T 0703/06 (Impregnated sheet/KAO) 12-12-2008

Procedural issues

1. At the oral proceedings before the Board, during the discussion of the parties' arguments and requests relevant under Article 83 EPC 1973, the Respondent presented for the first time some additional data in order to prove that also the commercially available sheets used in the patent examples possessed all the features relevant to the invention.

However, the Appellants objected to the introduction of these data as unjustifiably belated, because, in their opinion, the relevance of the fact that the patent in suit did not provide complete technical information as to the features of the used commercial sheets and, in particular, to their reflectance, was already evident from the Appellants' statements setting out the grounds of appeal.

Since the Respondent did not dispute this fact and did not provide any justification for the late filing of such data, the Board finds that these latter are not to be admitted into the proceedings (RPBA Article 13(1)).

Main request (patent as maintained by the Opposition Division)

2. The Board finds the claimed subject-matter sufficiently disclosed. Since the Respondent's requests cannot succeed on other grounds as explained here below, no reasons need to be given in respect of this finding.

3. Inventive step for the subject-matter of claim 1 (Articles 56 EPC 1973)

3.1 Claim 1 defines the use for make-up removal of an impregnated cleansing sheet (i.e. a wet wipe) made by impregnating a non-woven support sheet "(c)" having the structural characteristics "(1)" to "(5)" with a cleansing aqueous composition containing a nonionic surfactant "(a)", a polyhydric alcohol or glycol "(b)" and a salt "(d)" (see above section II of the Facts and Submissions).

3.2 The Board notes that according to the patent in suit the claimed subject-matter aims at solving two sorts of technical problems: i.e. those related to the technical advantages attributed to the skin cleansing composition impregnating the sheet (see e.g. paragraph [0006] of the granted patent, in particular in the portion reading "…it has been found that a skin cleansing sheet obtained by impregnating a sheet with an aqueous composition containing a specific nonionic surfactant and a polyhydric alcohol or glycol ether has high detergency and detergent speed to oily smears such as smears of make-up and sebum and low irritativeness to the skin, gives users a pleasant feeling upon use, and moreover has good handling property and stability. It has also been found that when a certain amount of a salt is added to the aqueous composition, not only the detergency and detergent speed are more enhanced, but its stability is also improved, and that this salt-containing aqueous composition is excellent for a skin detergent composition even when it is used by an ordinary washing method, to say nothing of the case where it is impregnated into a sheet for use, thus leading to completion of the present invention") and those disclosed in paragraph [0030] as resulting from the features of the support sheet (i.e. excellent retention of the aqueous detergent composition, high detergency of oily smears, scarce strike-trough and pleasant feeling to the user).

The Board notes that these technical problems are typical of the technical field of wet wipes and in particular of those wet wipes that are designed to be suitable for cleansing the facial skin.

The Respondent has considered equally relevant the prior art wet wipes disclosed in document (23) as well as those disclosed in document (32).

The Board notes that document (23) only briefly envisages the removal of make-up, but is rather focused on the biodegradability and disruption properties of the wipes upon disposal after use, as evident from the examples and the description at the bottom of page 7.

On the contrary, document (32) explicitly indicates (see e.g. page 2, lines 4 to 6 and lines 39 to 43) that the wet wipes disclosed therein are particularly suitable for cleansing skin, in particular facial skin, because they comprise an aqueous cleaning liquid and a non-woven fibrous substrate providing superior cleaning ability and softness to the skin of the user. Therefore, the Board finds that the wet wipes of document (32) represent a more reasonable starting point for the assessment of an inventive step than the wipes known from document (23).

3.3 The Board concurs with the Respondent that the claimed use requires the application of wet wipes that differ from the wet wipes of document (32) for

a) the reflectance of at least 45% of the support sheet

and

b) the specific kind of impregnating composition.

3.4 As to the technical effect possibly produced by the distinguishing feature a), the Respondent has attributed thereto the achievement of superior AST properties, i.e. the sole of the advantageous technical effects mentioned in paragraph [0030] that the patent itself expressly links to the high reflectance of the support sheets (see paragraph [0038] of the patent in suit). According to the Respondent's submissions there existed a correspondence between the required sheet reflectance and the improved AST properties that would be demonstrated by the photographic evidence of document (37). This correspondence would be due to the fact that both the sheet reflectance and the AST properties required a limited porosity of the support sheet.

The Board finds credible that, as also evident from the photographs of document (37), the cleansing sheets used according to present claim 1 display AST properties superior to those achieved when using similar wipes based on sheets differing from the former ones only for their higher superficial porosity and, thus, their lower reflectance.

