T 0240/02 30-11-2006

1. The appeal is admissible.

Novelty

2. The appellant argued that the claimed subject-matter lacked novelty over D1 or D3.

2.1 D1 discloses a process for the permanent straightening of hair by treating the hair with known keratin softening agents. After substantial removal of the later, the hair is blotted under repeated combing by use of a swelling or penetration agent and subsequently is fixed and neutralized, respectively, in a usual manner (claim 1). It is essential that the swelling or penetration compounds are suitable to increase the hair straightening effect of the keratine softening substances (page 4, last paragraph).

In example 2 of D1 an alkaline hair straightening agent having a pH of 12.8 is applied to the hair, and is allowed to work in for 5 minutes. After that the agent is substantially combed out, and a formulation containing 1.5% by weight of an ammonium salt of a carboxy vinyl polymer, 3,5% by weight of urea, 10.5% by weight of 2,2-dimethyl-1,3-propanol, 15.0% by weight of isopropanol with the balance of water is applied to the hair.

2.1.1 The respondent argued that, since said formulation contained an ammonium salt, it was a deswelling composition as used in step (b) of claim 1 of the patent in suit.

However, the formulation used in example 2 is, according to the clear teaching of D1, a swelling or penetration composition which does not deswell the hair fibres (compare point 2.1, above). This is confirmed by D1 itself, in which suitable swelling or penetration substances include diols, alcohols and urea (page 4, third paragraph). The formulation in example 2 contains a high amount of 29% by weight of those swelling substances and only 1.5% by weight of the ammonium salt of a polymer so that the amount of the swelling agents mentioned above is about twenty times higher than that of the ammonium salt. This already indicates that the formulation of example 2 should have a swelling rather than a deswelling effect, even if a minor amount of a polymer salt was included. A deswelling step b) is, however, a key feature of the process of claim 1 as granted. The appellant failed to show that the formulation of example 2 indicated above has, contrary to the whole teaching of D1, a deswelling effect. The onus of proof in this respect lies, however, with the opponent (appellant), which he failed to discharge (T 219/83, OJ EPO 1986, 211).

2.1.2 Consequently, the appellant has not shown that the claimed subject-matter lacks novelty over D1.

2.2 D3 discloses in claim 1 a process for the permanent restructuring of hair comprising the following steps:

(a) contacting the hair with a reactive reducing solution comprising a reducing agent capable of cystine cleavage for a time sufficient to achieve a substantially-maximum cystine bond cleavage;

(b) blotting the hair to remove the reactive reducing solution; and

(c) contacting the hair with a protein flow solution for a period of time sufficient to induce protein flow in the hair to achieve a desired restructured configuration prior to application of an oxidizing agent to reestablish the cystine bonds to fix the restructured configuration. The protein flow solution is an aqueous protein flow solution having a pH from about 2 to about 10 and comprises an aqueous solution of at least one protein flow agent selected from the group consisting of a polyvalent ion, a water-soluble hydroxyorganic compound containing up to about 4 carbon atoms and at least one hydroxyl group and mixtures thereof. The pH value of step (a) is normally in the range of from 5 to 10 (page 16, last paragraph). The protein flow solution in step c) may contain magnesium or calcium salts in a concentration of 1 to 10% by weight (page 24, last paragraph).

2.2.1 Whilst the first step (a) in claim 1 of D3 is a reducing step, step a) of claim 1 under dispute is a lanthionizing step with a non-reducing base. It was agreed by the parties that the term "lanthionization" or "lanthionizing" has an established meaning in the art and concerns a hair treatment process, wherein hair is exposed to a strong alkaline relaxing solution transforming cystine bonds substantially to lanthionine bonds (see patent in suit page 2, lines 12 to 14; appellant's letter of 23 May 2002, page 5, lines 1 to 4). As far as D3 refers to lanthionization, it defines it as a caustic reaction with hair which process is incompatible with all other salon conditioning systems, because the hydroxyl ion irreversibly attacks the cystine (kSSk) linkages to form lanthionine, by the reaction:

kSSk + OH ?-> kSk (1)

(page 14, second full paragraph).

