T 1096/19 19-09-2022

Reasons for the Decision

1. The subject-matter of the contested patent

The contested patent relates to a non-therapeutic method for operating a photo-epilation device. As explained in paragraphs [0001] and [0002], photo-epilation consists in damaging or destroying hair and hair follicles by applying light on the skin, typically in form of intense pulses. Melanin contained in the hair and the follicles selectively absorbs light, heats up and eventually vaporises. The resulting hair removal can be temporary or permanent.

Due to their high light energy density, or fluence, professional systems are typically bulky, heavy and expensive, and may lead to skin damage or high levels of pain if they are not used with care. This is why they are generally not suitable for the consumer market (paragraphs [0006] and [0007]).

By contrast, the method for operating a photo-epilation device provided by the contested patent can be comfortably and safely used by consumers at home, without the need for professional training. For this purpose, the photo-epilation device uses a comparatively low fluence which is still effective for achieving photo-epilation. This keeps heat generation low and thus ultimately allows for a smaller size of the device (paragraphs [0008]-[0011], [0039]).

In detail, the photo-epilation device includes a broadband intense pulsed light-generating means for generating high-intensity light in a broad spectral range suitable for effecting photo-epilation and a control device adapted to control the light-generating means to switch it on in brief pulses having a pulse duration in the range from 1 to 2 ms, at a pulse repetition frequency in the range from 0.1 to 0.5 Hz, and such that the fluence on skin level is in the range from 2 to 7 J/cm**(2) per pulse. The claimed method entails that the photo-epilation device be displaced from one skin area to another after each pulse and before the next pulse while the light-generating means is repetitively driven by the control device at the given pulse repetition frequency (paragraph [0038]).

2. Exception from patentability

2.1 Although D18 attributes some bactericidal effects to pulsed light under certain conditions (page 1, section "Mechanism of action of light-based therapies"), there is no evidence that application of a light pulse having the characteristics defined in claim 1 would lead to any therapeutic effect. D18 indeed refers to "determined wavelength spectrum, fluence, and pulse duration" (page 2, last paragraph) but does not specify any concrete values which fall within the ranges specified in the claimed method. D18 also explains that "[t]here is insufficient data to determine the precise optimal device, dosing, and number of treatments required in using these procedures for acne treatment" (page 8, first paragraph of the section "Summary").

2.2 Moreover, even if some bactericidal effect were achieved by the method of claim 1 as alleged by the respondents, the method would not inevitably have a prophylactic effect on healthy skin.

Removal of bacteria from healthy skin is indeed not necessarily prophylactic. Even if potentially pathogenic bacteria are present on their skin, a healthy individual is not likely to develop a pathological state only because of the presence of such bacteria. Only on the skin of a patient having a pathological disorder could the claimed method have a therapeutic effect.

The two different situations, however, can be clearly distinguished, especially because they involve two groups of individuals that are themselves readily distinguishable: those who have a pathological skin disorder and who might receive a therapeutic benefit from the claimed method, and people who have healthy skin and would thus receive no such therapeutic benefit.

2.3 Due to the disclaimer "non-therapeutic" in claim 1, the claimed method is unambiguously limited to a non-therapeutic photo-epilation method. It follows that claim 1 is not directed to subject-matter excluded from patentability under Article 53(c) EPC, contrary to the respondents' view.

3. Added subject-matter

3.1 It is undisputed that the descriptions of the parent application and the divisional application as filed are substantially identical and differ mainly in their page numbering. Reference is made below to passages from the description of the parent application as filed ("the original description"); similar citations can be found on the corresponding pages of the description of the divisional application as filed.

3.2 Objection related to the skin to be treated

3.2.1 It is true, as argued by the respondents, that several passages of the original description relate to the situation of a user operating the device on their own skin, as illustrated, for example, by references to "the user's skin type" (page 5, line 6) and "his or her skin" (page 6, line 24). However, these passages merely illustrate optional features of the device used in the claimed method, such as a user input member to enter a skin type or a skin-contact sensor to prevent the generation of light pulses if no contact with the skin is detected.

The Board concurs with the appellant that the method of claim 1 is generally supported, inter alia, by page 8, lines 1-13 of the original description. This passage essentially discloses applying the fluence to "the skin" or "a skin area", displacing the device "from one skin area to another" and then repeating the treatment, without specifying whose skin is treated. The person skilled in the art thus derives that what matters for the disclosed photo-epilation device and the associated photo-epilation method are (i) the characteristics of the light pulses emitted by the device and (ii) the way the device is displaced from one skin area to another between each pulse. It is irrelevant whether the skin being treated is the user's own skin or the skin of a different person.

