T 1395/06 (Germicidal hard surface cleaner/RECKITT) 30-09-2008

1. Formal issues

1.1 The Respondent contested the admissibility of documents (9), (10), (11), (12a) and (17), submitted by the Appellant for the first time during appeal (see point VII above).

The function of the appeal proceedings is mainly to give a judicial decision upon the correctness of the decision given by the department of first instance. Such a review can, in principle, only be based on the reasons already submitted before that department and it is normally not the function of a Board of Appeal to examine and decide upon issues which have been raised for the first time during appeal proceedings (see G 10/91, OJ EPO 1993, 420, point 18 of the reasons).

On the other hand, by virtue of Article 114(1) EPC, the Boards have to examine the facts on their own motion when the facts are both alleged and properly substantiated by the parties.

When using these powers they can, however, exercise their discretion, conferred upon them by Article 114(2) EPC, to disregard facts and evidence which are not submitted in due time by the parties concerned (see also Case Law of the Boards of Appeal, 5th edition 2006, VII.D.6.4, pages 610 and 611 and RPBA Art. 12(4)).

When deciding whether a fact or piece of evidence was submitted in due time the Boards need to take into account the circumstances of the case, in particular whether the party concerned could have presented its case in an earlier phase of the proceedings or if it had good reasons for not doing so. Only if there are very special reasons for doing so, can a party introduce new facts and evidence at a late stage in the proceedings.

In exercising their power of discretion the Boards have to take into account on the one hand the public's as well as the parties' common interest that opposition proceedings should be speedily concluded, an interest that clearly encompasses appeal proceedings as well, and on the other hand the interest of the parties in presenting their case in a complete manner. The interest in a speedy procedure is best served if the patentee is made aware as soon as possible of the opponent's full and complete case, which he needs to address, in order to keep his patent in force. Furthermore, it has to be taken into account the fact that the retention of information which could have been relevant to the maintenance of the patent at the opposition period and the introduction of such information at a later stage, i.e. by presenting the information "peacemeal wise" much later at the appeal proceedings, lead to a dilatory effect on the procedure and violate the interests of the public in general.

1.2 Document (9) was submitted with the statement of the grounds of appeal for explaining the physical characteristics of fenchyl alcohol, one of the components used in the composition disclosed in document (8), also a document cited with the statement of the grounds of appeal, the admissibility of which was not contested by the Respondent.

This document, bearing a datum of 1 January 2004, well after the priority date of the patent in suit, is an excerpt from the "Food Chemicals Codex", a list of known food additives, which illustrates in the present case the known physical qualities of fenchyl alcohol, a compound which was well known at that priority date; therefore, it also represents the common general knowledge of the skilled person about the qualities of this specific chemical component at the priority date of the patent in suit. Therefore, its information is considered as belonging to the prior art.

Furthermore, the Board holds that the information contained in this document is not one which could have taken the Respondent by surprise and could have led to a dilatory effect on the procedure since it has been submitted for explaining a particular aspect of document (8), the admissibility of which was not contested.

Therefore, the Board decides to consider the content of this document.

1.3 Document (10) is a letter bearing a datum of 5 January 2005, well after the priority date of the patent in suit. Therefore, its disclosure cannot be considered to belong to the prior art.

Document (11), though bearing a datum of 22 January 1982, is a document retrieved on the Website of the U.S. EPA which was updated on 2 May 2006; since it has not been clarified which parts of the document were modified after the priority date of the patent in suit, this document cannot be considered to report a disclosure belonging to the prior art.

Since these documents are not part of the state of the art, there cannot be any interest of the parties or of the public for them to be considered in these proceedings.

Therefore, documents (10) and (11) are to be disregarded in this decision under Article 114(2) EPC 1973.

1.4 Documents (12a) and (17), which were submitted more than one year after the Respondent's reply to the statement of the grounds of appeal and about two months before oral proceedings, had been filed in order to deal with some issues raised for the first time by the Respondent in its reply.