2.2.2 According to both parties, lanthionization is effected at a pH of at least 11. This is confirmed by D6, wherein the pH for lanthionization is above 11.8, preferably 12.5 to 13.5 (column 6, lines 45 to 48) and D7 (see also point 3.2 below). According to the patent in suit, lanthionization is effected at pH values of 12 to 13.5 (page 3, line 3).

2.2.3 None of the cited documents show that substantial lanthionization of hair can be effected at a pH of 10 or lower. Since the reducing step (a) of D3 is carried out at a pH of at most 10, in line with the submissions of both parties, such a pH is in any case not high enough for substantially forming lanthionine bonds throughout the hair.

2.3 From the above it follows that lanthionizing step a) of the claimed process with a non-reducing base for relaxing hair is distinguished from the reduction/oxidation treatment according to D3 for the permanent reconstruction of hair.

2.4 Consequently, the appellant has not shown that all the claimed features can directly and unambiguously be derived from D3 or D1. Hence, the claimed subject-matter is novel over the cited prior art documents D1 and D3.

Inventive step

Closest state of the art

3. The patent in suit concerns a process for relaxing hair fibres. Such a process is known from the prior art document D7, which both parties regarded as the closest state of the art. The board does not see any reason to deviate from that view as can be gathered from the following:

3.1 D7, which is an excerpt of a standard encyclopedia, describes hair straightening preparations. Such preparations can be used to straighten naturally wavy and curly hair. They contain strong bases such as alkalihydroxides (for example sodium hydroxide) in an amount of 1.5 to 4% by weight and do not require oxidative post treatment. Thickened preparations are applied to the hair with a brush and distributed throughout the hair with a comb. The hair is straightened by further combing. The preparations are allowed to work in for a predetermined time (ca. 2 to 15 min) and then are thoroughly rinsed out (page 591, point 6).

3.2 The lowest amount of sodium hydroxide (1.5% by weight) disclosed in D7 corresponds to a pH of about 12.5, which is in line with typical pH values disclosed in the patent in suit (12.5 to 13.5; page 3, line 3). Since D7 discloses a lanthionizing step followed by a rinsing step, the steps described in D7 cover the conventional relaxing process, from which the patent in suit itself starts (page 2, lines 15 to 17).

Problem and solution

4. According to the patent in suit, although the conventional relaxing process decreases the amount of curl in hair, it also damages hair. The conventional process causes hair fibers to split longitudinally and break, leaving hair coarse, brittle, and unmanageable. These negative results cannot be corrected by applying conditioning agents to the hair subsequent to the relaxing process (page 2, lines 21 to 25).

4.1 In the examples of the patent in suit a fiber swelling analysis for fibers relaxed according to the conventional process is shown in Fig. 1. According to Fig. 1, fiber swelling increases steadily for the entire twenty minutes of exposure to sodium hydroxide. At the lanthionization-swelling peak 10, sodium hydroxide is removed and the fiber is rinsed with water for five minutes, in line with the conventional relaxing process. As is seen in Fig. 1, the fiber undergoes a second-stage swelling during the rinsing step to achieve the rinsing-swelling peak 12 which is higher than the lanthionization-swelling peak 10. After achieving the rinsing-swelling peak 12, swelling decreases steadily.

4.2 The test, the results of which are shown in Fig. 2 is repeated using the claimed process and the composition according to example 5 of the patent in suit. The composition of example 5 contains inter alia as main deswelling components: 56.6% by weight of a hydrogenated starch hydrolysate (Hystar CG; 70%), 5.86% by weight of magnesium sulfate, 6.0% by weight of lactic acid (85%) and 6.4% by weight of phosphoric acid (85%). As shown in Fig. 2, fiber swelling increases similarly to Fig. 1 to a lanthionization peak 14 at twenty minutes, the point at which the deswelling composition of example 5 is introduced. The deswelling composition remains on the hair fiber for three minutes and is then rinsed off with water. Fiber swelling again increases to a rinsing peak 16. However, because the rinsing peak 16 is lower than the lanthionization peak 14, the fibers relaxed according to the process of the present invention are not subject to second-stage swelling greater than first-stage swelling, and therefore are not subject to the resulting structural damage.

