T 0911/18 (STABILIZATION OF SUNSCREENS IN COSMETIC COMPOSITIONS/Unilever) 01-07-2021

Summary of Facts and Submissions

I. The appellant (opponent) lodged an appeal against the interlocutory decision of the Opposition Division which found that the European patent No. 1 490 017 amended according to the then pending first auxiliary request met the requirements of the EPC.

Claim 1 of the first auxiliary request maintained by the Opposition Division reads as follows:

"1. A method of stabilising an organic sunscreen against oxidative or photooxidative degradation, the method comprising the step of combining 0.1 wt.% to 5 wt.% of a 4-substituted resorcinol derivative of general formula I

FORMULA/TABLE/GRAPHIC

wherein each R1 and R2, independently, represents a hydrogen atom, -CO-R, -COO-R, CONHR;

where R represents saturated or unsaturated, linear, branched or cyclic C1-C18 hydrocarbon groups; and

R3 represents an alkyl group having from 1 to 18 carbon atoms or a group of the general formula (II)

(II)

FORMULA/TABLE/GRAPHIC

wherein X is hydrogen; OR**(1), wherein R**(1) represents hydrogen, (C1-C6)alkyl or aryl-(C1-C6)alkyl;

OCOR**(2) wherein R**(2) represents (C1-C6)alkyl, aryl-(C1-C6)alkyl or phenyl; halogen; (C1-C6)alkyl; aryl-(C1-C6)alkyl, or aryl-(C1-C6)alkyl; or NHR**(1) wherein R**(1) is defined as above;

wherein n is 0 to 3 such that the structure of general formula II is a 5, 6, 7 or 8 membered ring;

wherein the dashed line indicates an optional double bond;

and a cosmetically acceptable carrier;

with 0.01 wt. to 20 wt.% of an organic sunscreen in a personal care composition;

wherein the 4-substituted resorcinol derivative is present in at least an effective amount to inhibit oxidation of the organic sunscreens, wherein

the 4-substituted resorcinol is selected from 4-methyl resorcinol, 4-ethylresorcinol, 4-propyl resorcinol, 4-isopropyl resorcinol, 4-butyl resorcinol, 4-pentyl resorcinol, 4-hexyl resorcinol, 4-heptyl resorcinol, 4-octyl resorcinol, 4-nonyl resorcinol, 4-decyl resorcinol, and mixtures thereof or wherein

the 4-substituted resorcinol is selected from 4-cyclopentyl resorcinol, 4-cyclohexyl resorcinol, 4-cycloheptyl resorcinol, 4-cyclooctyl resorcinol, and mixtures thereof."

II. The appellant filed an opposition requesting revocation of the patent-in-suit in its entirety on the grounds of lack of novelty and inventive step (Article 100(a) EPC) and insufficiency of disclosure of the invention (Article 100(b) EPC). Inter alia, document

(1) EP-A-0 341 664

was cited in the opposition proceedings.

The Opposition Division held that the subject-matter of claim 1 of the patent as granted lacked novelty over formulation example 2 on page 8 of document (1) which disclosed a composition comprising 4% by weight of 4-isoamylresorcinol and 3% by weight of 2-hydroxy-4-methoxybenzophenone, which was an organic sunscreen. In order to achieve said composition, the ingredients inevitably had to be combined. Hence, a method of combining a 4-substituted resorcinol and an organic sunscreen in the weight ratios required by claim 1 was inherently disclosed by document (1).

According to the Guidelines, F-IV, 4.13, in claims directed to a method or process aiming at a certain purpose (in the present case stabilising an organic sunscreen) comprising physical steps (e.g. combining ingredients a and b) and resulting in the production of a product (i.e. a composition), the indication of the intended purpose of the method was to be understood in the sense that the method or process had to be merely suitable for that use, rather than comprising the use as an integral method step.

Hence, it had to be decided whether 4-isoamylresorcinol fell within the definition of formula (I) of claim 1 of the granted patent.

R3 in formula (I) was defined in claim 1 of the patent as granted as "an alkyl group having from 1 to 18 carbon atoms". Consequently 4-isoamylresorcinol fell within the definition of formula (I) of claim 1 of the contested patent. Hence, example 2 of document (1) anticipated claim 1 of the patent as granted.

In claim 1 of the auxiliary request 1, the 4-substituted-resorcinol derivatives of formula (I) were restricted to particular derivatives including 4-pentylresorcinol.

