T 1144/08 06-03-2009

Reasons for the Decision

1. The appeal is admissible.

Main request

2. Article 123(2) EPC

2.1 According to established jurisprudence of the boards of appeal, if a claim is to be restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment might only be justified in the absence of any clearly recognisable functional or structural relationship among said features (see "Case Law of the Boards of Appeal of the European Patent Office", 5th edition, 2006, Section III-A, 1.1).

2.2 The composition of claim 1 as granted is required to contain from 0.01 to 2.0 wt.% of a compound of the formula as shown. In original claim 1, in that formula R was defined as a substituted or unsubstituted alkyl or alkenyl group having from 11 to 35 carbon atoms, whereas in claim 1 as granted that definition had been amended to a substituted or unsubstituted alkyl or alkenyl group having from 19 to 35 carbon atoms.

2.3 For the basis of that amendment the appellant referred to original page 13, lines 1 to 6, of the application as originally filed, which reads as follows:

"In a preferred embodiment, the quaternary ammonium compound I has the structure shown hereinabove wherein R is an alkyl group having from about 17 to about 21 carbon atoms, preferably from about 19 carbon atoms to about 21 carbon atoms, and more preferably about 21 carbon atoms, or mixtures thereof; X is an N-R5 group; R5 is H and the other structural elements are as hereinabove defined."

That passage describes a preferred embodiment of the formula of claim 1, in which the variables R, X and R5 are further specified. Since those specifications are only separated by semicolons, there can be no doubt that, on a linguistic basis at least, the further specification of R should be read together with the further specification of the other variables X and R5, also because there is no indication that all the variables could be read independently. The legal and factual situation is no different from that in T 1067/97 of 4 October 2000, cited by the appellants, in which the amendment was not allowed.

2.4 The disclosure on original page 26, lines 9 to 15, cannot change that view:

"The data indicate the excellent detangling ability of the compositions of the invention. The data also suggest that the compositions of Examples 1 and 2 incorporating the quaternary ammonium compounds behentrimonium methosulfate and behenamidopropyl hydroxyethyl dimonium chloride having the longer C22 groups are more effective at detangling hair than other compositions comprising species having shorter hydrocarbon chains, i.e., stearalkonium chloride or dimethyl dialkyl (C14-C18) ammonium chloride."

In that passage, clear reference is made to the compositions of examples 1 and 2. Any conclusion drawn on that basis can only relate to those very specific compositions. For that reason, the appellant's argument that, based on that passage, it was clear in general that longer chains were favourable over shorter chains and hence the higher number of carbon atoms for R were to be read independent from the other variables in the formula, cannot be followed, as it amounts to an extrapolation having no basis in what is actually said. Thus taking into account both this passage and the passage on page 13 still provides no justification for the amendment made in claim 1 as granted which seeks to pick out a value for the lower limit of R without introducing the other restrictions of the upper limit of R and the meaning of X and R5 which were associated with this lower limit of R.

2.5 Compared to claim 1 as filed, amendments made to arrive at claim 1 as granted concern one compound having various possibilities for the groups present in that compound, which groups form part of the one entity that is the compound; this is contrary to the situation in T 0201/83 ((OJ 1984, 481), where amounts were taken from the examples but the identity of the ingredients remained the same; T 0068/99 of 12 June 2003, where the associated parts of a laminate structure remained together also after the amendment; and in T 0461/05 (supra), where the general as well as the more specific embodiments concerned several physically separable parts.

Therefore, the skilled person could not recognize without any doubt that R5 was not closely related to the other variables and could be applied directly and unambiguously to the more general context of the original formula, as was also the case on the facts in T 0962/98 of 15 January 2004, also cited by the appellants.

2.6 Finally, the Board notes that the passage on page 13 does not mention the possibility of R being an alkenyl group having from 19 to 35 carbon atoms, which is nevertheless included in claim 1 as granted and for which the passage on page 13 hence does not provide a basis anyway.

2.7 For the reasons above, claim 1 as granted does not comply with the requirements of Article 123(2) EPC.

Auxiliary Request I

3. Claim 1 of Auxiliary Request I contains two definitions for the meaning of R: on the one hand it should be a substituted or unsubstituted alkyl or alkenyl group having from 11 to 35 carbon atoms, on the other hand it has to be an alkyl group having from 19 to 21 carbon atoms or mixtures thereof.

3.1 The appellants explained that the two definitions were to be seen as two distinct features, the first definition defining the amount of carbon atoms for R that could be present in the compound of formula (i), and the second specifying which members of the group to select.

However, if R can only be an alkyl of 19 to 21 carbon atoms according to the second definition, which was obligatory according to the appellant, it is unclear what meaning can be attributed to it still having 11 to 35 carbon atoms or being an alkenyl group, according to the first definition.