The principle of equal treatment of the parties and the interest of both parties to present all their arguments imposes that these documents are considered in the proceedings, in particular as they could be considered without any difficulty by the Board and by the Respondent.

Therefore, the Board finds that these documents are to be admitted (see also RPBA Art. 13(1)).

2. Main request

2.1 Article 123(2) EPC

Claim 1 consists in a combination of the features of claims 1, 5 and 7 as granted, which claims correspond to claims 1, 5 and 8 as originally filed.

In the original disclosure claim 5 depended directly on claim 1 so that the combination of the features of these claims was explicitly disclosed. Moreover, claim 8 was dependent on all the preceding claims. Therefore, there was also a disclosure of the feature of claim 8 in combination with those of claims 5 and 1.

The Board thus finds that the original documents contained an explicit disclosure of a combination of the features of claim 1 according to the main request, which combination thus cannot be considered to amount to a selection from different lists as argued by the Appellant.

Therefore, claim 1 according to the main request complies with the requirements of Article 123(2) EPC.

2.2 Article 83 EPC 1973

2.2.1 It is the established jurisprudence of the Boards of Appeal that the requirements of sufficiency of disclosure are only met if the invention as defined in the independent claim can be performed by a person skilled in the art in the whole area claimed without undue burden, using common general knowledge and having regard to further information given in the patent in suit (see decisions T 409/91, OJ EPO 1994, 653, point 3.5 of the reasons; T 435/91, OJ EPO 1995, 188, point 2.2.1 of the reasons).

As taught in the patent in suit a germicidal composition having cleaning and disinfecting properties can be prepared by using all the essential components of claim 1 and by adjusting the pH of the composition in the range required by the claim (see paragraphs 9 to 36).

2.2.2 As regards the terms "germicidal" and "disinfecting", used in the patent in suit in claim 1 and in the definition of the technical problem underlying the invention (paragraph 4), respectively, it has not been disputed that these terms were known to the skilled person. In fact, documents (14) (page 168: term "Germicide"), (15) (Paragraph "Germicides, Disinfection, Antisepsis", lines 1 to 9) and (16) (page 18, lines 1 to 6 below "Disinfectant" and page 21, lines 1 to 2 below "Germicide") show that the skilled person would have understood that a germicidal composition or a composition having disinfecting properties is one able to kill microorganisms including most recognized pathogenic microorganism.

It has also not been disputed by the parties that there existed standard tests capable of assessing the ability of a composition to kill microorganisms and that some of these tests like, e.g., the AOAC Use-Dilution Test Method used in the patent in suit for evaluating the antimicrobial efficacy (paragraphs 68 and 69), were requested by authorities like the U.S. EPA in order to label commercialized compositions as "disinfectants" according to the specific regulations existing in that country. Document (4) also used such a test in relation to the definition of "disinfectant" (page 3, lines 3 to 9).

However, the patent in suit does not contain any indication that the words "disinfecting" or "germicidal" should be interpreted in relation to the results obtainable by the above mentioned test method, which had been used in the patent only for showing that the tested compositions had excellent disinfecting efficacy (page 13, line 56).

The Board thus finds that the patent in suit does not require that the composition claimed must show a specific minimum rate of germicidal or disinfecting activity, as submitted by the Appellant, and that the words "disinfecting" and "germicidal" are only descriptive terms.

2.2.3 In the Board's view the term "germicidal" in claim 1, similarly to the term "cleaning" also contained in the claim, outlines a quality of the claimed composition.

Therefore, this term only requires that the composition, when properly used, should be able to kill microorganisms (in the specific case on a hard surface) without implying any restriction as to the extent of killing, which effect, however, should be consistent enough to be recognisable by the skilled person by means of standard methods of control.

Therefore, the Board cannot agree with the Appellant's submission that in such a case the term "germicidal composition" would encompass any composition able to kill a single microorganism, since such a minimal effect would not be sufficient for being recognisable by the skilled person as a "germicidal or disinfecting effect" by using standard methods of control; to the contrary, such a composition would be classified as not having disinfecting properties.

