T 0475/02 21-12-2006

Summary of Facts and Submissions

I. The appeal is against a decision of the Opposition Division to reject the opposition against European patent 0 665 324, which was granted on divisional application 95100251.8.

II. The divisional application, which was filed in respect of subject-matter of earlier application 88110929.2 (EP-A-0 307 564) filed on 8 July 1988 and claiming a priority date of 15 September 1987, comprised 12 claims. Independent claims 1, 3 and 6 read as follows:

"1. An aqueous composition that can be used to introduce into the surface of cellulose fabrics, localized areas of variation and color density which aqueous composition consists essentially of:

(a) a major proportion of water;

(b) at least about 20,000 international units of a cellulase enzyme composition per pound of fabric; and

(c) about 0 to 1,000 parts of an enzyme compatible surfactant per one million parts of aqueous composition."

"3. The composition of claim 1 wherein the surfactant is a nonionic surfactant, and is present at a concentration of 5 to 800 parts of surfactant per one million parts of aqueous composition."

"6. A solid concentrate composition that can be used in aqueous solution to form, in the surface of dyed cellulosic fabrics, localized areas of variations in color density through the removal of dye, which composition consists essentially of:

(a) about 25 to 40 wt-% of a cellulase enzyme composition;

(b) about 1 to 50 wt-% of an electrolyte; and

(c) about 20 to 60 wt-% of a builder or buffer salt.".

III. The patent as granted comprised 12 claims. Claims 1, 3 and 6 as granted read as follows:

"1. An aqueous composition that can be used to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which aqueous composition consists essentially of:

(a) a major proportion of water;

(b) at least 2,500 CMC units of a cellulase enzyme composition per liter of aqueous composition; and a non-zero amount of up to 1,000 parts of an enzyme compatible surfactant per one million parts of aqueous composition."

"3. The composition of claim 1 wherein the surfactant is a nonionic surfactant, and is present at a concentration of 5 to 800 parts of surfactant per one million parts of aqueous composition."

"6. A solid concentrate composition for the preparation of an aqueous treatment composition, which aqueous composition is used to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which composition consists essentially of:

(a) above 25 to 40 wt-% of a cellulase enzyme composition;

(b) 1 to 50wt-% of an electrolyte; and

(c) 20 to 60 wt-% of a builder or buffer salt."

IV. The patent had originally been opposed on the grounds: that its subject-matter extended beyond the content of the divisional application as filed or of the earlier application as filed (Article 100(c) EPC); that it did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC); and that the claimed subject-matter lacked novelty and an inventive step (Article 100(a) EPC) having regard to the following documents:

D1: Folkebladet of January 19, 1988;

D1a: English translation of D1;

D2: EP-A-0 220 016;

D3: US-A-4 435 307;

D4: US-A-4 443 355;

D5: US-A-4 661 289;

D6: WO-A-89/04862;

D7: GB-A-2 094 826;

D8: GB-A-2 095 275;

D9: Celluclast Product Sheets of NOVO.

V. In the decision under appeal, the opposition against the patent was rejected on the basis of reasoning which can be summarised as follows:

(a) Claims 1 and 3 fulfilled the requirements of Article 123(2) EPC and there was no reason to doubt that the patent in suit was also duly based on the earlier application as filed.

(b) The subject-matter of Claim 6 was disclosed in the patent in suit in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

(c) As regards novelty, the subject-matter of Claim 1 enjoyed the priority date of the patent in suit whereas that of Claim 6 did not. The only document cited against Claim 1 was D1, which however had been published after the priority date of the patent in suit and thus was not prior art against Claim 1. Hence, the subject-matter of Claim 1 was novel. The novelty of the subject-matter of Claim 6 over D1 was not contested. As regards the other documents, neither D4 nor any of D5 and D6 disclosed a solid concentrate composition consisting of above 25 to 40% of a cellulase. Furthermore, D6 did not disclose a concentration of calcium carbonate in the range of 1 to 50 wt% of the composition. These documents were thus not novelty destroying.