Claim 1 of auxiliary request 1 distinguished between 4-propyl- and 4-isopropylresorcinol and thus between linear and branched groups. Branched alkyl groups were expressly indicated. Hence, this differentiation between a linear and a branched isomer indicated that the contested patent explicitly referred to a branched isomer if this was intended. Paragraph [0029] of the patent in suit also clearly distinguished between linear and branched alkyl groups in the context of resorcinol derivatives. In the case of the latter, those branched radicals were explicitly declared. The skilled person would therefore have interpreted the compound "4-pentylresorcinol" as being actually "4-n-pentyl resorcinol".

Furthermore, the patent in suit did not provide any indication that resorcinol derivatives as referred to on page 3, lines 55-57 of document (1) could be incorporated into the example formulation 2.

Consequently, the subject-matter of claim 1 of the auxiliary request 1 was novel over document (1).

III. According to the appellant, the findings of the Opposition Division that the subject-matter of claim 1 of the patent as granted was not novel over document (1) should also apply to the first auxiliary request. Claim 1 of the first auxiliary request differed from claim 1 of the patent as granted in that the 4-substituted-resorcinol derivative of the general formula (I) was selected from specific 4-substituted resorcinol derivatives including 4-pentyl resorcinol. A pentyl group was an alkyl group having 5 carbon atoms, which covered various isomers, namely n-pentyl, 2-pentyl (sec-pentyl), 3-pentyl, 2-methylbutyl, 3-methylbutyl (iso-pentyl or iso-amyl), 3-methylbut-2-yl, 2-methylbut-2-yl and 2,2-dimethylpropyl (neopentyl). The 4-isoamyl resorcinol disclosed in example 2 of document (1) was therefore encompassed by the generic 4-pentyl resorcinol mentioned in claim 1. The patent in suit did not specifically identify branched alkyl groups as such. Octyl methoxycinnamate (Parsol MCX, table 1; page 4, line 18) and butyl methoxy dibenzoyl methane (Parsol 1789, line 30) comprised branched alkyl groups. Accordingly, the skilled person would therefore not interpret the term 4-pentylresorcinol restrictively to exclusively mean 4-n-pentylresorcinol. Paragraph [0029] referred to by the Opposition Division was not relevant because it only dealt with the group R which in the groups -COR, -COOR and -CONHR. Moreover, there were no indications in paragraph [0029] suggesting that alkyl meant linear alkyl. On the contrary, linear alkyl groups were explicitly mentioned here, so that it was clear that branched groups were also meant by the term alkyl group without the reference to linear groups.

Furthermore, the resorcinol derivatives mentioned in document (1) were intended to be used in the same way as the isoamylresorcinol used in example 2, in particular having regard to preparatory example 1. Hence, document (1) disclosed a cream according to example 2 containing methyl-, ethyl-, n-butyl- or n-octyl resorcinol.

The subject-matter of claim 1 of auxiliary request 1 maintained by the Opposition Division therefore lacked novelty with respect to document (1).

IV. According to the respondents (patent proprietors), for the term pentyl, an interpretation under Article 69 EPC was proper. The term pentyl in the claim could not be seen simply as five carbon atoms, and clearly did not include isoamyl, in the same manner as it did not include cyclopentyl, given that it was mentioned separately.

Claim 1 distinguished between "propyl" and "isopropyl" radicals. Therefore the skilled person understood that if branched alkyl chains were intended, these radicals would have been identified as such. Consequently, the skilled person would clearly interpret "4-pentyl resorcinol" as a resorcinol derivative with a linear C5-alkyl radical at position 4.

It was irrelevant what the general understanding of alkyl was. In cosmetics, nomenclature was far from uniform. It was relevant what a skilled person reading the claims and description understood alkyl to mean. The terminology used for different aspects of the invention, e.g organic sunscreens, relating to entirely different species was not relevant. Parsol MCX and Parsol 1789 with their respective CTFA designations were well known compounds and did not show that octyl and butyl in general would always include branched groups.

Therefore, the 4-pentyl resorcinol recited in claim 1 did not include a branched C5 alkyl carbon chain at position 4. This was further demonstrated by the deletion of the isoamyl groups in the description.

When assessing novelty over a document, the entire content of the document should be taken into account. However, this did not mean that the document was a reservoir of features that could be freely combined at will. In order to be considered as novelty destroying, a feature had to be directly and unambiguously disclosed in a prior art document. Merely combining certain parts of the description without a specific teaching to do so was not permitted. In the absence of a clear teaching to combine the resorcinol derivatives disclosed in document (1) with an organic sunscreen, the subject-matter matter of claim 1 maintained by the Opposition Division was novel over document (1).

V. The appellant requested that the decision under appeal be set aside and the patent be revoked.

The respondents requested that the appeal be dismissed, i.e. that the patent be maintained in an amended form as held allowable by the Opposition Division.

VI. At the end of the oral proceedings held on 1 July 2021, the decision of the Board was announced.