T 0229/07 (Hydroalcoholic compositions/3M) 19-01-2010

Reasons for the Decision

1. The appeal is admissible.

2. The claims submitted during the oral proceedings before the Board

2.1 These claims of the Main Request and the First to Fifth Auxiliary Requests differ from the six sets of claims filed on 14 December 2007 in response to the statement setting out the grounds for appeal only in that the following two features were taken from the description into the independent claims:

The method of measuring the viscosity and the requirement that "if the surfactants are comprised of a mixture of chain lengths, the chain length specified herein refers to the number average chain length" (see point V above).

2.2 In said response filed on 14 December 2007 the Respondent read these two features into the claims when assessing novelty (see paragraph 5.1 on pages 6-8). In its communication annexed to the summons to oral proceedings filed on 17 September 2009, the Board expressed its doubt whether the two features had any limiting effect on the claims as long as they did not form part of the claims (see point VIII above). In its letter dated 19 November 2009, the Respondent offered to insert the two features into the claims and indicated precisely the wording of these insertions (see the penultimate paragraph in section 2.1.1 and the second paragraph in section 2.1.2). The claims amended accordingly were submitted during the oral proceedings on 19 January 2010.

2.3 Hence, the amendments were an appropriate reaction to the communication of the Board. They were not late filed as their wording was filed about two months after said communication was received. The Appellant had had ample time to prepare his arguments within the two months from the filing of the wording of the amendments to the date of the oral proceedings. Therefore, the Board admitted the claims of the Main Request and the First to Fifth Auxiliary Requests presented during the oral proceedings into the proceedings (see Article 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA), Supplement to OJ EPO 1/2009, 41).

3. Document (D6)

3.1 Document (D6) was first cited during the oral proceedings before the opposition division and was not admitted into the proceedings.

3.2 The Appellant was of the opinion that this document already formed part of the proceedings as it is cited in the patent in suit (see decision T 541/98, cited as (D7)). In the decision (D7), a document - a reference to which was inserted into the description on request of the examining division and which was considered to represent the closest prior art - was deemed to form part of the opposition proceedings (see point 2.1 of the reasons). In contrast to this, document (D6) is cited as one of seven documents in the application as filed in a way that it is not clear whether it might be the closest prior art (see page 2, lines 20-24). The present situation being different from that of decision (D7), the Board sees no reason to assume that document (D6) already formed part of the proceedings.

3.3 Hence, it was within the discretion of the Board to decide whether or not to admit document (D6) to the proceedings (see Article 12(4) RPBA).

One of the possible criteria which might be taken into account when exercising this discretion is the relevance of the document. The patent in suit relates "to compositions useful as surgical hand preparations and antimicrobial hand lotions." (see its paragraph [0001]). Whereas neither of the documents (D1) to (D5) share this objective with the patent in suit, document (D6) does (see (D6), column 1, lines 6-9: "This invention relates to an antimicrobial alcoholic gel composition for disinfecting the hands ... ."). Hence, document (D6) is more relevant than the documents previously cited. Therefore, the Board admitted it into the proceedings.

4. Articles 100(c) and 123 EPC

4.1 Main Request

4.1.1 The three alternative conditional features of the polymer mentioned under point VI.(c)(i) above are disclosed in the applications as originally filed as follows:

- "... if the polymer is basic the polymer comprises ..." on page 11, lines 16-18;

- "... if the polymer is permanently charged the polymer comprises ..." on page 9, lines 15-18 and 29-30; and

- "... if the polymer is acidic the polymer

comprises ..." on page 12, lines 3-5.

4.1.2 The Appellant argued that the application as originally filed disclosed that not only the polymer and the surfactant were to be chosen such that "the composition does not separate more than 10% by volume after centrifugation at 1545 x g for 30 minutes " (see under point VI(c)(ii) above). It referred to page 26, lines 9-11 of the application as filed which reads as follows: "Although a thickener system is responsible for the stability and overall consistency ..., emollients may also affect the viscosity, stability, ...". It concluded that also the emollient was responsible for the stability of the composition. This arguments does not take into account that emollients are only optional ingredients (see page 22, lines 14-18 of the application as filed). Hence, the application as filed does disclose that primarily the thickener system, namely the amounts of polymer and surfactant, are to be selected such that the conditions (c) of present claim 1 are met.

