T 0227/88 (Detergent compositions) 15-12-1988

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.

2. Amended Claims 1 to 8 raise no objections on formal grounds.

The scope of present Claim 1 in comparison with that of the granted one is substantially restricted by limiting the organic precipitant builder (I) to compounds of one specific type, i.e. to those which correspond to original formula (II) in which, however, Z is limited to COOY and the other possible alternative for Z (i.e. SO3Y) is deleted. Thus, the main claim no longer covers organic precipitant builders which are derived from –- sulphocarboxylic acids. These amendments obviously find their support in both Claims 1 and 2, as well as in Claims 3 and 4, as granted.

The dependent claims correspond to previous Claims 3, 4, 8 and 15 to 18 which had been renumbered as new Claims 2 to 8.

The amended claims therefore comply with Article 123(2) and (3) EPC.

3. The main claim having been amended, it is necessary to consider its validity in accordance with Article 102(3) EPC. In all cases in which amendments are requested by the patentee and are considered to be free from objection under Article 123(2) EPC, Article 102(3) EPC confers upon the Opposition Division and the Board of Appeal jurisdiction, and thus the power, to decide upon the validity of the patent as amended in the light of the requirements of the Convention as a whole. This jurisdiction is thus wider than the jurisdiction conferred by Articles 102(1) and (2) EPC, which expressly limit jurisdiction to the grounds of opposition mentioned in Article 100 EPC. When substantive amendments are made to a patent within the extent to which the patent is opposed, both instances have the power to deal with grounds and issues arising from those amendments even though not specifically raised by an opponent pursuant to Rule 55(c) EPC (following T 9/87, "Zeolites/ICI", 18 August 1988, to be published in OJ EPO).

4.The abovementioned power must, however, be exercised in a manner that takes full account of the conflicting interests of two relevant sections of the patent community, namely, the patentee's need to have an opposition proceedings decided as swiftly as the procedure allows, and the certainty of other users or potential users of the inventions, the subject of European patents, that such patents are legally valid and enforceable.

Clearly, the former interest calls for the curtailment, whilst the latter demands the untrammelled exploitation by both instances of the power to deal with grounds and issues not raised by the Opponent.

5. In the present case, the claims of the patent in suit rejected by the Opposition Division by virtue of Article 56 EPC, had primarily been replaced by the Appellant in order to remove the ground of opposition which actually caused the revocation of the patent (see Appellant's grounds of Appeal dated 4 July 1988, in particular paragraph 4). Although in reality the Appellant's request leads to a more substantial limitation of the claimed object vis-à-vis the state of the art than strictly necessary (see point 7 below), it remains nevertheless inside the frame fixed by the grounds of opposition.

Therefore, like in any other case where amendments to the claims are requested, an examination of the amendments is required. Moreover, in combining (dependent) Claims 3 and 4 with the subject-matter of (independent) Claim 1, the Appellant has submitted an amended main claim which, in the opinion of both the Respondent and the Opposition Division, does meet the requirements of patentability and in consequence of which the grounds for opposition are de facto removed. As was pointed out in paragraph VI of the Summary of Facts and Submissions, the parties are ad idem on the form and content of the amended claims. This cannot in itself, be conclusive of the matter, i.e. such an agreement by the parties cannot detract from the power that Article 102(3) EPC confers upon both instances.

6. Whilst it would seem logical to conclude that if amendments to the main claim were limited to what was strictly necessary to lead to a patentable invention, as was explicitly admitted by the first instance, then the same result would follow a fortiori , for a limitation which was even more extensive. However, in the absence of detailed reasons in this respect in the contested decision, the Board has made use of its power under Article 102(3) EPC to check whether the amended claims meet the criteria of patentability. Quite apart from the above reason, the Board observes, obiter, that in cases such as the present one where the patentee's amendments are acceptable to the Opponent, and where such amendments effectively dispose of the opposition as raised by the Opponent, it is desirable to set out the facts and arguments not fully dealt with by the first instance, in order to provide the public with material relevant to the validity of the granted patent.

7. The amended main claim no longer covers any organic precipitant builders which are derived from –-sulpho carboxylic acids, the sole matter at issue at the opposition stage. The amended formula in Claim 1 corresponds to original formula II now restricted to compounds which are all derived from either malonic or succinic acid, which is therefore even more restricted than what was initially considered as acceptable by both the Respondent and the Opposition Division. Novelty was not at issue in the present case.

Since none of the documents available to the Board from the proceedings before the EPO discloses a detergent composition as defined in the amended claims, these claims are novel.

8. For the purpose of inventive step, the prior art document (3a) is still to be considered as the closest state of the art. As stated in this document, it was found, inter alia, that the dirt can be removed from the substrates substantially more quickly and/or more completely when an organic builder is added to the treatment liquor, which exerts a complex-forming and/or precipitating action on the calcium present as hardness producer in the water (see page 3, line 47 to page 4, line 6). This document relates to detergent compositions having a builder component comprising 5-95% by weight of aluminosilicate and 2-45% by weight of a complex-forming or precipitation builder for calcium (see page 5, line 60 to page 6, line 28). In example II on page 17, a number of compounds referred to as complex-forming compounds or precipitating agents are tested in a composition containing 45% of aluminosilicate and 4.2% of a test compound such as oxalic acid. However, other polycarboxylic acids may be used as a supplementary builder, in particular dicarboxylic acids of the general formula HOOC- (CH2)n - COOH with n = 0 to 8 (see page 4, lines 13 to 19).

9. In respect of document (3a) the technical problem can be seen in finding a replacement for the supplementary builders used in this document.

In order to solve this problem it is proposed, according to the characterising part of amended Claim 1, to replace the known supplementary organic builder having complexing or precipitating property by either the malonic or succinic acid derivatives as defined by the general formula (I).

The examples of the description carried out with compositions containing different zeolite/precipitant builder systems such as zeolite/C12 AKM, zeolite/C15-18 AKS or zeolite/C16:1 AKS, show that the problem is indeed solved by this proposal.

Document (3a) obviously does not suggest that also some substituted dicarboxylic acids could be used as supplementary organic builders or replace the ones indicated there. In this document the teaching is clearly limited to unsubstituted dicarboxylic acids of the general formula HOOC - (CH2)n - COOH with n = 0 to 8. For the rest, the Board is not aware of any other disclosure which could have suggested such a replacement as feasible. Consequently, the man skilled in the art had no reason to believe that the compounds falling within the general formula (I) as defined in present Claim 1, could represent suitable alternatives for the supplementary builders mentioned in document (3a).

The Board is not aware of any other relevant document which could have led to the man skilled in the art towards the solution of the problem indicated above.

The subject-matter now claimed, therefore, involves an inventive step, and there can be no objection to maintaining the patent in its amended form, in accordance with the request of both parties.

10. The description has not yet been adapted to the claims which the Board has now approved. However, the Appellant has declared, in his letter filed on 8 July 1988, that he will submit an amended description, once the new claims had been approved by the Board.

The maintenance of the patent in its amended form is therefore subject to the condition that a properly adapted description will be filed by the Appellant.