T 0287/11 01-04-2014

1. The appeal is admissible.

Main request

2. Amendments (Article 123(3) EPC)

2.1 Article 123(3) EPC requires that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred by the patent as a whole. In order to decide whether or not an amendment satisfies this requirement, it is necessary to compare the protection conferred by the claims as granted, with that of the claims after amendment.

2.2 Thus the question to be answered is whether the claims of the main request cover any compositions or methods which were not covered by the claims as granted. The following analysis is for claim 1 of the main request compared to claim 1 as granted, similar considerations applying to independent claims 4 to 6, 15 and 16 of the main request vis-à-vis the respective claims 4, 6, 7, 16 and 17 as granted.

2.3 Claim 1 of the patent as granted is directed to an aerosol hair styling composition comprising inter alia (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4.

2.3.1 The use of the term "comprising" in connection with a numerical range defining the amount of a component implicitly means that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see T 2017/07, Headnote, ibid.).

2.3.2 In the present case, this means that the protection conferred by claim 1 as granted, as far as component (a) is concerned, is restricted to aerosol hair styling compositions containing not less than 5% and not more than 90% by weight of any water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4, which finding has not been contested by the Appellant.

2.4 Claim 1 of the main request differs from claim 1 as granted by virtue of the insertion after the definition of the component (c) of the feature:

"wherein the water-soluble polyalkylene glycol conforms to the formula:FORMULA/TABLE/GRAPHIC

wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35".

2.4.1 In view of the wording "wherein the water-soluble polyalkylene glycol conforms to the formula" (emphasis added), the component (a) is to be regarded as restricted to those specific water-soluble polyalkylene glycols of the formula recited, such that the amount of 5% to 90% by weight of water-soluble polyalkylene glycol applies to this more restricted definition only, and no longer to the broader definition.

2.5 Thus, claim 1 of the main request no longer requires, as does claim 1 as granted, that the composition contains at most 90% by weight of polyalkylene glycols of the broader definition given in granted claim 1, since the definition of the composition in claim 1 is "open" due to the characterization by the term "comprising", i.e. the composition can contain in addition to the compounds specified in the claim any other compounds. Therefore, the composition of claim 1 of the main request may comprise in addition to water-soluble polyalkylene glycols of the specific formula now defined, any other water-soluble polyalkylene glycol as defined in granted claim 1 in an undefined amount, whereas claim 1 as granted restricted the amount of these compounds to no more than 90% by weight.

2.6 The protection conferred by claim 1 according to the main request is thus extended in comparison with the protection conferred by claim 1 as granted. The Appellant did not argue that the protection conferred by claim 1 of the main request was covered by any of the other independent claims as granted, nor does the Board hold that this is the case.

2.7 For similar reasons, independent claims 4 to 6, 15 and 16 of the main request extend the protection conferred by the respective claims 4, 6, 7, 16 and 17 as granted.

2.8 The Appellant argued on the basis of the conclusions reached in decision T 999/10 that since claim 1 of the main request was drafted in "cascade form", i.e. the claim contained both a broader and a narrower definition of a particular group of compounds (see T 999/10, points 3.4 and 3.5 of the Reasons), the weight limitation of 5% to 90% applied to both definitions of the component (a) given therein, with the consequence that the total amount of water-soluble polyalkylene glycol could not fall outside the amount of 5% to 90% by weight. The Appellant also submitted that in the case underlying decision T 009/10 (see point 2.1 of the Reasons), a claim which had been amended similarly vis-à-vis the granted version was considered not to contravene Article 123(3) EPC.

2.8.1 However, in view of the wording "wherein the water-soluble polyalkylene glycol conforms to the formula", the Board considers that the water-soluble polyalkylene glycol of component (a) is defined as being of that specific formula, and not, as suggested by the Appellant as comprising a water-soluble polyalkylene glycol of this formula. Thus, the Board holds that the first, broader definition of component (a) in claim 1 is restricted by the second narrower definition of the specific formula, such that the amount of 5% to 90% weight applies to the narrower definition only. In view of this interpretation of the claim, the Board sees no need to turn to the description in order to interpret the claim, as was the case in decision T 009/10.

