T 0366/00 (Aerosol preparation/TAISHO LTD) 22-01-2004

1. The appeal is admissible.

2. Correction relating to the application as filed

The request for correction (see point IX above) had already been filed during the opposition procedure.

The substitution of the word "water" on page 2, last line of the patent specification by the word "ice" as a correction of a translation error is not allowable under Rule 88 EPC, since using each of the words "ice" and "water" gives reasonable results explaining a cooling-effect. Water is basically also a good means for cooling, similar to ice and would also be able to supply the cooling-effect claimed for the subject- matter of the patent in suit. Thus the correction is not obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

The requested change of words, by way of an amendment, is not allowed under Article 123 EPC either because in the relevant part of the application as filed only the word "water" is to be found (see page 3, line 37 of the description filed on 16 November 1990).

3. First and second auxiliary requests: admissibility

The board notes that the subject-matters of these requests are restricted to a narrower range of possible mixtures for aerosol, propellant or concentrate. Therefore the corresponding amendments a priori must be considered to be occasioned by the novelty and inventive step objections raised during the proceedings, in particular the question of absolute or relative (gauge) pressure for the claimed range of vapour pressure and the question of the consequences of using the word "comprising" twice in claim 1.

Accordingly these requests fulfil the requirements of Rule 57a EPC and they are therefore admitted into the procedure.

4. Main request, first and second auxiliary requests: Article 83 EPC

Since for a skilled person the definition of "liquefied petroleum gas" (LPG) as a group of several special gases emerges clearly from documents (10) to (13) and since the person skilled in the field of aerosols apparently uses gases being members of this group (see e.g. (1), all examples, except No. 4 and (2) column 4, lines 16 to 17), he will also know how to compose a mixture of them corresponding with a range of 2 to 5 "kg/cm2" gauge in vapour pressure.

The appellant has even submitted that possible ingredients of LPG, such as Ethylene or Propene or some Mercaptane, are not usable by themselves in propellants for aerosols, ie the skilled person would know not to use them ("Solche Zusammensetzungen sind sicherlich nicht als Aerosoltreibmittel geeignet", see its statement setting out the grounds of appeal dated 3 May 2000, page 1, last line but one).

Thus, the board in this respect has no reason to depart from the reasoning or the conclusion of the opposition division in the impugned decision.

5. First and second auxiliary requests: Articles 84 and 123(2) and (3) EPC

5.1. In the circumstances of the present case as for the requirements of Article 84 EPC the board is convinced that the skilled person reading the unit kg/cm2 in relation to vapour pressure is ready to think of "kg-force", meaning in reality kp. This is also clear from pressure data mentioned in document (2) in units kg/cm2 as well and even the correct relation between "kg/cm2" and bar (see column 4, lines 26 to 27. and 34) given there.

In addition, the person skilled in the art, reading the pressure data will be aware of the two possibilities, namely "absolute pressure" and "pressure relative to the normal pressure of the atmosphere (gauge pressure)". In order to understand the real meaning of the range of vapour pressure given in the claims without any definition of absolute or relative pressure, this person has to decide which of the two possibilities is meant. Since the only clue is in the pressure data given in the examples (gauge pressure in all of them), it will be clear to him that the pressure data given in the claims relate to the same possibility (gauge pressure).

According to this point of view, the respondent, in all its submissions used the gauge-pressure data of the gases and liquids possibly to be used themselves or for mixing them in order to obtain propellants. These data, specifically set out in the respndent's reply to the notices of opposition and in the enclosed test report, were not contested by the opponents.

Consequently, in the circumstances of the present case the person skilled in the art will have no doubt concerning the definition of the range of vapour pressure claimed in the patent in suit.

5.2. The common features of the two auxiliary requests

- "the aerosol preparation being a blend of propellant and concentrate",

- "the propellant having a vapor pressure of 2 to 5 kg/cm2" and

- "the concentrate ..." in claim 1 and the use of the term

- "the propellant" in claims 8 and 9 respectively (bold letters introduced by the board)

find their basis in the application as originally filed (see description originally filed, page 2, lines 7 to 15).

The said originally-disclosed wording means however that there is one concentrate and one propellant, and this propellant has to be produced from "liquefied petroleum gas, dimethyl ether or a mixture of these gases" (see description as originally filed, page 2, lines 9 to 10). So it is not permissible to refer to "the concentrate" and "the propellant", leaving the ingredients for the propellant open. The wording in claim 1 of auxiliary request I "the propellant having a vapour pressure ... and comprising a liquefied ..." consequently is not disclosed in the application as filed with respect to an aerosol preparation being a blend of one concentrate and one propellant.

Accordingly, auxiliary request I cannot be allowed under Article 123(2) EPC.