However, as convincingly observed by the Appellants (see above section VIII of the Facts and Submission), it is the patent itself that expressly acknowledges that the AST properties of a sheet also depend on structural features thereof, such as the basis weight of the sheet (see paragraph [0034]) and the hydrophilicity and the orientation of the fibres in particular in the plies forming the interior of the sheet (see paragraph [0039]), that are evidently unrelated to the sheet superficial porosity and, thus, to its reflectance. Already for this reason, it becomes evident that the claimed subject-matter embraces wet wipes that even though having the same reflectance must nevertheless display quite different AST properties (e.g. because of the presence of an intermediate ply of very different hydrophilic qualities, or because of a different orientation of the fibres favouring the smear permeation, or because of a different basis weight). Conversely, even the sheets of the prior art, such as those embraced by the disclosure of document (32), that possibly display a reflectance of less than 45% may nevertheless possess one or more of these other structural characteristics that positively influence the AST properties (see document (32) page 5, lines 43 to 48, page 8, lines 20 to 25). Therefore, also the prior art sheets of lower reflectance may be expected to achieve AST properties that are comparable or even better than those possibly displayed by the support sheets of higher reflectance as required in present claim 1.

Moreover, the Respondent has conceded at the oral proceedings before the Board that the reflectance of at least 45% does not necessarily imply the achievement of a specific minimum level of AST properties (see above section IX of the Facts and Submission). This amounts to an implicit acknowledgement that the claimed use may produce AST properties that are possibly comparable to - or even worse than - those already achieved when using the wet wipes of possibly lower reflectance of the prior art, such as those possibly embraced by the disclosure of document (32).

Hence, the Board finds that the patent as a whole does not render convincing the alleged achievement over the whole breadth of the claim of improved AST properties.

3.4.1 The Respondent has then submitted that the invention would actually be based on the surprising finding that a high reflectance of the support sheets could favour the achievement of superior AST properties.

In the Board's opinion this submission, independently on any consideration as to its credibility, leaves unchanged the fact that the sheets according to the invention, although having a reflectance of at least 45%, may nevertheless display a level of AST properties possibly comparable or even inferior to those displayed by the sheets of document (32) of lower reflectance, but possessing, for instance, higher basis weight or a more hydrophobic intermediate layer.

3.4.2 Hence, the Board concludes that the distinguishing feature a) of point 3.3 above does not ensure to the claimed use any technical advantage vis-à-vis the prior art credibly existing over the whole ambit of the claim.

3.5 It remains therefore to be considered whether or not the specific cleansing composition mentioned in the claim as maintained (i.e. the distinguishing feature b) of point 3.3 above) provides a credible technical advantage.

It is undisputed that the possibly relevant advantages are those mentioned in paragraph [0006] of the patent in suit (see also above point 3.2). The Board notes however that this paragraph contains a number of qualitative expressions such as "… has high detergency and detergent speed to oily smears such as smears of make-up and sebum and low irritativeness to the skin, gives users a pleasant feeling upon use, and moreover has good handling property and stability" which appear to simply enunciate those requirements that qualify cleansing compositions as suitable for removing the make-up applied onto the skin. Indeed, none of these expressions implies the achievement of a level of such properties that is superior to those already achieved by the compositions for cleansing make-up already known in the prior art.

The only portion of paragraph [0006] that could possibly express the allegation of a previously unachieved combination of properties is the portion referring to the advantageous effects of the salt ingredient "(d)" and reading "It has also been found that when a certain amount of a salt is added to the aqueous composition, not only the detergency and detergent speed are more enhanced, but its stability is also improved, and that this salt-containing aqueous composition is excellent for a skin detergent composition …" (emphasis added by the Board).

In this respect the Board notes that the patent in suit contradicts the alleged criticality of the salt ingredient of the cleansing composition, already for the undisputed fact that most of the patent examples (see e.g. Tables 1, 2 and 4) prove the excellent results achieved by salt-free detergent compositions.

Therefore, also this alleged technical effect is found not convincing in view of the patent as whole.

Accordingly, the Board concludes that the sole technical effect credibly produced by the feature b) distinguishing the claimed use from the use of the prior art wet wipes for facial cleansing of document (32) is that of rendering the former specifically suitable for make-up removal.

Moreover, the Respondent did not provide any evidence of a technical effect linked to the combination of features a) and b).

3.6 Hence, the Board finds that the sole technical problem credibly solved by the claimed subject-matter vis-à-vis the use for facial cleansing of the wet wipes disclosed in document (32) is that of providing a method for make-up removal.