Moreover, it is undisputed that a skilled person would have easily recognised if the composition prepared has a disinfecting effect by using standard methods of control. Since the patent in suit does not require any minimum level of disinfecting there is also not a quantitative borderline at which the skilled person would have to decide if a composition falls under the scope of the claim or not.

2.2.4 In the Experimental Report (7a) various compositions having all the essential components of claim 1 and a pH according to the claim were tested for their ability to kill Staphylococcus aureus according to a variant of the AOAC Use-Dilution test Method by using only 10 instead of 60 substrates. All these compositions show a 100% disinfecting performance of 0/10 (10 complete killings out of 10) with the exception of the compositions of test 3 at pH 4.95 and of test 4 at pH 5.0 showing a performance of 1/10 and that of test 6 at pH 4.99 showing a performance of 4/10. However, also in these three cases the disinfecting effect exceeds the 50% of the substrates tested so that all compositions can be considered to have a considerable disinfecting effect that would be recognised by the skilled person.

Therefore, this experimental report confirms that the skilled person would be able to reproduce the invention without undue burden by following the teaching of the patent in suit.

The Board concludes that the invention is sufficiently disclosed.

2.3 Novelty

The decision of the department of first instance that the claimed subject-matter is novel over the cited prior art (see point III above) has not been contested by the Appellant.

2.4 Inventive step

2.4.1 The invention of claim 1 relates to a germicidal aqueous hard surface cleaning composition having a pH of from 5.0 to 1.0.

As explained in the description of the patent in suit, various hard surface cleaning agents had been produced and were known in the art. For example, highly acidic cleaning agents comprising strong acids, such as hydrochloric acid, had been found useful in the removal of hard water stains; however, the presence of strong acids was known to be an irritant to the skin and to be a potential toxicological danger. Also, few compositions provided any germicidal or sanitizing effect to the treated hard surfaces (paragraph 2).

Therefore, the technical problem underlying the invention is formulated in the patent in suit as the provision of improved cleaning compositions which are effective in providing a disinfecting effect and facilitate the removal of soap scum stains and hard water stains from hard surfaces, thereby showing minimal irritability to the eyes, skin or mucous tissues (paragraph 4).

The Board has no doubt that the combination of these technical problems reflects the real goal of the invention as the examples of the patent in suit try to show the superiority of the claimed compositions in terms of removal of soap scum stains and hard water stains from hard surfaces (paragraphs 48 and 49), of reduced irritability to the eyes, skin or mucous tissues (paragraphs 60, 63, 65 and 66) and of antimicrobial efficacy (paragraphs 68, 69).

2.4.2 The most suitable starting point to be selected for assessing inventive step of a claimed subject-matter is, according to the jurisprudence of the Boards of Appeal of the EPO, not a subject-matter (in the present case a composition) having the most possible number of features in common with the claimed one but, if possible, a technically realistic starting point contained in a document dealing with the same or similar technical problem as the claimed invention and disclosing a subject-matter having a similar use and effect as the subject-matter claimed in the patent in suit (see Case Law of the Boards of Appeal of the EPO, 5th edition 2006, points I.D.3.1 to I.D.3.3 on pages 121 to 123).

Document (8) concerns the provision of a pine oil hard surface cleaner having a broad spectrum disinfecting effect, not containing quaternary ammonium compounds which are highly irritating to the skin, eyes etc., being safe for the consumer and having cleaning efficacy on soap scum soils (column 1, lines 5 to 27, column 2, lines 32 to 36); therefore, it deals with similar technical problems as all those addressed to in the patent in suit and qualifies as a suitable starting point for the evaluation of inventive step.

To the contrary, documents (2) and (3) deal explicitly only with one of the technical problems addressed to in the patent in suit. In particular, document (2) deals only with the technical problem of providing an improved hard surface cleaner for glass or ceramic surfaces having excellent cleaning performance, for example on soap scum, and a streak-free drying effect (page 2, lines 22, 23, 36 to 39 and page 5, lines 15 to 17) whilst document (3) deals with that of providing hard surface cleaning compositions providing removal of soap scum and hard water deposits (page 1, lines 17 to 20).