Therefore the claim as a whole is unclear and Article 84 is not complied with.

4. For that reason, Auxiliary Request I cannot be allowed.

Auxiliary Request Ib

5. The wording of claim 1 of Auxiliary Request Ib is essentially the result of rewriting granted dependent claim 3 as an independent claim. Although the request as such was filed at a very late stage of the proceedings, the respondents had to expect that the appellants might seek to fall back on other claims as granted. Therefore, the Board is prepared to exercise its discretion in favour of the admission of this Auxiliary Request Ib into the proceedings.

5.1 The definition that "R is an alkyl group having from 19 to 21 carbon atoms or mixtures thereof" for the quaternary ammonium compound A in present claim 1 finds its basis in claim 3 as originally filed, which is identical to claim 3 as granted, and also has a basis in lines 18 to 23 of original page 14.

5.2 Whereas claims 3 as originally filed and as granted refer to the possibility of R standing for a mixture of groups and thus component A containing this mixture also being a mixture, neither claim 1 as filed nor claim 1 as granted referred explicitly to such a mixture. The skilled reader would thus refer to the description to find out whether there is any real discrepancy between claims 1 as filed and granted on the one hand and claims 3 as filed and granted on the other hand as regards such mixtures. Paragraph [0034] in the patent as granted (corresponding to page 12, lines 16 to 21 in the application as originally filed) reads:

"It is well known in the art that long chain functional hydrocarbons are materials that occur in nature as mixtures of varying chain length. Accordingly, in the case of refined materials, R may represent a group having a single chain length. Alternatively, in the case of less refined materials, R may represent a material having a mixture of different chain lengths within the broadest prescribed range."

5.3 This cited passage shows that both claims 1 and 3 as granted were to be interpreted as covering cases where R represents a material having a mixture of different chain lengths within the broadest prescribed range, and that the claim 1 of this request merely restricts the claim 1 as granted to require the allowed range of R to be the same narrower range already specified in claim 3 as filed and granted.

6. Claim 1 as granted took the form "A composition comprising, based on the weight of the composition: A. from 0.01 percent to 2.0 percent of a first quaternary ammonium compound of the formula [as specified] and B. from 0.01 percent to 2.0 percent of a silicone compound selected [as specified]." Thus the claim left the purpose of the composition and between 96 to 99.98 percent of its components unspecified. Where "comprising" appears in a claim, this is to indicate what must be present and not to indicate what should not be present. The Board regards the normal meaning of the words used for features A. and B. as merely defining components which must be present, without imposing any limitation on what the 96 to 99.98 percent of unspecified components might be, and adopts this as the correct construction of the claim. Therefore, provided something with a single value for the number of carbon atoms of R or with mixed values for the number of carbon atoms of R can be identified as present and satisfying feature A., the presence of further compounds with different R is irrelevant as those could be present in the unspecified part of the composition.

6.1 The appellants contended for a different construction of at least feature A., namely that it somehow also imposed an absolute requirement that the sum total of components meeting the formula of feature A. had to be between 0.01 and 2.0 percent, that is that nothing falling within the formula of feature A. was allowed to be in the unspecified 96 to 99.98 percent of components. The consequence of this construction would be that the amended claim 1 of this request where feature A. referred to R being an alkyl group of 19 to 21 carbon atoms, would be broader in scope than claim 1 as granted insofar as there would no longer be any restriction on for example the quantity of component A. type quaternary ammonium compound with R being an alkyl group of 22 to 35 carbon atoms, being present in the unspecified 96 to 99.98 percent of components. The respondents argued that on the appellants' own view on how to construe feature A., claim 1 of this request was thus broader than claim 1 as granted, and so this request did not comply with Article 123(3) EPC. The appellants sought to avoid this conclusion by arguing that claim 3, neither as filed nor as granted, was properly dependent on claim 1, and that, as claim 1 of this request was no broader than claim 3 as granted, the requirements of Article 123(3) were met.

6.2 On the view adopted by this Board as to the proper construction of feature A. claim 3 as granted was properly dependent on claim 1 as granted, and claim 1 of this request merely restricts the scope of protection compared to claim 1 as granted.

7. The Board is thus satisfied that the amendments made in Auxiliary Request Ib satisfy the requirements of Article 123(2) and (3) EPC. Nor has any lack of clarity been introduced by the amendments and cannot, therefore, be the subject of an objection under Article 84 EPC.

7.1 The reasons for revocation of the patent by the opposition division do not apply to the present request. As the substantive issues of novelty and inventive step have not yet been the subject of discussion, the Board, exercising its discretion under Article 114(1) EPC, remits the case to the opposition division for further prosecution.