(d) As to inventive step, no document disclosed an aqueous composition with 2500 CMC units of cellulase enzyme. The production of a distressed appearance on cellulosic fabrics by a chemical process, apart from D1 which was not prior art against Claim 1, had not been disclosed in the prior art represented by any of D2, D3 and D5. As regards Claim 6, which concerned a concentrate composition containing active enzyme, it could not be seen why the skilled person starting from any of D4, D5 or D6 would arrive at a distinct concentrate as claimed in the patent in suit. Therefore, the compositions of Claims 1 and 6 were also non-obvious.

(e) In summary, the grounds of opposition did not prejudice maintenance of the patent as granted and the opposition was rejected.

VI. The opponents lodged an appeal against that decision and paid the appeal fee. In their statement setting out the grounds of appeal, the appellants maintained all of the invoked grounds of opposition. Then, in preparation for the oral proceedings, they enclosed a résumé of Dr Lars Anderson as well as further documents for consideration by the Board, as follows:

D10: EP-B-0 307 564 (earlier patent);

D11: Letter from Genencor's representative dated 21 November 1996 (in the opposition proceedings against the earlier patent);

D12: Letter from Genencor's representative dated 28 August 1998 (in the opposition proceedings against the earlier patent);

D13: Letter from Genencor's representative dated 25 February 1999 (in the opposition appeal proceedings against the earlier patent);

D14: Shoemaker & Brown, "Characterization of Endo-1,4-beta-D-Glucanases purified from Trichoderma Viride", Biochimica et Biophysica Acta, 528 (1978) 147-161;

D15: Eriksson & Hollmark, "Kinetic Studies of the Action of Cellulase upon Sodium Carboxymethyl Cellulose", in Archives of Biochemistry and Biophysics, 133, 233-237 (1969);

D16: Declaration of Niels Lange dated 17 November 2006;

D17: Castanon & Wilke, "Effects of the Surfactant Tween 80 on Enzymatic Hydrolysis of Newspaper", Biotechnology and Bioengineering, Vol. XXIII, 1365-1372 (1981);

D18: Statement by Dennis McEwan dated 27 August 1998 (D7 in Genencor's opposition against the earlier patent).

VII. In their response to the statement setting out the grounds of appeal, the patent proprietors (respondents) argued against the arguments of the appellants and enclosed an amended set of claims as Auxiliary Request (letter dated 24 March 2003). Then, in preparation for oral proceedings, the respondents enclosed further four sets of amended claims as Auxiliary Requests II to V (Letter dated 20 November 2006). Amended claims 1, 3 and 6 of the Auxiliary Request and of Auxiliary Requests II to V read as follows, respectively:

Auxiliary Request

"1. An aqueous composition that can be used to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which aqueous composition consists essentially of:

(a) a major proportion of water;

(b) at least 2,500 CMC units of a cellulsse [sic] enzyme composition per liter of aqueous composition; and 10 to 900 parts of an enzyme compatible surfactant per one million parts of aqueous composition."

"3. The composition of claim 1 wherein the surfactant is a nonionic surfactant, and is present at a concentration of 15 to 750 parts of surfactant per one million parts of aqueous composition."

Claim 6 is identical to Claim 6 as granted.

Auxiliary Request II

"1. An aqueous composition that can be used to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which aqueous composition consists essentially of:

(a) a major proportion of water;

(b) 2.500 CMC units to 30.000 CMC units of a cellulase enzyme composition per liter of aqueous composition; and 10 to 900 parts of an enzyme compatible surfactant per one million parts of aqueous composition."

"3. The composition of claim 1 wherein the surfactant is a nonionic surfactant, and is present at a concentration of 15 to 750 parts of surfactant per one million parts of aqueous composition and wherein the cellulase enzyme composition is present with 6.000-20.000 CMC units per liter of aqueous composition."