4.1.3 The minimum of 20 carbon atoms for the aralkyl and aralkenyl groups in feature (a) of claim 1 as granted is disclosed in the application as filed on page 13, line 7 ("...; or an aralkyl or aralkenyl group of at least 20 carbon atoms, ...") (see under point VI(c)(iii) above).

4.1.4 The method of determining the viscosity now incorporated into claim 1 is disclosed on page 35, line 26, to page 36, line 14, of the application as filed. The application as filed does not indicate any other method of measurement for the viscosity. Hence, the fact that this disclosure refers to "the following Examples (except where indicated)" does not limit this disclosure to special embodiments of the original disclosure. Therefore, the Board does not follow the argument of the Appellant summarised under point VI(c)(iv) above.

4.1.5 The remaining features of claim 1 are disclosed in the application as originally filed in claim 1, on page 7, lines 14-16 ("C1 to C4-alcohol"), in claim 7 (the formula of the surfactant), page 15, lines 8-13 (average chain length of the surfactants), in claim 8 (condition (a)), on page 13, lines 11-21 (condition (b) and in original claim 18 (condition (c)(i)).

4.1.6 The additional features of claims 2-19 are disclosed in original claims 2-6, 12-17, 19, 21, and 22, on page 16, lines 1-7 of the original description, and in original claims 23-25.

4.1.7 Furthermore, the amendments with respect to the claims as granted, namely the insertions mentioned under point 2.1 above, restrict the extent of protection.

4.1.8 Hence, the claims of the Main Request meet the requirements under Article 123 EPC and no grounds under Article 100(c) EPC prejudice the maintenance of the patent based on the Main Request.

4.2 First Auxiliary Request

The same holds true for the claims of this request which only differ from those of the Main Request in that granted claim 4 (which has a basis in claim 4 as originally filed) was deleted and its additional feature incorporated in claims 1 and 12 (see under point V above).

5. Article 84 EPC

The requirement of clarity of the claims cannot be subsumed under any ground for opposition (see Article 100 EPC). In opposition appeal proceedings a lack of clarity thus may only prejudice the maintenance of the patent if it is caused by amendments with respect to the claims as granted, namely if such amendments render the claims less clear.

5.1 The claims as granted specify the method for measuring the viscosity only by a temperature of 23ºC. The present claims give further details as to the type of viscometer to be used and to the method of measurement. The Appellant criticised that these details were not clear (see point VI(d) above). Whether this is true or not is not relevant since they further specify the method of measurement, thus rendering the claims clearer than the ones as granted.

5.2 The Appellant argued that the term "specified herein" rendered the claims obscure because it was not clear to which definition said term referred (see point VI(d) above).

This term forms parts of the feature "wherein if the surfactants are comprised of a mixture of chain lengths, the chain length specified herein refers to the number average chain length" in the definition (a) of the hydrophobic group of the surfactant in claim 1 of both the Main and the First Auxiliary Requests (see point V above).

In this context it is evident that "the chain length specified herein" refers the chain length of the hydrophobic group R in the surfactant of the formula (r)a(l)b.

For this reason, the term "specified herein" cannot render the claims unclear in this context.

5.3 Hence, the amendments made in the claims after grant do not render the claims unclear.

6. Article 100(b) EPC

The Appellant's arguments as to this ground for opposition are summarised under point VI(e) above.

6.1 Whether or not a thickening complex can be obtained

when combining an ionic surfactant and an ionisable polymer is not relevant, as present claim 1 of both the Main and the First Auxiliary Requests excludes such a combination by requiring that "at least one oppositely charged surfactant" be used (compare page 21, line 8 of the patent in suit). That means that an ionic surfactant is only to be combined with an oppositely charged polymer, namely one which is ionic.

