T 0122/93 (Hygiene cleaner/CRINOS) 30-04-1996

Reasons for the Decision

1. The Appeal is admissible.

Article 123(2) and (3) EPC

2. There is a basis for the amendments to claim 1 in the application as originally filed, on page 4, line 22 to page 5, line 9. The Appellant questioned as not supported by the original application the replacement of the term "comprising" with "consisting of". However, Example 2 (see column 5) of the patent in suit discloses a preparation comprising only the ingredients listed in claim 1, namely 9% polyoxyethylenated ricinoleic glyceride 40 which is a polyoxyethylenester of a fatty acid, 1.5% polyoxyethylene cholesterol, which is a polyoxyethylenether of a higher alcohol, 1% carboxymethylcellulose i.e., a derivative of cellulose, a preserving agent and water up to 100 g. Example 2 thus represents a basis for turning the wording "comprising" into "consisting of". This expression has a more restricted meaning in comparison with the term "comprising" and therefore claim 1 infringes neither Article 123(2) nor Article 123(3) EPC.

Article 84 EPC

3. Although the claims fulfil the requirements of Article 84 EPC, it should be emphasized that the Board does not consider as successful the Respondent's attempt to modify claim 1 to make it clear that each of the emulsifiers rather their mixtures should exhibit a HLB value of 10 to 19. In fact the claim in its final version prescribes that the composition is made with one or more emulsifying agent of a non ionic type having an HLB value comprised between 10 and 19, selected from the seven families of surface active agents listed therein. While the claim now rules out the presence of a surfactant consisting of one single component of the seven families listed therein with a HLB value less than 10, it does not exclude the possibility that, when the surfactant is a mixture of two or more components of the same family, one member of the family might have a HLB value below 10. For instance, a mixture of polyoxyethylenether of higher alcohols is a suitable non ionic emulsifying agent, provided it exhibits a HLB value comprised between 10 and 19. Yet this does not imply that each of the components of such mixture must have a HLB value between 10 and 19, but merely that the mixture of ethers as a whole should do so.

Closest prior art

4. In relation to claim 1 directed to a composition, document (1) is regarded as constituting the closest prior art, since it also discloses compositions for the cleaning of skin comprising non ionic detergents and thickening agents. Document (1) is a basic book on cosmetology, whose technical teaching is very general and can be summarized in that a non ionic detergent together with a thickening agent and water yield a good cleansing jelly. The detergent, which may also be a mixture of more components, is preferably non ionic (see page 267, line 7: "Hier kommen in erster Linie nichtionogene Detergens in Frage"). A composition fulfilling these conditions is exemplified by preparation No. 10 (see page 266) which comprises 6.25. wt% Tween® 80, 1.25 wt% Arlacel C®, 2.50 wt% sodium carboxymethylcellulose, 89.0 wt% water and 1.0 wt% preserving agent, a formulation taken from document (4).

Novelty

5. Formulation 10 of document (1) contains 1.25% of Arlacel C®. This low HLB surfactant is sorbitan sesquioleate (see document (4), page 411). As also admitted by the Appellant, sorbitan sesquioleate does not comprise any polyoxyethylene chain and thus it cannot be considered as a polyoxyethylenester of sorbitan. Consequently, it falls under none of the surfactant categories listed in claim 1. Since claim 1 requires that only surfactants listed therein are allowed in the preparation, the novelty can be acknowledged. It should be noted that the novelty follows from Arlacel C® being excluded by claim 1 rather than from the Respondent's attempt to clarify that each of the emulsifiers rather their mixtures should exhibit a HLB value of 10 to 19.

Document (3) is a basic textbook on the emulsifying agents and on the relationship between HLB range and surfactant application. Document (5) lists a great many non ionic surfactants with the corresponding HLB values. These basic documents can be seen as merely representing the common general knowledge in the field of non ionic surfactants. Since neither of the citations discloses a preparation comprising in combination all the features of claim 1, its subject-matter is considered to be novel.