Claim 6 is identical to Claim 6 as granted.

Auxiliary Request III

Claims 1 and 3 are identical to Claims 1 and 3 according to Auxiliary Request II.

"6. A solid concentrate composition for the preparation of an aqueous treatment composition, which aqueous composition is used to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which composition consists essentially of:

(a) above 25 to 40 wt-% of a cellulase enzyme composition having 1.000 to 6.000 CMC units per gram of product (emphasis added by the Board);

(b) 1 to 50 wt-% of an electrolyte; and

(c) 20 to 60 wt-% of a builder or buffer salt."

Auxiliary Request IV

Claims 1 and 3 are identical to Claims 1 and 3 according to Auxiliary Request II.

"6. A solid concentrate composition for the preparation of an aqueous treatment composition, which aqueous composition is used to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which composition consists essentially of:

(a) above 25 to 40 wt-% of a cellulase enzyme composition; wherein the cellulase used is a fungal cellulase and the builder salt is a phosphate salt and wherein the cellulase is present in the concentrate at a concentration of greater than 20,000 units per kg of concentrate and the phosphate salt comprises an alkali metal salt of an orthophosphate, a pyrophosphate, a tripolyphosphate, a metaphosphate, or mixtures thereof (emphasis added by the Board),

(b) 1 to 50 wt-% of an electrolyte; and

(c) 20 to 60 wt-% of a builder or buffer salt."

Auxiliary Request V

Claims 1 and 3 are identical to Claims 1 and 3 according to Auxiliary Request II. Claim 6 and its dependent claims have been deleted.

VIII. In a communication in preparation for oral proceedings, the Board pointed out that since the appeal concerned the rejection of an opposition, the relevant questions concerning whether the text as granted or as proposed for maintenance in modified form was allowable, were to be decided by reference to Article 100(c) EPC.

IX. Oral proceedings were held on 20 December 2006. After a discussion of the subject-matter claimed in the Main Request, in the Auxiliary Request and in Auxiliary Requests II to V, the respondents submitted Auxiliary Request VI. The sole Claim of that request read as follows:

Auxiliary Request VI

"1. Use of an aqueous composition to form, in unsewn dyed cellulosic fabric or a newly manufactured garment made of a dyed cellulosic fabric, a distressed appearance substantially the same as that produced by conventional pumice stone processing, which aqueous composition consists essentially of:

(a) a major proportion of water;

(b) 2,500 to 30.000 CMC units of a cellulase enzyme composition per liter of aqueous composition; and 10 to 900 parts of an enzyme compatible surfactant per one million parts of aqueous composition.".

X. The arguments of the appellants that are relevant to the present case can be summarised as follows:

Main request (Claims as granted)

Opposition grounds-extension of subject-matter

Although the description in the divisional application as filed was identical to that of the earlier application, its claims were different, so that the two applications were materially different. Hence, the amendments to the claims carried out during the examination proceedings should have been based on both the divisional and the earlier applications. Such was not the case and a number of objections against the claims of the patent granted on the divisional application arose, inter alia as follows:

Claim 6

Claim 6 as granted had no basis in the divisional application as filed nor in the earlier application. The feature "above 25 to 40 wt-% of a cellulase enzyme composition" in Claim 6 as granted had no basis in the feature "about 25 to 40 wt-% of a cellulase enzyme composition" in Claim 6 as filed, in which the latter feature was related to a different "limitation to being suitable for a particular purpose" (herein after, "limitation by purpose") than that in Claim 6 as granted. In particular, the term as filed "about 25" had a different meaning than that of the term as granted "above 25". The term as filed encompassed all of the values about 25, i.e. lower than, equal to or greater than 25, whereas all of the values lower than and equal to 25 were now excluded, without there being any basis in the application as filed for that deletion or for its implications. Hence, the ground of opposition under Article 100(c) EPC invoked against Claim 6 as granted prejudiced the maintenance of the patent as granted.

