondent considered that the presence of a lamellar structure, as required by claim 1, was a further distinguishing feature of claim 1 vis-à-vis the prior art.

However, Example 2 "was made in accordance with the procedure set forth in Example 1" (page 21, lines 9-10).

Example 1 discloses forming an oil phase by blending a part of the oil ingredients, heating to 80ºC with agitation, gradually cooling down to 65ºC and adding the rest of the constituents of the oil phase (page 18, line 20, to page 19, line 8). This oil phase is mixed together with the water phase at 60ºC "in accordance with the procedure set forth in U.S. Patent No. 4,911,928 (Wallach) for making liposomes" (page 19, lines 15-21).

In addition, said procedure of Example 1 of D10 is comparable to the preferred method for obtaining the claimed compositions in paragraphs [11], [22] and [23] of the patent in suit.

The board thus concludes that the composition of Example 2 in document D10 comprises a lamellar structure as required by claim 1 of the patent in suit.

However, in favour of the respondent, it is considered that Example 2 of document D10 fails to disclose that this lamellar structure contains a fatty acid monoglyceride as a main component, which is also required by claim 1.

3.4 Lastly, it has not been disputed that Example 2 of D10 discloses a relative amount of 2.5 parts by weight of cholesterol per part by weight of glyceryl monostearate, which does not fall within the limits required by feature (c) of claim 1 defining a relative amount of 0.05 to 0.4 parts by weight.

4. Technical problem underlying the invention:

The respondent argued during the written procedure that the problem underlying the claimed invention was providing compositions with lower foaming, reduced smell and a lamellar structure with higher stability.

5. Solution:

The claimed solution is a skin preparation for external use which is characterised in that its lamellar structure contains a fatty acid monoglyceride as a main component, and in that the relative amount of cholesterol with respect to fatty acid monoglyceride is from 0.05 to 0.40 parts per weight.

6. Success:

6.1 The patent in suit provides experimental evidence, summarised in tables 3 and 4, showing that the stability of the claimed composition and its foaming capacity are influenced by the relative amount of fatty acid monoglyceride with respect to vitamin A, which is not, however, a feature distinguishing the claimed composition from that of Example 2 of D10.

6.2 Table 5 of the patent specification, referring to the level of smell, compares a composition according to the invention with a composition containing soya lecithin. This data likewise does not reflect the features distinguishing the invention from the closest prior art.

6.3 The data of tables 3-5 of the patent specification, the sole evidence upon which the respondent has relied, does not allow a direct comparison with the closest prior art D10 since they do not differ from one another solely by virtue of the distinguishing feature of the claimed invention. It is thus not credible that the problem as defined above in point 4.4. is solved by the skin preparation of claim 1.

7. Reformulation of the technical problem:

According to the case law of the boards of appeal, alleged but unsupported advantages cannot be taken into consideration in determining the problem underlying the claimed invention (see e.g. decision T 20/81, OJ EPO 1982, 217, Reasons 3, last paragraph). As the alleged improvement in terms of lower foaming, reduced smell and higher stability lacks the required support, the technical problem as defined above needs reformulation.

Thus, the problem underlying the claimed invention can only be considered as providing an alternative skin preparation for external use having, like that of the prior art, excellent stability, reduced smell, a dry feel,and a good effect on wrinkles.

8. Success:

In view of the evidence summarised in tables 3, 4 and 5 of the patent in suit, which shows that the claimed compositions have a good stability, have no offensive smell and are effective against wrinkles, the problem defined above can be regarded as credibly solved by the skin preparations of claim 1.

9. Lastly, it remains to be decided whether or not the proposed solution to the objective problem underlying the patent in suit is obvious in view of the prior art:

9.1 Example 2 of D10 discloses a composition comprising liposomes containing glyceryl monostearate.

D10 teaches that irritating compounds should be avoided (claim 1 and page 17, line 28, to page 18, line 5), that liposomes are beneficial for reducing the oxidation of vitamin A (page 11, lines 13-15) and for dry feel (compositions are less greasy, page 11, lines 20-21), and that the wrinkle-suppressing effect is due to the presence of vitamin A (see background of the invention).