2.8.2 Concerning decision T 999/10 cited by the Appellant, claim 1 of the main request thereof relates to an adhesive comprising inter alia 45 to 85% by weight of one or more styrene block copolymers, wherein the styrene block copolymer is a copolymer of the type styrene/isoprene/styrene (SIS), claim 1 as granted relating to an adhesive comprising inter alia 45 to 85% by weight of one or more styrene block copolymers, said copolymer not being further defined (see T 999/10, points I and IX of the Facts and Submissions). Said decision states (see point 3.4 of the Reasons) that in view of the sequential ("cascade") formulation of the claim, there was no doubt as to the "intention" of the patent proprietor that no other block copolymers other than the specific SIS-type may be present in the adhesive. The decision goes on to state (see point 3.5 of the Reasons) that even if the claim were to be interpreted as not excluding the presence of other block copolymers, the sequential formulation chosen by the patent proprietor meant that the condition limiting the amount of block copolymer defined in the broader manner as in granted claim 1, should also be fulfilled in the amended claim.

However, the scope of protection should not be interpreted in the light of the intention of the drafter of a claim, since this is a subjective criterion, but rather on the basis of the meaning generally accepted by the person skilled in the art to the technical features defined in said claim, such that this Board is not convinced by argumentation based on any alleged intention of a drafter of a claim.

2.9 Thus, the Board concludes that the scope of protection conferred by claim 1, and by the same token that of independent claims 4 to 6, 15 and 16, has been broadened vis-à-vis that of the claims as granted, such that the main request does not satisfy the requirements of Article 123(3) EPC.

3. Request for referral of a question to the Enlarged Board of Appeal

3.1 Under Article 112(1)(a) EPC, a board of appeal may, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer a question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law, or if an important point of law arises.

3.2 In the present case, the Appellant requested that if the Board did not allow its main request for reasons of contravening Article 123(3) EPC, such a decision would be contradictory to decisions T 999/10 and T 009/10, such that a question (see point VI above for exact formulation) regarding whether particular amendments to granted claims relating to compositions comprising a class of components and specifying an amount range thereof contravened Article 123(3) EPC should be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law.

3.3 The Board holds, however, that the question formulated by the Appellant concerns the interpretation of technical features of a claim of the specific patent in suit, this not being a question of law but primarily a technical issue (cf. T 181/82, point 14 of the Reasons, OJ EPO 1984, 401), because it requires the skilled person to interpret technical information, namely whether amendments to a chemical definition have an impact on the broadness of the claim.

3.4 Hence, the Appellant's request to refer a question to the Enlarged Board of Appeal is rejected.

Auxiliary request 1

4. Amendments (Article 123(2) EPC)

Claim 1 is based on granted claim 1 (Article 100(c) EPC not being a ground for opposition), the water-soluble polyalkylene glycols of the specific formula finding a basis at page 6, lines 15 to 19 of the application as filed. Independent claims 3 to 6, 15 and 16 are similarly based on granted claims 3, 4, 6, 7, 16 and 17, respectively, together with page 6, lines 15 to 19 of the application as filed. Claims 2 and 7 to 14 are based on granted claims 2 and 8 to 15, respectively. The claims thus comply with the requirements of Article 123(2) EPC, the Respondent having no objections under this Article to the amended claims.

5. Amendments (Article 123(3) EPC)

5.1 Compared with claim 1 as granted, the definition of component (a) in claim 1 according to auxiliary request 1 is supplemented by the following feature:

"wherein the water-soluble polyalkylene glycol conforms to the formula

FORMULA/TABLE/GRAPHIC

wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35",

and after the definition of component (c), the following feature has been added:

"wherein the total amount of water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4 is in the range of 5% to 90% by weight".