Auxiliary Request and Auxiliary Requests II to IV

Since Claim 6 according to each of Auxiliary Request and Auxiliary Requests II to IV contained the feature "above 25 to 40 wt-% of a cellulase enzyme composition", as defined in Claim 6 as granted (Main Request), the conclusion drawn for the Main Request similarly applied to each of Auxiliary Request and Auxiliary Requests II to IV.

Auxiliary Request V

Amendments

Claim 1

Claim 1 according to Auxiliary Request V contained added subject-matter, for the following reasons:

(a) The "limitation by purpose" features, which merely defined a suitability for a particular use of the composition of Claim 1 but were nevertheless considered by the respondents as a distinction over the prior art, had no basis in the application as filed. In particular, Claim 1 as filed concerned a composition which could be suitable for a different purpose.

(b) The ranges of the concentrations for enzyme and surfactant defined in Claim 1 could not be based on Table 1 of the divisional application as filed nor on Claim 1 as filed. Table 1 was headed "aqueous treating compositions" and thus referred to any aqueous treating compositions, whereas Claim 1 only referred to those specific compositions used for introducing local variations of dyes in given amounts of unsewn fabric or new garment to obtain a distressed appearance. Thus, Table 1 concerned a different technical teaching than Claim 1 as filed, which fact was admitted by the respondents during the examination proceedings. Further, Table 1 listed a precise number of ingredients and could only support compositions containing those ingredients. Instead, the composition of Claim 1, despite the expression "consisting essentially of", could include further ingredients, as was also apparent from the wording of Claims 6 and 9 as granted, where the same expression was used. Furthermore, in Table 1 the term "surfactant" was generic, whereas in Claim 1 the surfactant should be "enzyme compatible" and the description of the divisional application made clear that not all of the surfactants were enzyme compatible.

(c) The enzyme activity defined in Claim 1, expressed in terms of units per litre of composition, had no basis in the application as filed. In fact, in Claim 1 as filed the activity was expressed in terms of international units per pound of fabric.

(d) The lack of basis for Claim 1 was essentially due to the fact that the definition of Claim 1 of the earlier application as filed, which could have supported the present definition, was no longer present in the divisional application as filed.

Claim 3

The objections raised against Claim 1 that the ranges of the concentrations for enzyme and surfactant were not based on Table 1 as filed, applied mutatis mutandis to the ranges of the concentrations for enzyme and surfactant as defined in Claim 3 of Auxiliary Request V.

Insufficiency of disclosure

During the oral proceedings, the appellants sought to extend the ground of insufficiency of disclosure initially argued against Claim 6 as granted, no longer present, against the subject-matter of Claim 1 of Auxiliary Request V, on the basis of arguments put forward in the opposition proceedings against the parent patent.

Novelty

The appellants no longer voiced any argument on novelty after the respondents had confirmed during the oral proceedings that commercially available enzyme preparations were used to formulate the claimed compositions, whose activity was expressed in terms of international units. Hence, the CMC units in Claim 1 in suit were international units, in line with IUPAC International Standard published in 1987 (infra) which was common general knowledge, and consistent with the view expressed in the previous decision on the earlier patent's case T 844/92 (not published in the OJ EPO).

Inventive step

Closest prior art

Since Claim 1 concerned a composition of matter per se, the "limitation by purpose" defined in Claim 1 only required the composition to be suitable for the purpose stated in the claim. Hence, any known composition that contained the essential ingredients represented a suitable starting point. D2 not only related to the same technical field as the patent in suit (treatment of dyed cellulosic fabrics) but also disclosed the most technical feature in common with Claim 1, in particular an amount of cellulase as high as up to 10000 units and the possibility of adding a surfactant. Thus, D2 represented the best starting point.