With respect to the set of claims of auxiliary request II, however, the board is convinced that there are no objections concerning Article 123(2) EPC because there the propellant has to "consist of liquefied ..." and the aerosol preparations following claim 7 "are one of" the six cited compositions" and do not "comprise one of the following preparations ...".

5.3. Auxiliary request II also meets the provisions of Article 123(3) EPC since its subject-matter is restricted compared to the subject-matter of the patent in suit, as already shown in point 3, paragraph 1 above.

6. Main request

6.1. As regards the novelty of the subject-matter of claim 1 of the main request, in the opinion of the board, an aerosol composition comprising a concentrate (B) and "a propellant having vapor pressure of 2 to 5 kg/cm2 at 20°C comprising a liquefied petroleum gas, dimethyl ether or a mixture of these gases" may additionally contain another liquid, even if this liquid was in some way also able to act as a propellant.

Document (1a) and the corresponding document (1) represent the state of the art with respect to Article 54(3) EPC.

This prior art discloses, as example 3 in table 1 on page 8, an aerosol composition consisting of:

(A)

- a propellant having vapor pressure of 2 to 5 kg/cm2 at 20°C comprising a liquefied petroleum gas

- that is, 35 parts by weight i-butane showing a vapour pressure - gauge - of 2.2 kg/cm2 at 20°C (see annex to the test report given by the patentee: Data 1)

- and

(B)

- a concentrate composed of a mixture of water, a lower alcohol having 1 to 4 carbon atoms in a weight up to the weight of water,

- that is, 30% aqueous ethanol solution

- and a nonionic surface-active agent,

- that is - which is not contested by the appellant - PBC- 44, polypropyleneglycol-cetylether produced by Nikko Chemicals Co., Ltd (see (1), p 17, "Note")

- the weight ratio of propellant (A) to concentrate (B) being from 95:5 to 50:50,

- that is, the ratio of parts i-butane to the sum of the parts of the ingredients for the concentrate being to be found between the given limits

- and the amount of nonionic surface-active agent in the aerosol preparation being 0.1 to 15% by weight, - that is, 0.5% by weight,

- and 35 parts by weight i-pentane.

As mentioned above, such 35 parts by weight of i-pentane (boiling point 28°C) may also be an ingredient comprised in an aerosol preparation according to the patent in suit and thus all the features with respect to the ingredients and their relations in weight claimed in this patent are realised in the aerosol composition disclosed as example 3 in document (1).

Because of this, example 3 must also on its own show the same ability - when sprayed - to adhere as a cooling sherbet-like foam, as the subject-matter of the patent in suit is supposed to do, since in such a composition the same properties follow from the same measures of preparation.

Therefore, claim 1 of the patent in suit, being the subject of the main request, is anticipated by the teaching of document (1) and (1a) respectively.

6.2. The board could not follow the respondents' arguments that the person skilled in the art would know that in the aerosol preparation all propellant components together would be supposed to exert their common vapour pressure within the range expressed in claim 1 of the alleged patent, since the skilled person has to read a claim in its broadest possible sense.

Accordingly the double use of the word "comprise" in claim 1 of the main request extends - in any case - the scope of the claim to all other possible ingredients.

7. Second auxiliary request

7.1. Novelty

Claim 1 contains the clear wording that the aerosol preparation has to be a blend of the propellant (A) and the concentrate (B), and that the propellant has to consist of a liquefied petroleum gas, dimethyl ether or a mixture of these gases. The mixture of 35 parts by weight of i-pentane and 35 parts by weight i-butane contained in example 3 of document (1) now has to be considered as the only propellant present in the preparation. This mixture has a vapour pressure of 1.1. "kg/cm2" gauge as the appellant submitted correctly in its letter dated 24 November 1998, table 2, which fact was not contested. The preparation according to example 3, like all other aerosol preparations mentioned in (1), therefore falls outside the claimed range of 2 to 5 kg/cm2 gauge at 20°C. Thus the subject- matter of claim 1 in auxiliary request II is novel over document (1) and document (1a) respectively.

The same is true of document (2). The preferred range of boiling points for the propellants to be used is -5 to +5°C, which corresponds to 1.5 to 0.7 "kg/cm2" gauge, ie outside the range of the patent in suit (see (2), column 4, line 10, together with the graph submitted by the patentee, which in the view of the board gives correct relationships). Moreover the propellants disclosed in document (2) have to comprise a high amount of dichlorotetrafluoroethane (see (2), claim 1), which conflicts with the teaching of claim 1 of auxiliary request II.

Finally the other documents mentioned in the proceedings are no closer to the teaching now claimed than either (1), (1a) or (2). Thus the board finds that its novelty is beyond doubt.