These two documents are silent about the possible disinfecting activity and irritability to the skin, eyes or mucous tissues of the disclosed compositions. The Appellant's allegation that the compositions of document (2) and (3) would be recognised by the skilled person to have disinfecting properties because of their acidic pH and the presence of citric acid which is known to have a disinfecting activity (see document (2), example 1 and document (3), claim 1 and example II), has been contested by the Respondent and has not been supported by the submission of any evidence.

The Appellant referred to the acidic compositions of document (8), which are disinfectant and contain organic acidic sequestering agents (column 1, lines 24 to 32). However, this document cannot be considered to be an evidence that acidic compositions were known to have disinfecting properties or that acidic sequestering agents were known at the priority date of the patent in suit to provide disinfecting properties to a composition since it explicitly teaches that the organic sequestering acids had not been used before as a component of a disinfectant cleaning composition and that the obtained disinfecting effect was considered to be a true synergistic effect, i.e. to be an unexpected effect, obtained because of the combination of pine oil and organic acidic sequestering agent, which combination is not present in documents (2) and (3) (see document (8), column 2, lines 11 to 20).

The Appellant referred also to document (4) disclosing disinfectant compositions which have an acidic pH and may also comprise, e.g., citric acid (claim 1, pages 18 to 19 and page 15, lines 13 to 22). However, this document requires the presence of a specific antimicrobial agent which is a carboxylic acid system consisting of octanoic acid, i.e. an organic acid which is not a sequestering agent (claim 1 and page 9, lines 4 to 5); moreover, citric acid is used as alternative to other not sequestering acids only for adjusting the pH of the composition in order to achieve an optimal antimicrobial efficacy (page 15, lines 15 to 22) but not for providing by itself additional disinfecting properties to those already provided by the octanoic acid. Therefore, also this document cannot be considered to be evidence that acidic compositions were known at the priority date of the patent in suit to have disinfecting properties or that acidic sequestering agents were known to provide disinfecting properties to a composition.

Since the Appellant did not bring any evidence in support of its allegation, the Board can only conclude that the skilled person would not have considered the compositions of documents (2) and (3) to have disinfecting properties and thus he would not have considered these documents to deal with the technical problem of providing a disinfecting hard surface cleaner.

Therefore, documents (2) and (3) are not suitable starting points for the evaluation of inventive step and could have been selected as starting point only by using hindsight, having already knowledge of the invention.

Finally, document (4), cited in the decision under appeal as possible starting point, is also less suitable than document (8) as starting point, as it concerns only the provision of a composition, e.g. a hard surface cleaner, having disinfecting activity without the risk of food or environmental contamination and it does not deal with the other partial technical problems addressed to in the patent in suit (see page 6, lines 18 to 21 and page 7, lines 14 to 17).

The Board concludes that document (8) is the most appropriate starting point for the evaluation of inventive step.

2.4.3 The technical problem underlying the invention, seen in the light of document (8), is the provision of an alternative hard surface cleaner composition providing a disinfecting effect and removal of soap scum stains and hard water stains whilst minimizing the irritability to eyes, skin or mucous tissue.

As shown in the patent in suit, the claimed compositions have a better cleaning efficiency in the removal of soap scum stains and hard water stains than the commercial formulation "Comet® Bathroom Cleaner" (see table 4, figure 1 and paragraphs 54 and 56) or similar compositions not comprising the acidic sequestrant constituent (and thus having a higher pH), or not comprising the required mixture of hydrophobic and hydrophilic solvents or a surfactant providing a hydrotropic functionality (see table 1, example 8; tables 2 and 5); furthermore, the compositions according to the invention show minimal irritation to eyes, skin and mucous tissues (paragraphs 59 to 67) and an excellent disinfecting performance (table 6); as explained hereinabove (point 2.2.4), also the experimental report (7a) shows that all the tested compositions according to claim 1 have a disinfecting effect.

Therefore, the Board finds that the technical problem underlying the invention has been convincingly solved by means of a composition according to claim 1.