Problem and Solution

The application as filed concerned enzyme compositions that did not necessarily contain a surfactant. In fact, the exemplified compositions did not contain any surfactants. Since there was no evidence in the application as filed that the presence of a surfactant was critical, and since that criticality had never been shown by comparative tests, no particular effect could be linked to the presence of a surfactant beyond its expected function. Thus, the problem to be solved was to provide a further composition to those exemplified in D2. The problem formulated by the respondents was not appropriate, because it related to the use of the composition which use was not the subject of the claim.

Obviousness

D2 explicitly mentioned that surfactants were possible additives of its enzyme compositions. That a surfactant improved the wettability of a fabric was generally known. Also, it was known from D17 that some surfactants were compatible (i.e. could be used together) with enzyme compositions and indeed increased their cellulolytic activity, e.g. with an addition of 0.1% of nonionic surfactant. The fact that D17 concerned the treatment of newspapers was not relevant, because Claim 1 in suit concerned a composition of matter which degraded the cellulose and the composition of D17 did the same, in exactly the same way, using the same enzymes. Thus, the mention of a surfactant in D2 and/or the incitation to use a surfactant in an enzyme composition in D17 would have led the skilled person toward a composition as claimed, which consequently was obvious and did not involve an inventive step. There was no doubt that such a composition would also be suitable for attaining a stone washed appearance on denim fabrics, if so used.

For those reasons, the patent in suit should not be maintained in the amended form of Auxiliary Request V.

Auxiliary Request VI

Auxiliary Request VI was filed at a very late stage of the oral proceedings before the Board. It had a scope which was substantially identical to that of Claim 1 of the earlier patent granted on an earlier application out of which the application on which the present patent had been granted had been divided out. The implications, such as invalidity on the ground of double patenting, could not be assessed quickly. Since Claim 1 concerned a use of a composition but did not define any use steps, objections were likely also to arise against the amendment under Article 123(2) EPC. Further, since Claim 1 contained functional definitions having a relative meaning, also objections under Articles 83, 84 and 56 EPC arose. In particular, the "limitation by purpose" features, which were non limiting for Claim 1 concerning a composition of matter, now restricted the use, and this required a deeper analysis. Despite the legal uncertainty which was caused by the late filing of Auxiliary Request VI, the case, if the request was admitted, should however be considered by the Board, provided that also the further items of evidence D10 to D18 submitted by the appellants be taken into account.

XI. The arguments of the respondents that are relevant to the present decision can be summarised as follows:

Main Request

Opposition grounds - extension of subject-matter

Claim 6

The term "about 25 wt-%" for the lower limit of the cellulase enzyme composition defined in Claim 6 as filed stood for a lower limit of precisely 25 wt-% or slightly above or below this precise value, and hence also disclosed a lower limit above 25 wt-%. The term in Claim 6 as granted "above 25 wt-%" only cut out the limit value being lower than 25 wt-% or being 25 wt-% exactly, thus leaving the initially disclosed lower limit value above 25 wt-%. Therefore, the amendment was an allowable restriction.

Auxiliary Request and Auxiliary Requests II to IV

Claim 6

Claim 6 according to each of the Auxiliary Request and Auxiliary Requests II to IV, which contained the feature "above 25 to 40 wt-% of a cellulase enzyme composition" as did Claim 6 of the Main Request, was allowable for the same reasons given in support of Claim 6 as granted (Main Request).

Auxiliary Request V

Amendments

Claim 1

Claim 1 of Auxiliary Request V was identical to Claim 1 of Auxiliary Request II. The feature concerning a limitation by purpose in Claim 1 according to Auxiliary Request V was also present in Claim 1 as granted. That limitation by purpose was based on the entire disclosure of the divisional application as filed, in particular on the disclosure that a "distressed appearance" was indistinguishable from a "stone washed appearance", and that a "stone washed appearance" was due to local variations of colour on dyed cellulosic fabrics, clothing items and garments.

Claim 1 as filed in conjunction with Table 1 as filed, if read within the context of the entire disclosure of the divisional application as filed, formed a basis for the ranges of the concentrations for the enzyme and the surfactant defined in Claim 1 according to Auxiliary Request V. Since the expression "consisting essentially of" was already present in Claim 1 as filed, this expression did not involve an amendment whose compliance with Article 84 EPC would be open for consideration.