3.7 Therefore, the inventive step assessment boils down to the question whether or not the skilled person, starting from document (32) and aiming at a method for make-up removal, would have considered it obvious to solve such problem by selecting among the support sheets disclosed in document (32) one having a reflectance of at least 45% and by implementing the generic instruction also contained in this citation so as to arrive at an impregnating composition fulfilling all requirements given for the composition in claim 1 as maintained.

3.7.1 In respect of the sheet reflectance of at least 45% the Board notes that it is undisputed that the reflectance is a conventionally used parameter for measuring the level of whiteness of paper sheets or similar materials, that a high reflectance is evidently only observable in white or lightly coloured sheets and that conventional wet wipes for facial skin cleansing are normally made from white or light coloured sheets, because whiteness is in general regarded as an attractive feature by the user. Moreover, the Respondent itself has convincingly maintained that a skilled person would know how to prepare sheets with a reflectance of more than 45%. Hence, and taking into account that nothing in document (32) suggests that the sheets disclosed therein are much less white or much more porous on their surface than any other conventional sheet for facial cleansing, it appears credible to the Board that sheets with very high reflectance are, if not already specifically exemplified in document (32), at least encompassed among the conventional variants that are rendered available to the skilled person upon reading the technical teaching of this document.

Therefore, no inventive skill of the skilled person is required for arbitrarily selecting among the sheets available to him upon reading document (32) those provided with an arbitrarily high reflectance, i.e. an arbitrarily high level of whiteness, thereby arriving at support sheets according to present claim 1.

3.7.2 The Board finds that it was obvious for the skilled person to solve the existing problem by impregnating the white or light coloured sheets of document (32) with whatever cleansing compositions previously disclosed in the prior art as being particularly suitable for make-up removal. Hence, it was also obvious to solve the posed problem by using as impregnating composition the skin cleansing agent of document (1) that is explicitly qualified as particularly suitable for make-up removal (see e.g. column 1, lines 5 to 10; column 2, lines 13 to 24; the examples and claim 9).

It is undisputed that such prior art composition satisfies all the requirements of the composition defined in claim 1 as maintained with the only exception that this prior art cleansing agent comprises none of the salts defined under "d)" in present claim 1.

However, it is common general knowledge, as well as a specific teaching provided e.g. by document (5) (see page 3, lines 32 to 41), that electrolytes such as sodium chloride or citrate are preferably to be added in an amount of preferably between 0.2 to 5% to cosmetic compositions for facial cleansing and in particular also for make-up removal, in order to achieve less irritation to the eyes.

Hence, the Board concludes that the skilled person, aiming at rendering available a method for removing make-up and starting from the use of the wet wipes of document (32), would have considered it obvious to use for such aim in particular the whiter sheets according to such document impregnated with any of the cleansing agents disclosed e.g. in the examples of document (1) as specifically suitable for make-up removal, as well as to add therein any of the anti-irritation salts that are known (either from the common general knowledge of the person skilled in the art or from the specific teaching in document (5)) to be effective in skin cleansing compositions. By doing so the skilled person would have arrived at the presently claimed subject-matter without exercising any inventive ingenuity.

3.8 The Respondent has argued that there would be no pointer leading the skilled person to the specific combination of document (32) with documents (1) and (5) and/or to the selection of the sheets with a reflectance of at least 45%. The relevant question would be what the skilled person "would" do when searching for further wet cleansing sheet suitable for removing make-up, as distinct to what he "could" do.

3.9 The Board notes however that, when the technical problem is simply that of providing a further method for make-up removal, any of the conventional modifications or combinations of features previously used for make-up removal represents an equally suggested or obvious solution to the posed problem. It is also established jurisprudence of the Boards of Appeal that the simple act of arbitrarily selecting one among equally obvious alternative variations is deprived of any inventive character (see e.g. T 939/92 of 12 September 1995, OJ EPO 1996, 309, No. 2.5.3 of the reasons). Therefore, even if the skilled person could as well have taken into consideration other combinations and/or conventional modifications of the prior art, the existence of such other obvious solutions does not render inventive the one leading to the presently claimed subject-matter.

3.10 Hence, the Board concludes that the subject-matter of claim 1 as maintained does not comply with the requirements of Article 56 EPC 1973 and, thus, that the Respondent's main request is not allowable.

First, second and third auxiliary requests

4. Claim 1 of the first auxiliary request and claim 1 of the second auxiliary request differ respectively from that of the main request only in that the cellulosic content of the support sheet is required to be at least 75% by weight or at least 100% by weight (see above section V of the Facts and Submissions).