6.2 The method for measuring the viscosity is specified in paragraphs [0099] and [0100] of the patent in suit (see the respective definition at the end of claim 1 of the Main Request quoted under point V above). It determines the temperature (23ºC), the viscometer (Brookfield LVDV-I**(+) equipped with a certain heliopath), the spindles to be used (see the table) and the moment at which the viscosity is to be determined ("as the highest relatively stable reading achieved on the first path the spindle traversed using the heliopath adapter").

The Appellant has shown in the test report (D9) that the viscosities of thickened hydroalcoholic compositions can be determined by this method (see the first sentence on page 5: "Beide Muster sind messbar ..."). Although the individual viscometer readings vary to some extent (see the first table on page 6) the decrease of the average values with time is small (see table 1 on page 5; 0.5% decrease for sample V and 2.9% decrease for sample W from 5 to 360 seconds). Hence, the viscosity was determined according to the method disclosed in the patent in suit with acceptable accuracy by Mr Gehm, the author of document (D9) who is an expert in the field of rheology. This fact does not exclude that the person skilled in the art may have less expertise in measuring viscosity than Mr Gehm and may not be able to determine the viscosity of the claimed composition with an acceptable accuracy. This, however, was not shown by the Appellant.

6.3 Hence, no grounds under Article 100(b) EPC prejudice the maintenance of the patent.

7. Novelty

Document (D6) relates to an "antimicrobial alcoholic gel composition for disinfecting hands ..." (see column 1, lines 6-9). The document discloses in example 19 a composition containing 62 parts by weight of isopropanol, 27.57 parts by weight of water and minor amounts of

ACRITAMER 940 (an acid functional polymer; see column 8, lines 13-16), ETHOMEEN C/25 (a polyoxyethylene cocoamine; see column 8, lines 21-22) and of JAGUAR HP-120 (a hydroxypropyl guar gum, which is an additional thickener; see column 8, lines 23-24 and column 7, lines 25-26).

The Appellant has shown in the test reports (D8) and (D9) that the composition according to example 19 of (D6) meets the viscosity requirements measured at a spindle speed of 6 rpm and the stability requirements of present claim 1 of both the Main and the First Auxiliary Request.

The Respondent argued that a spindle speed of 6 rpm was higher than the lowest possible speed to be used according to the claim and that such a high speed resulted in false readings due to shear thinning. If this is true then the viscosities determined at 6 rpm are too low so that the ones determined according to claim 1 should be even higher, namely also above the minimum of 4,000 cp required in claim 1.

The subject-matter of claim 1 of the Main Request and the First Auxiliary Requests differs from the disclosure in said example in that the surfactant ETHOMEEN C/25 has an alkyl group with an average chain length of less than 16 carbon atoms, contrary to the requirements of the claim (see documents (D10) and (D11)).

The disclosure of a document is not limited to its specific examples but comprises the general teaching of the entire document (see the decision T 12/81, OJ EPO 1982, 296, point 7 of the reasons). However, this does not mean that the disclosure of a document comprises all the combinations of all the components disclosed therein.

Document (D6) teaches that the acidic polymer is to be neutralised either by compounds of the formula HO(CmH2m)2NH (where m has a value of from 2 to 3) or by those of the formula H(OCH2CH2)xRN-(CH2CH2)yH, where R is a hydrocarbon radical having from 10 to 18 carbon atoms (see column 2, lines 61-67). The only preferred neutralisation agent is the one of the formula (CH3CH(OH)CH2)2NH (namely diisopropanolamine; see column 2, line 68 to column 3, line 1 and examples 1-18 and 21). Therefore, there is no direct and unambiguous disclosure in this document of a composition according to example 19 where the surfactant ETHOMEEN C/25 is replaced by a less preferred one of the formula H(OCH2CH2)xRN-(CH2CH2)yH, where R is a hydrophobic group as defined in section (a) of present claim 1 of both the Main and the First Auxiliary Requests. Hence, the subject-matter of these claims 1 is novel. The same holds for

- claims 2-12 of the Main Request and for

claims 2-11 of the First Auxiliary Request which are dependent from claim 1,

- claim 13 of the Main Request and claim 12 of the

First Auxiliary Request which are directed to the product obtainable by combining the components as defined in claim 1,

- claims 14-17 of the Main Request which are

dependent from claim 13, and to claims 13 to 16 of the First Auxiliary Request which are dependent from claim 12, and, finally, for

- claims 18 and 19 of the Main Request and claims 17

and 18 of the First Auxiliary Request which are directed to processes for making the compositions of claim 1.