Inventive step

Problem to be solved and its solution

6. The Board does not agree with the submissions by the Respondent that the technical problem underlying the patent in suit consisted of providing milder skin compositions by taking advantage of the finding that a thickening agent unexpectedly increased the emulsifying power of a surfactant. Whilst said synergistic effect is not disputed by the Board, it cannot be retained as the actual problem to be solved, all the more since the Respondent has not shown that the compositions of claim 1 are somehow better than those of document (1). Thus in the light of the state of the art known from document (1), the objective technical problem underlying the subject-matter of product claim 1 can only be seen by the Board in the provision of alternative skin cleansing compositions comprising non ionic detergents and thickening agents. However, the provision of alternative products to known products is in general not inventive. That the patent in suit solves the above problem, is not disputed by the Board.

7. It should be established whether the skilled person who departs from composition No. 10 of document (1) and arrives at the claimed preparations has to exert inventive skill. The Board is of the opinion that it is not the case.

Firstly, the range of non ionic surfactant(s) and thickening agent(s) of claim 1 corresponds to that of composition No. 10 of document (1) and also to the figure "etwa 5%" (see bottom of page 266) mentioned therein. When preparing a formulation alternative to preparation No. 10 of document (1), nothing tells the skilled person to substantially alter the percentages of thickening agent and surfactant mentioned in document (1).

As regards the HLB range of claim 1, document (3) (page 323, Table XV) and document (5) (see pages 743 to 747) show that the HLB range of 10 to 19 recited in claim 1 is not unusual for emulsifying agents and detergents. Thus the skilled person selecting common surfactants to be incorporated in the formulation, will of necessity come within the HLB range of claim 1.

The spectrum of possible emulsifiers listed in claim 1 is very broad and corresponds to a palette of well known non ionic surfactants (see eg, document (5)), among which the skilled person is free to select any of them or any combination thereof. It should be noted that the teaching of document (1) is very general. The use of a non ionic surfactant, Tween 80® of formulation No. 10 being merely given as an example (see point 4 supra), the Board thus does not see any valid reason that would dissuade the skilled person from borrowing the surfactants disclosed in document (5).

In conclusion the Board does not see any hindrance that would prevent the skilled person merely working within the teachings of document (1) and illuminated by the common knowledge in the field of formulating cleansing compositions, from arriving at a preparation falling under claim 1 of the patent in suit.

8. The Respondent pointed out that document (1) disclosed "waterless hand cleaners" that did not require the addition of water, contrary to the claimed compositions which required a rinse with water. Yet the Board must consider this difference as immaterial to the inventive step question since formulation No. 10 of document (1) is not hydrophobic if one bears in mind that it contains 89% water and thus it can also be rinsed out with water, which the user would anyhow do sofar as water is available. Document (1) (see page 267, lines 5 to 6) indeed emphasizes that wiping off the detergent is not comparable with rinsing it out with water.

9. Even if the Board accepted the Respondent's argument that the skilled person would not remove Aralcel® from composition 10 for reasons of stability (mixing surfactants with low and high HLB is known to yield more stable compositions, see eg, document (3), page 326, left-hand column, third paragraph), it would not prevent the skilled person from replacing it with another surfactant having the same effect. Claim 1, as the Board interprets it (see point 3 supra), indeed does not excludes the possibility of using a mixture of a high and low HLB surfactant of the same family.

10. Also the Respondent's line of argument based on the different technical effect exerted by sodium carboxy- methylcellulose in formulation No. 10 of document (1) (gelling agent) than in the composition of claim 1 (enhancer of the surfactant) cannot convince the Board. While this difference is not disputed, the Board must emphasize that this fact has no bearing in assessing the inventive step of product claim 1 over document (1). Sodium carboxymethylcellulose is critical both as an ingredient for obtaining a jelly (document (1)) and as a surfactant enhancer (claim 1). It cannot be dispensed with by the skilled person in either composition, regardless of its function.

11. The subject-matter of claim 1 and of dependent claim 2 thus does not involve an inventive step (Article 56 EPC).