3.2.2 It is also true that the original description emphasises the advantages of the disclosed photo-epilation device in terms of safety and its small size and ease of use compared to professional systems typically used in beauty salons. These advantages suggest indeed that the photo-epilation device and the claimed method are particularly suitable to be used by a consumer on their own skin, safely and easily, in their home environment.

However, the original description does not limit these advantages to this situation only. Rather, the person skilled in the art understands that the claimed method could equally be performed not only in a home environment by a user on the skin of another user but also in a professional environment, where a user typically treats the skin of somebody else, while still bringing out the same advantages.

3.2.3 The Board therefore concludes that, contrary to the respondents' argument and the Opposition Division's view (point 2.3.1.3 of the decision under appeal),

claim 1, in not restricting the method to the situation where a user operates the photo-epilation device on their own skin, does not present the person skilled in the art with new information extending beyond the original disclosure.

3.3 Admittance of the further objection related to the "mandatory displacement" of the photo-epilation device

During the oral proceedings before the Board, for the first time on appeal, respondent 1 brought forward a further objection of added subject-matter against claim 1, related to the "mandatory displacement" of the photo-epilation device defined in the characterising portion.

This objection is an amendment to respondent 1's appeal case made after the notification of the summons to attend oral proceedings before the Board. Accordingly, its admittance into the appeal proceedings is subject to Article 13(2) RPBA 2020, under which any amendment to a party's appeal case made at this stage of the proceedings must, in principle, not be taken into account unless there are exceptional circumstances justified with cogent reasons by the party concerned.

Respondent 1 argued that this objection had been raised in reaction to point 4.2 of the Board's communication under Article 15(1) RPBA 2020. However, in this passage, the Board merely pointed out that what appeared to matter for the photo-epilation method was not whose skin was treated by the method but rather the characteristics of the light pulses emitted by the device and the way the photo-epilation device was displaced from one skin area to another between each pulse. Contrary to the respondent's view, the Board's statement cannot justify admitting the new objection into the appeal proceedings.

The fact that this objection had been substantiated in the notice of opposition filed by respondent 1 indicates that the respondent was able to file this objection at the earliest stage of the appeal proceedings. The fact that other objections may have appeared sufficiently convincing to lead to the revocation of the patent did not prevent the respondent from substantiating all of its objections in its reply to the appellant's statement of grounds of appeal.

For these reasons, the Board decided not to admit the objection of added subject-matter related to the mandatory displacement of the photo-epilation device into the appeal proceedings.

3.4 It follows from the above considerations that claim 1 meets the requirements of Articles 76(1) and 123(2) EPC, contrary to the Opposition Division's view (point 2.3.1.3 of the decision under appeal).

4. Industrial application

4.1 Like in the discussion in point 3.2.2 above, the disclosure that the photo-epilation device can be used safely and easily by an end consumer in the private sphere does not mean that the device cannot be used in a commercial environment, such as a beauty salon, by professionals on their clients. As argued by the appellant, the person skilled in the art understands, from the nature of the method of claim 1, that it is also suitable for being exploited commercially in this kind of environment.

4.2 The reference to T 74/93 is not persuasive. This case concerned the application of a contraceptive composition to the cervix of a human female. This differs in essence from a method of operating an epilation device, a common activity in professional cosmetic and beauty salons.

4.3 The Board thus concurs with the appellant's view, also shared by the Opposition Division (point 2.4 of the decision under appeal), that the claimed method is susceptible of industrial application as required by Article 57 EPC.

5. Novelty

5.1 Novelty over E2

5.1.1 According to the respondents, the ranges 1-75 ms and 1.5-5 J/cm**(2) disclosed in the last paragraph of page 8 of E2 deprived of novelty the ranges 1-2 ms and

2-7 /cm**(2) defined in claim 1. In particular, the respondents argued that the combination of 1 ms and

5 J/cm**(2) was disclosed in E2.

5.1.2 When assessing the novelty of a numerical range selected from or overlapping with another range known from the prior art, the following criteria must be met for the range to be novel (see Case Law of the Boards of Appeal of the EPO, 10th edn. 2022, I.C.6.3.1 and I.C.6.3.2):

(a) The range should be narrow.

(b) The range should be sufficiently far removed from the known range illustrated by means of examples.

These two criteria compare the invention as claimed to the disclosure of the prior art, as is required for the examination of novelty. This Board takes the view, also taken in the majority of recent case law (see e.g. T 261/15, point 2.2.2 of the Reasons), that whether the selected or overlapping area provides an arbitrary specimen from the prior art or another invention - an aspect on which the parties also relied in their submissions - is in fact a question of inventive step rather than novelty.