4.3 The effects of the claimed process are illustrated in three further tests. One test shows that the fibers subjected to the claimed process have undergone minimal swelling, and no longitudinal rupture of the cuticles occurs (page 7, lines 33 to 35). According to the next test, hair fibers relaxed according to the claimed process are stronger than those relaxed according to the conventional process (page 2, lines 50 and 51).

4.4 Finally, tests are performed on twenty-five subjects in a half-side test. Each subject's hair is treated with a commercial sodium hydroxide relaxing solution for thirteen to eighteen minutes. When the hair appears to be straight, the right side of the head is treated with the composition of example 1 for two to three minutes. The composition of example 1 contains inter alia as main deswelling components: 56.6% by weight of a hydrogenated starch hydrolysate (Hystar CG; 70%), 6.4% by weight of lactic acid (85%) and 6.4% by weight of phosphoric acid (85%). The left side of the head is processed according to the conventional relaxing process.

4.5 The composition of the present invention is then reapplied to the right sides of the subjects' heads for five minutes. The left sides are treated with a commercial conditioner for five minutes, then shampooed once with an acidic shampoo. Both sides are then evaluated subjectively by independent consultants for various properties. The results are set forth in Tables 2 and 3, and show that the claimed process decreases the swelling of hair fibers during the relaxing process, resulting in hair that is smoother, silkier, shinier, easier to comb, and more manageable than hair relaxed according to the conventional relaxing process.

4.6 From the above test results it follows that the claimed process provides improved hair properties compared to the conventional process according to D7.

4.7 The problem to be solved over D7 may therefore be seen in providing a process for relaxing hair fibers which decreases the swelling of hair fibers and strengthens the hair fibers and results in hair that is smoother, silkier, shinier, easier to comb, and more manageable than hair relaxed by the conventional relaxing process of D7, in line with the patent in suit (page 2, lines 37 and 38 and page 9, lines 52 to 54).

4.8 It follows from the above that the problem addressed in the patent in suit is effectively solved by the claimed process.

Obviousness

5. It remains to be decided whether the claimed subject-matter is obvious having regard to the documents on file.

5.1 In D7, there is no hint, that negative effects by water rinsing may occur when the hair is subjected to a lanthionizing step and that they can be avoided by applying a deswelling composition according to step (b) of claim 1 without an intermediate rinse.

5.2 The appellant argued that documents D2 and D5 in combination with D7 rendered the claimed subject-matter obvious.

5.2.1 D2 discloses a process for the deformation treatment of keratin fibres, in which the keratin fibres are exposed to the action of a reactive reducing solution which contains reducing agents to break open the cystine linkages present in the fibres. A rinsing is carried out after the action of this solution and the fibres are exposed to the action of an oxidising agent in order to form cystine linkages again. Another rinsing is carried out where appropriate. Irreversible damage to the fibres is effectively prevented according to D2 by rinsing, after the exposure to the reducing solution, with an aqueous solution which has the effect that at no time during the rinsing process is the diameter of the fibres more than 30% larger than at the end of the reduction step (compare claim 1 and abstract). The solutions preferably used for rinsing have an osmotic pressure of more than 4.5 x 10**(5) Pa compared to distilled water at 25ºC (page 5, lines 17 and 18). Suitable compounds are specified in table 5, pages 12 and 13 and include salts and sugars. Preferred solutions contain sodium chloride in an amount of 10 to 350 g/l (claim 9). When using the rinsing solution of D2 a swelling of the hair fibres can effectively be avoided (page 4, lines 42 and 43) as illustrated by Fig. 1 and Fig. 2.

5.2.2 D5 concerns a thesis which describes the swelling behaviour of human hair (see title). The swelling behaviour of hair using permanent wave systems on the basis of thioglycolate, which is a reducing agent, is investigated (summary page 93, first paragraph). As shown in Fig. D1 to D4, an increase in the pH value of the reducing agent from 8 to 10 enhances the swelling considerably. Although the pH of the reducing solution has an effect on the swelling (page 93, second paragraph), the results presented in D5 are based only on a reducing process, in which the pH is at most 10 (see point 2.2 above).