The Respondent submitted by referring to Table 4 of the patent in suit that these higher cellulose amounts resulted in an improved retention of the aqueous cleaning composition.

Beside the fact that, in the Board's opinion, the skilled person is certainly aware that the more a sheet is made of cellulosic fibres the more it is hydrophilic and, thus, the more it is prone to absorb aqueous cleansing compositions, the predictability of the effect allegedly proved in table 4 of the patent in suit would also be evident already from document (32) itself. Indeed, this document explicitly reminds the skilled reader that hydrophobic fibres are less prone to absorb aqueous cleaning compositions (see page 3, lines 48 to 51). The Board has noted that this document describes as preferred the combination of aqueous cleansing compositions with sheets containing superficial hydrophobic fibres because this combination results in a superior ability of the loosened fibre portions to remain away from the sheet surface (see at line 50 of page 3 "… the desired effect may be achieved …" emphasis added by the Board). Nevertheless, the overall technical disclosure provided by this citation implicitly embraces also the possibility of using exclusively hydrophilic cellulosic fibres even in combination with an aqueous cleansing composition, at least in the case where the former are provided with a sufficient suitable stiffness (see page 3, lines 40 to 47). Accordingly, the possibility of using sheets containing only hydrophilic (i.e. cellulosic) fibres is expressly mentioned at page 5, lines 36 to 39 of document (32) in general terms, i.e. without any restriction as to the aqueous or non aqueous nature of the composition to be used therewith.

Hence, no inventive ingenuity is required from the skilled person for predicting that an increase of retention of the aqueous cleansing composition could be achieved by using among the sheets described in document (32) those made exclusively of hydrophilic fibres, because he also learns from this document how to compensate the consequent reduction of the ability thereof to protrude from the sheet surface, i.e. by appropriately adjusting the flexural stiffness of the fibres used.

Therefore, no inventive step is implied by the additional restrictions as to the cellulosic nature of the sheet introduced in claim 1 of the first and of the second auxiliary request.

5. Claim 1 of the third auxiliary request differs from that of the main request only in that the chemical structure of the nonionic surfactant is limited to the ethoxylated esters of monocarboxylic fatty acids according to the formula "(1)" (see above section V of the Facts and Submissions).

The Board notes that ethoxylated esters according to this formula are already present in several of the examples of skin cleansing agents described in document (1) (see the PEG400 monoisostearate ingredient in examples 2 to 4 and the PEG400 monooleate ingredient in example 8).

The Respondent has submitted that in examples 2 to 4 of document (1) the amount of nonionic PEG400 monoisostearate component would be less than 5 wt.% and, thus, concluded that also for this reason the compositions of this citation would not comply with the nonionic surfactant definition in claim 1 of third auxiliary request request.

This conclusion is not convincing already because at least example 8 of this citation contains indisputably 5 wt.% of PEG400 monooleate. Moreover, it is not necessary to give details of the reasons that have brought the Board to the conclusion that the Respondent's interpretation of the disclosure of the examples 2 to 4 of document (1) is erroneous, because even if none of these examples would actually contain at least 5 wt.% of this specific group of nonionics, still column 2, lines 44 to 49, of the same document explicitly mentions for such ingredient a maximum amount of up to 30 wt.%. Hence, this citation is still found to suggest the possibility of increasing up to 30 wt.% of the composition the amount of e.g. the PEG400 monooleate or monoisostearate ingredients used in the examples of document (1).

Therefore, and since document (1) indisputably specifies that these surfactants are preferred because they reinforce the cleansing effects (see column 2, lines 44 to 49), their use in an amount of up to 30 wt.% would have been obvious to the skilled person, in the Board's view, even if their additional bonus effect of rendering the claimed subject-matter less irritative to the skin would have been unpredictable.

Nevertheless, the Board wishes to stress that the skilled person would have expected that the use of the cleansing compositions of document (1) more rich in ethoxylated esters of monocarboxylic fatty acids results in lower irritativeness to the skin. Indeed, this effect of the compositions based on such nonionic surfactants or similar ones is not only expressly disclosed in document (2) (see column 1, lines 6 to 9; column 3, lines 31 to 47) or (6) (see page 1, lines 11 to 15, and from page 9, line 36 to page 10, line 5) but presumably forms part of the common general knowledge of the skilled detergent formulator.

The Board finds therefore that also the remaining first to third auxiliary requests of the Respondent do not comply with the requirements of Article 56 EPC 1973 and, thus, concludes that none of them is allowable.