Moreover, since the fluence on skin level and the pulse duration jointly influence the way the hair and hair follicles are damaged or destroyed by the light pulse, their ranges are not to be considered in isolation but in combination when assessing the prior art.

5.1.3 While the ranges defined in claim 1 indeed overlap to varying degrees with the ranges of E2, considering them in combination as discussed above results in a narrow range of overlap with the light pulse characteristics disclosed in E2, especially due to the claimed pulse duration range 1-2 ms, which is considerably narrower than the corresponding range 1-75 ms of E2. Criterion (a) is thus met.

Furthermore, as argued by the appellant, the combination of 1 ms and 5 J/cm**(2) is not directly and unambiguously disclosed in E2. Although each is explicitly disclosed in E2, the end-values of the known ranges cannot be combined with each other arbitrarily to suit the case being made. Moreover, in the absence of further teaching in this direction, the person skilled in the art would not seriously contemplate working in the region of the end-values of the prior-art ranges (see T 261/15, fourth paragraph of point 2.3.2 of the Reasons). The combination of the claimed ranges is therefore far removed from the combination of ranges disclosed in E2. Thus, criterion (b) is met as well.

5.1.4 It follows that the fluence and pulse duration ranges disclosed in E2 do not anticipate the corresponding combination of ranges specified in claim 1. At least for this reason, the subject-matter of claim 1 is therefore novel over E2.

5.2 Novelty over E3

The ranges 0.3-3 ms and 4-5 J/cm**(2) mentioned in paragraph [0182] of E3 that the respondents considered novelty-destroying are disclosed in the context of clinical results ("found clinically"). As put forward by the appellant, E3 does not directly and unambiguously disclose that these clinical results were obtained with the device described in the rest of the document. The clinical results could well have been obtained with another device, the configuration of which is not disclosed in E3.

This view is reinforced by the fact that for the preferred device, E3 systematically discloses pulse durations above 3-10 ms or even higher (paragraphs [0176], [0185]), i.e. much higher than those specified in paragraph [0182]. Pulse durations below 10 ms are even explicitly qualified as "not desired" in E3 (paragraph [0200]).

Therefore, even if the ranges in paragraph [0182] were assumed to anticipate those of claim 1, E3 would still not directly and unambiguously disclose the remaining features of claim 1 in combination with these ranges.

The subject-matter of claim 1 is therefore novel over E3.

6. Inventive step

6.1 Inventive step starting from D1 in combination with D2

It is true that the header of Table 2 of D1 mentions that the fluences indicated in the table are "generally per pass". However, the same sentence also discloses that the treatment may involve "multiple passes". As argued by the appellant, this includes multiple passes applied successively to the same skin area.

The Board acknowledges that, according to paragraph [0038] of the contested patent, a light pulse may also be formed as a train of sub-pulses. However, if a series of N passes, each having a duration of 1 ms and a fluence in the range 0.26-9.6 J/cm**(2) referred to by the respondents were applied to a given skin area and were regarded as forming, in combination, a single train of N sub-pulses, the overall pulse parameters characterising this single train of sub-pulses would be the cumulated duration and fluence (i.e. N times the duration and the fluence per pass), thus potentially well above the pulse duration and fluence ranges defined in claim 1.

The Board therefore concurs with the appellant that D1 does not directly and unambiguously disclose that a pulse having the combination of parameters stated by the respondents is to be applied to each skin area to be treated only once before the photo-epilation device is moved to another skin area.

Moreover, the disclosure in column 14, lines 18-20 that the photo-epilation device is "sequentially moved to selected treatment areas on the skin", to which the respondents also referred, is not direct and unambiguous disclosure either that only one pulse or pass is applied to a given skin area and that the photo-epilation device is moved "after each pulse and before the next pulse" as required by claim 1. The photo-epilation device could well be sequentially displaced from one skin area to another only after having applied a certain number of passes, as discussed above.

It follows that D1 does not directly and unambiguously disclose the characterising feature of claim 1 in combination with the feature that the light pulses generated by the photo-epilation each have a pulse duration and a fluence in the ranges defined in claim 1, contrary to the respondents' view.

The respondents' inventive-step objection starting from D1, based on this assertion, therefore fails for this reason alone.

Moreover, the Board notes that paragraphs [0202]-[0204] of D2 simply correlate the pulse repetition frequency with the time needed to treat a large skin area but do not disclose that the photo-epilation device must be displaced from one skin area to another "after each pulse and before the next pulse" as defined in the characterising portion of claim 1.