Hence, the subject-matter of the claims of the Main Request and of the First Auxilary Request is novel.

8. Inventive step

8.1 The closest prior art

The patent in suit relates "to compositions useful as surgical hand preparations and antimicrobial hand lotions." (see its paragraph [0001]). Whereas neither of the documents (D1) to (D5) share this objective with the patent in suit, document (D6) does (see (D6), column 1, lines 6-9: "This invention relates to an antimicrobial alcoholic gel composition for disinfecting the hands ... ."). As the closest state of the art is normally a prior art document disclosing subject-matter with the same objectives as the claimed invention, document (D6) is considered as the closest prior art.

8.2 The problem solved

The Respondent addressed the different advantages of the present composition described in the patent in suit (see the second paragraph under point VII above). However, it admitted that no experimental or other evidence showed that these advantages were indeed achieved in view of document (D6). Hence, the problem to be solved can only be considered as to provide alternative thickened hydroalcoholic compositions suitable for the disinfection of hands. Examples 1-3 of the patent in suit show that this problem was indeed solved.

8.3 The solution

8.3.1 Main Request

When looking for alternative hydroalcoholic compositions it was obvious to replace one constituant of the composition of example 19 of document (D6) by another disclosed in this document to be equally well suitable for the given purpose. Hence it was obvious to the person skilled in the art to replace the surfactant ETHOMEEN C/25 used to neutralise the acidic polymer ACRITAMER 940 in this example by any other neutralising agent disclosed in column 4, line 46, to column 5, line 6. This includes the polyoxyethylene octadecylamines listed in column 4, lines 61-66. When doing this, the person skilled in the art would have acted according to claim 1 of the Main Request. Hence the subject-matter of this claim does not involve an inventive step.

Due to the fact that the Board may only decide on a request as a whole, the Main Request is rejected.

8.3.2 First Auxiliary Request

Claim 1 of this request differs from claim 1 of the Main Request in that the former additionally requires that the thickener system comprises a surfactant that is solid at ambient temperature. Neither does document (D6) mention that a surfactant in the thickener system might be solid at ambient temperature, nor did the Appellant provide any evidence showing that any of the specific surfactants disclosed in this document for this purpose was solid at ambient temperature or that any other document recommended the use of such solid surfactants for said purpose. Hence, the use of such solid surfactants in the compositions according to present claim 1 cannot be deemed to be obvious to the person skilled in the art.

Therefore, the subject-matter of product claim 1 of the First Auxiliary Request involves an inventive step. The same holds for

- claims 2-11 which are dependent from claim 1,

- claim 12 which is directed to the product obtainable by combining the components as defined in claim 1,

- claims 13 to 16 which are dependent from claim 12, and, finally, for

- claims 17 and 18 which are directed to processes

for making the compositions of claim 1.

Hence, the subject-matter of the claims of the First Auxiliary Request involves an inventive step.

9. Neither did the Appellant claim that the claims of the First Auxiliary Request contravened the requirement of any other provision of the EPC nor has the Board found any reason to do so.

Hence, the claims of the First Auxiliary Request meet the requirements of the EPC.

10. Therefore, there is no reason to deal with the remaining auxiliary requests.

11. Remittal

The claims of the First Auxiliary Request contain various and lengthy amendments. In order to ensure that the description be properly adapted under Rule 42(1)(c) EPC to the claims thus amended, the Board exercises its discretion under Article 111(1) EPC by remitting the case to the department of first instance.