According to D5, when rinsing out the reducing agent from the hair with water, a strong osmotic swelling occurs (page 93 and Fig. D7 and D8 on pages 71 and 72). By the addition of a salt to the rinsing solution, the osmotic swelling no longer occurs and damage to the hair surface is avoided (page 93, last paragraph and page 94, first and second paragraphs). Hence, the teaching in D5 that by using salt solutions to avoid the negative effects of rinsing are avoided, is similar to that of D2.

5.2.3 However, there are no experiments in D2 or D5, which concern a lanthionizing process with a non-reducing base having a pH of typically 12 to 13.5. In the permanent wave processes as illustrated by D2 and D5, the cystine bonds are cleaved to cysteine bonds and afterwards reinstalled through oxidation (see D2), whilst in the lanthionizing step of the claimed subject-matter lanthionine bonds are irreversibly formed (see patent in suit, page 2, lines 12 to 14; D3 page 14). Thus, in a lanthionizing process in contrast to a permanent wave process with a reducing agent, completely different chemical reactions are involved. For example, the reducing reaction itself (cleavage of cystine bonds) has an enfluence on the degree of swelling, since D5 describes a direct connection between the degree of swelling and the degree of reduction (page 93; page 77, last paragraph). Even if D5 shows that the swelling is also affected by the pH values (see Fig. D1 to D4), there is, however, no indication in the cited prior art, what might happen when the hair is subjected to a treatment with a non-reducing base (emphasis by the board) having a high pH of typically 12 to 13.5 as used in a lanthionizing process which is then rinsed out.

5.2.4 The appellant argued that the test results shown in Fig. 1 and 2 of D2 are similar to those shown in Fig. 1 and 2 of the patent in suit. These results showed that by lanthionizing hair damage occurred in a similar way to that resulting from a permanent wave process and that these negative effects could be avoided by the same technical features disclosed in D2.

5.2.5 However, the test results of the patent in suit go back to experiments on which the claimed invention is based which have not been made available to the public before the priority date. Since D2 and D5 concern a quite different chemical process, it is hindsight reasoning to speculate from D5 or D2 what hair damage might occur when only a lanthionizing step and an additional rinsing with water is involved.

5.2.6 Furthermore, according to D5, a swelling of more than 116% already causes an irreversible damage to the hair cuticle (page 83), so that there is no incentive for the skilled person to consider any further steps to remedy the negative effects of lanthionization at or above such a high swelling degree, which would normally be surpassed by a lanthionizing process according to the claimed subject-matter (see swelling degree of above 120% in Fig. 2 of the patent in suit).

5.3 The only way for the skilled person to clarify the yet unknown swelling behaviour during the conventional lanthionizing process would be to make scientific investigations in that respect. Such investigations would amount to a research program similar to that shown in the thesis D5 for permanent waving with a reducing agent. However, there is no incentive in the prior art to make such investigations and indeed in that respect experiments have never been made in the cited prior art. The results of such research are not something that the skilled person can derive in an obvious manner from the prior art.

5.4 Consequently, the skilled person could not foresee from the documents on file that the conventional lanthionization process with strong alkalis and rinsing with water could be improved by using without an intermediate rinse a deswelling step. Since there is no hint in the prior art for any experimental evidence, on which the claimed subject-matter is based, there is no incentive for the skilled person to apply any of the proposals known for hair reducing systems of D2, D3 (see point 3.4 above) or D5 to the different lanthionizing process. Consequently, the skilled person would not combine the teaching of D7 with that of D2, D3 and/or D5 to arrive at the claimed subject-matter, since without experimental evidence there was no reasonable expectation of success.

5.5 Although D1 concerns a two stage process for straightening hair, wherein in the first step alkali hydroxide is applied, a swelling/penetration composition is applied in the second step quite in contrast to the deswelling step b) as specified in granted claim 1 (see point 2 above). The other cited prior art documents do not come closer to the claimed subject-matter than those discussed above and neither by themselves nor in combination with other cited documents, do they provide any pointer to the invention now claimed.

5.6 Hence, the claimed subject-matter is not made obvious by the cited prior art documents and involves an inventive step (Article 56 EPC).