The combination of D1 with D2 thus cannot lead to the subject-matter of claim 1 in an obvious way. The Board therefore concludes that the subject-matter of claim 1 involves an inventive step starting from D1.

6.2 Inventive step starting from E2 in combination with paragraph [0196] of E3

Contrary to the respondents' assertion, the combination of light pulse parameters of 1 ms and 5 J/cm**(2) would not have been obvious to the person skilled in the art starting from E2. Indeed, these values are merely the end-points of the ranges disclosed in E2. E2 contains no teaching that suggested using these particular values specifically or, a fortiori, the combination of these values.

More generally, as argued by the appellant, the person skilled in the art proceeding from E2 would not have arrived at a combination of fluence and pulse duration falling within the ranges defined in claim 1 without inventive step.

The epilation device disclosed in E2 is indeed based primarily on thermal epilation: heat is transferred to the hairs from the hot air heated by the flash lamp and then conducted along the hair shafts down to the follicles (page 2, lines 1-6). Light pulses as involved in the contested patent may also play a role, albeit only a secondary one (page 2, lines 13-16); E2 explicitly teaches that the light pulses must have an energy insufficient to destroy the hairs (page 2, lines 32-33).

By contrast, as explained in the contested patent, light pulses having a fluence and a pulse duration in ranges defined in claim 1 have an energy sufficient to destroy the hairs since they allow removing them by photo-epilation only. Therefore, the person skilled in the art starting from E2 would not have deliberately selected light pulse parameters in the ranges defined in claim 1 because this would have been contrary to the teaching of E2.

Paragraph [0196] of E3 merely relates to the choice of a pulse repetition frequency. Therefore, even when considering this paragraph, the person skilled in the art starting from E2 would not have arrived at the subject-matter of claim 1 without an inventive step.

6.3 Inventive step starting from E1 in combination with paragraph [0182] of E3

It is common ground that E1 entails applying multiple light pulses to the same skin area to be treated (see, for example, paragraphs [0020] and [0022]).

The subject-matter of claim 1 thus differs from the method disclosed in E1 at least on account of the characterising feature of claim 1, which requires the photo-epilation device to be displaced from one skin area to another after each pulse and before the next pulse, i.e. to apply one single pulse to a given skin area before moving to the next one.

In contrast, E1 underlines throughout its description the advantages of "delivering multiple low power pulses on a treatment area over a relatively long period of time", not only in terms of "economy and reduction in system complexity" but also a "less painful treatment" compared to "single pulse treatments" (see for example paragraph [0020]).

Given this explicit opposite teaching, the Board shares the Opposition Division's view in point 6.3.5.1 of the decision under appeal that the person skilled in the art starting from E1 would have had no motivation to apply only one pulse on each skin area and to move the device to another skin area after each pulse and before the next one.

Therefore, contrary to the respondents' view, the person skilled in the art starting from E1 would not have arrived at the subject-matter of claim 1 without inventive step, even considering E3.

6.4 Admittance of the inventive-step objection starting from E3 in combination with paragraph [0182] of E3

As acknowledged by the respondents, no inventive-step objection starting from E3 was raised in the first-instance proceedings. The decision under appeal is silent on this issue.

Pursuant to Article 12(4) RPBA 2007, which applies in this case by virtue of the transitional provisions of Article 25(2) RPBA 2020, the Board has the power to hold inadmissible facts, evidence or requests which could have been presented in the first-instance proceedings.

Novelty over E3 was discussed in the first-instance opposition proceedings and acknowledged by the Opposition Division (point 6.2.3 of the decision under appeal). An inventive-step objection starting from E3 could therefore have been raised in the first-instance proceedings, at least in reaction to the finding of the Opposition Division on E3, especially considering that the Opposition Division had already acknowledged novelty in view of E3 in the communication of 5 April 2018 (point 8.2).

Moreover, this objection is prima facie not convincing. As discussed in point 5.2 above, the person skilled in the art starting from E3 would not have considered applying the pulse parameters disclosed in paragraph [0182] but would have merely followed the explicit and consistent teaching in the rest of E3 that pulse durations above at least 3-10 ms should preferably be used (paragraphs [0176], [0185]). These pulse durations are, in any event, well above the pulse durations specified in claim 1.

For these reasons, the Board decided to hold the inventive-step objection against claim 1 starting from E3 inadmissible.

7. Conclusion

Given the above considerations, none of the respondents' objections admitted in the appeal proceedings prejudices the maintenance of the contested patent in amended form based on the appellant's main request.