5.2 The amended claim thus requires that a water-soluble polyalkylene glycol of the specific formula is present within the amounts given, but also that the total amount of water-soluble polyalkylene glycols of the broader definition indicated in the claim is in the range of 5% to 90% by weight. Said wording renders it unambiguous that no more and no less than the amount of a water-soluble polyalkylene glycol as defined in granted claim 1 may be present in the aerosol hair styling composition, and thus overcomes the problem of extension of protection inherent in the main request.

5.3 Thus, the Board concludes that the scope of protection conferred by claim 1, and by the same token that of independent claims 4 to 6, 15 and 16, has not been broadened vis-à-vis that of the claims as granted.

5.4 Thus, the requirement of Article 123(3) EPC is satisfied, the Respondent also having no objections under Article 123(3) EPC to the claims of this request

6. Article 84 EPC

6.1 Granted claim 1 was amended during opposition-appeal proceedings inter alia by specifying that the water-soluble polyalkylene glycol conforms to the formula:

FORMULA/TABLE/GRAPHIC

wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35.

6.2 The Respondent submitted that as a result thereof the subject-matter of all independent claims did not fulfil the requirements of Article 84 EPC, for two different reasons:

6.2.1 Firstly, in the formula for the water-soluble polyalkylene glycol, R and A were each defined inter alia as mixtures of hydrogen and methyl, whereas a substituent could not simultaneously be both hydrogen and methyl.

6.2.2 Secondly, document (6) taught that certain polyalkylene glycols specified by the formula for the water-soluble polyalkylene glycol in the independent claims were in fact water-insoluble, resulting in an internal contradiction within the claims.

6.3 The Appellant argued inter alia that the Board had no power to examine the second objection under Article 84 EPC, since the alleged lack of clarity had already been present in the granted claims, and in any case, the document (6) on which the objection was based, had been filed merely three days before the oral proceedings before the Board and should thus not be admitted into the proceedings.

6.4 With regard to the first objection, the Board holds that the skilled person would clearly understand the definition of R and A in the formula for the water-soluble polyalkylene glycol as being mixtures of hydrogen and methyl to mean that the definitions of R and A in the glycol are merely independent of each other. Thus, in a polyalkylene glycol of the formula given in any of the independent claims, depending on the value of n, R can occur 5 to 35 times, and depending on the nature of the monomers used to make the polyalkylene glycol, i.e. of the ethylene- and/or the propylene-type, each occurrence of R in a single polyalkylene glycol molecule may not necessarily be the same, but may be hydrogen or methyl. Similarly, in the polyalkylene glycol, A represents the two end groups, such that when A is defined as a mixture of hydrogen and methyl, then it is clear that one end group is hydrogen and the other is methyl.

6.5 With regard to the second objection, the Board holds that regardless of whether or not the Board has the power to examine this objection, and regardless of whether or not the late-filed document (6) were to be admitted into the proceedings, the polyalkylene glycols of component (a) of the compositions of the independent claims are defined by both a structural definition, namely by a specific formula, and by a functional definition, namely that they are water-soluble. Thus, even if some of the polyalkylene glycols falling under the structural definition given would be water-insoluble, then they would not fulfil both requirements of the claim and as a consequence, would not fall within the scope of the claim.

6.6 Thus, all independent claims fulfil the requirements of Article 84 EPC.

7. Remittal

Having so decided, the Board has not taken a decision on the whole matter, since the decision under appeal dealt exclusively with amendments which contravened the provisions of Article 123(3) EPC, which objections are no longer pertinent due to the amendments made. As the Opposition Division has not yet ruled on the other grounds for opposition, namely novelty and inventive step, the Board considers it appropriate to exercise its power conferred on it by Article 111(1) EPC to remit the case to the Opposition Division for further prosecution on the basis of the claims according to auxiliary request 1 in order to enable the first instance to decide on the outstanding issues.

Auxiliary requests 2 to 19

8. Since the auxiliary request 1 is remitted to the first instance for the reasons set out above, there is no need for the Board to decide on the lower ranking auxiliary requests.