7.2. Problem-and-solution approach for assessing inventive step

7.2.1. The patent in suit concerns a foam-forming aerosol preparation for external use.

Document (2) represents the closest state of the art.

The subject-matter of this prior art is also a foam- forming aerosol preparation. It shows nearly all the features of the subject-matter of claim 1 of auxiliary request II (see (2), claim 1, together with column 1, lines 25 to 27, and column 2, lines 42 to 47). Only the correct vapour pressure range of the propellant and the feature "absence of chlorofluorocarbons" (see point 8.1, paragraph 2 of this decision and document (2), claim 1, lines 15 to 17) are missing.

7.2.2. In the light of the disclosure of document (2), the technical problem underlying the patent in suit may be seen in the provision of a foam-forming aerosol preparation having a long-lasting cooling effect without the need for using a fluorocarbon as a propellant (see also patent in suit, page 2, lines 20 to 21).

The solution to this problem is the provision of the aerosol preparation according to claim 1, especially with respect to the range defined therein for the vapour pressure.

Comparative example 5 (see table 4) of the test report filed by the patentee, shows that aerosol preparations according to document (2) do not exhibit any remarkable, good cooling effect after being sprayed onto a surface to be treated.

It is furthermore plausible that a relatively high amount of propellant exerting high vapour pressure causes some ice in the foam ("sherbet-like") by pressure relief and evaporation and thus that the above stated problem is indeed solved.

7.2.3. The problem of providing cooling capacities by means of an aerosol preparation is addressed in neither citation (2) nor any other document cited in the proceedings and there is therefore nowhere any suggestion that the vapour pressure of the propellant be raised to the claimed range in order to achieve this goal.

Even if it would have been the natural consequence of the pollution control discussion at the time of priority of the alleged patent to substitute fluorocarbons by liquefied petroleum gases, there was still no way of arriving in an obvious way at the very special type of gases to use and the control of vapour pressure as provided for in claim 1 of auxiliary request II.

7.2.4. In the absence of additional arguments by the opponents, the board can only conclude that the subject-matter of claim 1 of auxiliary request II involves an inventive step and is allowable pursuant to Articles 52(1) and 56 EPC.

7.3. Further claims from auxiliary request II

Dependent claims 2 to 7 relate to specific elaborations of the subject-matter of claim 1 and are therefore also allowable. This also holds for claims 8 and 9 directed to methods of manufacturing "aerosol containers filled" with aerosol preparations as defined in any of claims 1 to 7.

8. The Enlarged Board of Appeal has interpreted the provisions of Article 113(1) EPC concerning the right to be heard as meaning that a decision against a party which has been duly summoned but which fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings (see decision G 4/92, OJ EPO 1994, 149, Conclusion 1). Notwithstanding this, in its decision the Enlarged Board of Appeal clearly viewed the possibility of holding hearings in a party's absence, as provided for in Rule 71(2) EPC, in relation to the need for proper administration of justice, in the interests of which no party should be able to delay the issue of a decision by failing to appear at oral proceedings. This can only mean that parties to the proceedings must expect that, on the basis of the established and plainly relevant facts, any decision may go against them. It can further be inferred from this, in the board's opinion, that a decision against an absent party may be based on a modified request discussed for the first time during oral proceedings, at least if the stage reached is such that the absent - albeit duly summoned - party could have expected such a modified request to be filed and discussed and was aware from the proceedings to date of the actual bases on which it would be judged. Applying the principles elucidated above to the present case, the board's conclusions are the following:

8.1. First, in the appeal statement the appellant maintained its objections, inter alia, to the patentability of the subject-matter of claims 1 to 9 as granted. In these circumstances, it could legitimately have expected that the respondent would amend the patent and that the case would be discussed during the hearings before the board on the basis of a consequentially modified request.

8.2. Second, the extent of the patent was amended during the oral proceedings before the board in a restrictive way. This being the case, the appellant had in the course of the appeal proceedings sufficient opportunity to present in writing its comments on the subject-matter of virtually all remaining claims 1 to 9 forming the respondent's current request.

8.3. Thirdly, the decision to maintain the patent in amended form is entirely based on grounds, facts and evidence which were already known to the appellant and also the other opponents from the proceedings before the opposition division and which were again brought to the party's attention during the appeal proceedings. If they preferred not to attend the oral proceedings, they availed themselves of the opportunity to present their comments during the oral proceedings before the board.

8.4. On the basis of the above considerations, the board is of the opinion that, in the circumstances of the present case, considering and deciding in substance on the maintenance of the patent in amended form does not conflict with the conclusions of the Enlarged Board of Appeal in decision G 4/92 and does not contravene the appellant's and the other opponents' procedural rights as laid down in Article 113(1) EPC, in spite of their absence during oral proceedings.