As regards the meaning of the CMC units defined in Claim 1, they were international units. This was apparent from the divisional application as filed, if read by a skilled person using common general knowledge. At the oral proceedings before the Board the respondents mentioned that the common general knowledge included the standard definition and procedure for the measurement of cellulase activities described in a standard issued by the International Union of Pure and Applied Chemistry (IUPAC) in 1987 ("Measurements of Cellulase Activities" by T.K. Ghose, in Pure & Appl. Chem., Vol. 59, No. 2, pp. 257-268, 1987). That the CMC units were international units had also been acknowledged in the decision concerning the earlier application's case T 844/92 (not published in the OJ EPO).

Claim 3

The arguments in support of the amendments to the ranges of the concentrations for the enzyme and the surfactant in Claim 1 applied mutatis mutandis to Claim 3, since the more limited ranges for the concentrations of the enzyme and the surfactant defined in the latter were also based on Table 1 of the divisional application as filed.

Insufficiency of disclosure

The respondents did not consent to the extension to Claim 1 of the ground of opposition invoked under Article 100(b) EPC only against Claim 6 as granted.

Novelty

That the subject-matter of Claim 1 was novel over the cited documents was no longer disputed by the appellants during the oral proceedings before the Board.

Inventive step

Closest prior art

It was agreed that while the composition defined in Claim 1 needed to be suitable for the purpose as defined it could also be useful for other purposes. Nevertheless, the problem-solution approach should be applied as usual, taking into account similarity of purpose and effect, and whether the technical fields were closely related. Since D2 concerned a clarification agent to renew the colour of an old, dyed cellulosic fabric without whitening, i.e. contrary to what was done in the patent in suit, D2 could not represent the closest prior art for the claimed subject-matter. This had been acknowledged in the decision under appeal. Hence, the closest prior art was the stone washing technology discussed in the patent in suit.

Problem and Solution

The problem to be solved was to provide a chemical composition that avoided the necessity of using pumice stones, and yet produced a stone wash look. Since the presence of the surfactant enhanced the overall activity of the enzyme, the problem having regard to D2 was to provide an alternative composition having enhanced activity.

Non-obviousness

D2 suggested that almost anything could be added to the exemplified compositions, not only a surfactant. The effect of the surfactant on the enzyme composition was not shown in D2. Although D17 showed the advantages of using enzymes and surfactants, that suggestion concerned the treatment of newspapers and hence a different problem. Thus, D17 would not have been combined with D2. Further, the amount of surfactant mentioned in D17 was higher than that defined in present Claim 1. However, even starting from D2 and seeking to combine it with D17, there was no pointer in that prior art that would have led the skilled person towards a composition as claimed.

Auxiliary Request VI

Auxiliary Request VI had been submitted only at the oral proceedings because there had been confidence in the allowability of at least Auxiliary Request V.

Auxiliary Request VI consisted of only one use claim, which was similar to method Claim 1 of the parent patent, albeit with differences relating to the limits of enzymes and surfactants as well as to the absence of some steps, such as agitation. Hence, no double patenting could be objected to.

Since it was allowable to revert from a product claim to the use thereof for a particular effect without contravening Article 123(3) EPC, Auxiliary Request VI was allowable and should be considered by the Board, without remittal of the case.

The claimed use was novel and not obvious over the prior art.

XII. The appellants (opponents) requested that the decision under appeal be set aside and that the European patent be revoked.

XIII. The respondents (patent proprietors) requested that the appeal be dismissed (Main Request) or, alternatively, that the patent be maintained on the basis of any one of the auxiliary requests filed on 24 March 2003 (Auxiliary Request), 20 November 2006 (Auxiliary Requests II to V) and during the oral proceedings (Auxiliary Request VI).