Trying to obtain a composition with the advantages of that of document D10, the skilled person would not modify those features which D10 considers essential, namely the presence of liposomes and of vitamin A and the absence of irritating compounds.

9.2 According to D10, fatty acid monoglycerides are suitable cosmetic components (D10, page 16, lines 3 and 4). It is further known that glyceryl monostearate, which is a fatty acid monoglyceride, forms lamellar structures in water (D16, section 2.2), which are in the form of a lamellar gel at room temperature (Figure 2 and page 5, right-hand column, lines 25-27) and are suitable for preparing cosmetic creams (section 4).

Trying to obtain alternative compositions with the advantages of that of document D10, the skilled person would envisage increasing the amount of glyceryl monostearate, which is a component capable of forming lamellar structures in water suitable for cosmetic use, and would thus arrive at the claimed invention, namely skin preparations comprising a lamellar structure in which said monoglyceride is a main component, without using inventive skills.

By increasing the amount of fatty acid monoglyceride so that it becomes a main component of the lamellar phase, the amount of cholesterol relative to fatty acid monoglyceride, which was 2.5 parts per weight in Example 2 of D10, and hence higher than required by feature (c) of claim 1 (0.05 to 0.40 parts per weight), would necessarily decrease. The respondent has not relied on any effect due to the amount of cholesterol relative to fatty acid monoglyceride, nor can the board identify any such effect. As the choice of the specific relative amount is an arbitrary selection of no particular technical significance in the absence of any effect linked to it, it is concluded that it falls within the normal skills of the person of the art.

For these reasons, the subject-matter of claim 1 is not inventive as required by Article 56 EPC.

9.3 The respondent argued that starting from comparative Example 2 the skilled person, following the teaching of D10, would merely add an antioxidant and thus would not arrive at the claimed invention.

Notwithstanding that the presence of an antioxidant is not excluded from claim 1 of the patent in suit, Example 2 of D10 already contains 0.100% by weight of BHT, which is one of the preferred antioxidants according to D10 (page 14, line 2).

This argument of the respondent is thus unconvincing.

9.4 The respondent also argued that the skilled person would not have any incentive to modify Example 2 at all, since it was a comparative example with a very high irritation score.

However, the authors of document D10 already considered modifying this example, and there is no reason why the skilled person would not aim at modifying it again. For that reason this argument of the respondent is also unconvincing.

9.5 The respondent further argued that document D16 related to binary mixtures of fatty acid monoglyceride and water and not to cosmetic compositions. It was a presentation of research work which disclosed only the opinion of its authors and not a generally acceptable teaching. The respondent thus concluded that D16 would not have been regarded as a pointer to the claimed solution by the person of the art.

However, section 2 of document D16, "Physic-chemical properties of the fatty acids mono-di-glycerides", discloses the formation of lamellar structures prior to section 3, labelled "Own experiments". Thus, it was already generally known before the publication of D16 that glyceryl monoestearate forms stable lamellar structures, and in any case this teaching became state of the art with its publication. Thus, the argument of the respondent that it was not a generally acceptable teaching that fatty acid monoglycerides formed lamellar phases does not hold.

Document D16 also discloses the preparation of cosmetic creams containing fatty acid monoglyceride as a major component (section 4), so that the respondent's argument that D16 belonged to a different technical field and for this reason could not be considered as a pointer to the claimed solution is also unconvincing.

9.6 The board thus concludes that the subject-matter of claim 1 as granted is not inventive within the meaning of Article 56 EPC.

10. In the light of the outcome of the examination of inventive step, it is not necessary to discuss either whether the subject-matter of claim 1 is novel over documents D6 or D8 or the admissibility of the appellant's argument, first raised during these appeal proceedings, that it lacked novelty over the latter.