2.4.4 The compositions disclosed in document (8) comprise 1 to 30% of pine oil, which is a hydrophobic solvent as suggested in document (3) (page 6, line 10 in combination with page 8, line 11); 0.05 to 5% of an oil soluble organic acid which can be an acidic sequestering agent; 0.1 to 10% of isopropanol, which is one of the hydrophilic solvents belonging to the class of solvents required by claim 1 of the patent in suit; 0.01 to 2% of fenchyl alcohol, which contrary to the Appellant's submission, cannot be considered to be a hydrophobic solvent since it is not liquid at room temperature but it exists in crystalline form (see document (9), page 562, "fenchyl alcohol", third column); 0.01 to 1% of ammonium hydroxide; 0.01 to 2% of ethylene diamino tetraacetic acid, another acidic sequestering agent; various optional components such as 0.1 to 10% of sodium dodecyl benzene sulfonate, a surfactant having hydrotropic functionality; the balance being water. The pH of the compositions is between 0 and 6 (see column 1, lines 28 to 31; table I).

Therefore, these compositions differ from that of claim 1 according to the patent in suit principally insofar as they do not comprise from 0.1 to 10% of a mixture of hydrophobic and hydrophilic solvents containing a hydrophobic solvent selected from mineral spirits, tripropylene glycol n-butyl ether, propylene glycol phenyl ether, dipropylene glycol n-propyl ether, ethylene glycol phenyl ether, propylene glycol n-butyl ether, and dipropylene glycol n-butyl ether.

Moreover, the compositions of document (8) do not necessarily comprise 1 to 8% by weight of a surfactant providing a hydrotropic functionality, may comprise more than 10% by weight of the mixture of hydrophilic and hydrophobic solvents because of the possible presence of up to 30% of pine oil, may comprise more than 20% of optional components and do not have necessarily a pH between 1 and 5.

2.4.5 As the compositions of document (8) are based on pine oil and require the presence of the combination of pine oil and an oil soluble organic acid which can be a sequestering agent for obtaining the desired synergistic effect (column 2, lines 11 to 15), it does not contain any hint that would have prompted the skilled person to replace part of the pine oil or to add limited amounts of other hydrophobic solvents within the compositional limits required in the patent in suit in order to provide an alternative composition having a disinfecting effect, being capable of removing soap scum stains and hard water stains from hard surfaces and showing minimal irritability to the eyes, skin or mucous tissues; moreover, the compositions of document (8) do not require the presence of a surfactant having a hydrotropic functionality, which is only one of the various optional components of the compositions described therein, which hydrotropic surfactant is to the contrary essential in the invention of the patent in suit for obtaining a good cleaning efficacy, as explained above (point 2.4.3).

Therefore, the teaching of document (8) would not have led the skilled person to the subject-matter of claim 1 of the patent in suit.

2.4.6 Moreover, the skilled person, looking for alternatives to the composition of document (8), would not have found any reason for taking into consideration any of the compositions disclosed in documents (2) and (3), since these documents relate to hard surface cleaners capable of removing soap scum stains and hard water stains which, as explained hereinbefore, would have not been considered by the skilled person to have any disinfecting properties or to be capable of providing minimal irritation to the eyes, skin or mucous tissues.

Since documents (2) and (3) are not relevant for the evaluation of inventive step, there is no need to discuss the results of the experimental data (12) and (13) and the relevance of documents (12a) and (17), related to document (12), which documents concern only the reworking of some examples of documents (2) and (3) and their possible influence upon the evaluation of inventive step.

Therefore, the Board finds that the cited prior art did not contain any guidance which would have led the skilled person to a composition having the whole combination of features of claim 1 in the attempt to solve the technical problem underlying the invention of providing alternative cleaning compositions which are effective in providing a disinfecting effect and facilitate the removal of soap scum stains and hard water stains from hard surfaces, thereby showing minimal irritability to the eyes, skin or mucous tissues.

The subject-matter of the claims according to the main request thus involves an inventive step.