T 1851/08 22-09-2011

I. The appeal by the Patent Proprietors (Appellants) lies from the decision of the Opposition Division posted on 10 July 2008 revoking European patent No. EP-B-1 178 774 in respect of European patent application No. 00 928 812.7, which is based on the International application PCT/US00/12154 filed on 4 May 2000 and published under WO 00/69402. Independent claims 1, 2 and 8 of the patent in suit read:

"1. Antiperspirant compositions comprising:

a) from 30% by weight of cyclohexasiloxane,

b) from 0.1% to 50% by weight of an antiperspirant active,

c) from 0.1% to 50% by weight of a suspending agent, and

d) from 1% to 35% by weight of a nonvolatile polydimethylsiloxane fluid,

wherein the compositions contain less than 1% by weight of cyclotetrasiloxane.

2. Anhydrous antiperspirant compositions comprising

a) from 20% by weight of a cyclohexasiloxane,

b) from 0.1% to 50% by weight of an antiperspirant active, [and]

c) from 0.1% to 50% by weight of a suspending agent, and

d) from 1% to 35% by weight of a nonvolatile polydimethylsiloxane fluid,

wherein the compositions are anhydrous and contain less than 1% by weight of cylclotetrasiloxane.

8. Solid or semi-solid deodorant compositions comprising

a) from 5% to 99% by weight of cyclohexasiloxane,

b) from 0.1% to 50% by weight of deodorant active, and

c) from 0.1% to 50% by weight of a suspending agent,

wherein the compositions are anhydrous and are substantially free of nitrogen-containing polymers and cyclotetrasiloxane, and wherein the compositions are not in liquid form."

II. The Opponents (Respondents) had requested in the notice of opposition the revocation of the patent in its entirety on the grounds that its subject-matter extended beyond the content of the application as filed (Article 100(c) EPC) and lacked novelty and inventive step (Article 100(a) EPC). The following documents were inter alia submitted before the Opposition Division:

D1 WO-A-00/61094

D3 WO-A-00/61096

D4 US-A-5 531 986

D10 Soap, Perfumery & Cosmetics, page 54, July 1998

D11 Cosmetics and Toiletries, vol. 111, page 19, September 1996

D15 Dow Corning® 345 Fluid, Sales Specifications, November 1997 and

D16 Dow Corning® 345 Fluid, Sales Specifications, October 1998.

III. The appealed decision was based on the patent as granted (Main Request) and on an amended set of claims consisting of claims 1 to 7 as granted as an Auxiliary Request which was submitted during the oral proceedings held on 10 April 2008. As regards the ground of opposition under Article 100(c) EPC, the Opposition Division held that the deletion of the upper limit for component (a) did not add any new range which was not already inherently defined in the original claims, because the maximum of 98,8% by weight for constituent (a), resulting from the definition of minima for the other constituents of the composition, was inherently defined in original claims 1 and 2. Hence, claims 1 and 2 of the patent as granted did not extend beyond the content of the application as originally filed. Concerning novelty, claims 8 and 9 of the patent as granted were anticipated by specific formulations disclosed in D1, D3, D4, D10 and D11 which concerned solid or semi-solid antiperspirant compositions containing Dow Corning DC® 345 as source of cyclohexasiloxane. In order to show that the amount of cyclohexasiloxane contained in the cited formulations fell in the range of concentrations defined in claims 8 and 9 as granted, the Opposition Division referred to D15 and D16, which indicated the content of cyclohexasiloxane contained in product DC® 345. Thus, the Main Request was not allowable. The claimed subject-matter of the Auxiliary Request was not objected to lack novelty. As regards inventive step, D4 constituted the closest prior art, in particular the general disclosure in column 2, lines 24-32, as this document also addressed the problem of providing a stable antiperspirant or deodorant composition which leaves a low-residue after application. In view of the examples of the patent in suit, the problem solved over D4 could not be formulated in terms of an improvement regarding stability and/or low residue performance, but merely as the provision of alternative antiperspirant deodorant compositions leaving low residue after application. The solution provided by the patent in suit, which consisted in using less than 1 wt.-% of cyclotetrasiloxane and employing cyclohexasiloxane and non volatile polydimethylsiloxane in the amounts defined in claims 1 and 2, was comprised within the teaching of D4 and therefore obvious to the skilled person. Thus, the Auxiliary Request was not allowable, as its claims 1 and 2 lacked an inventive step.

IV. With the statement setting out the grounds of appeal dated 20 November 2008, the Appellants submitted two sets of claims as their Main and First Auxiliary Requests. The claims according to the Main Request differed from those as granted in that the amount of cyclohexasiloxane had been restricted in claim 8 to the range from 30% to 75% by weight. The set of claims according to the Auxiliary Request corresponded to that of the Auxiliary Request underlying the impugned decision, i.e. consisted of claims 1 to 7 as granted.

V. The parties were summoned to attend oral proceedings on 22 September 2011 and a Board's communication dated 8 August 2011 was issued. The Appellants with their electronically filed submissions of 22 August 2011 announced that they would not attend the Oral Proceedings. They confirmed their requests and submitted amended pages 1 to 7 and 10 to 17 of the description adapted to the claims requests on file. Oral proceedings, held on 22 September 2011 in the announced absence of the Appellants, were continued in accordance with Rule 115(2) EPC.

VI. The Appellants' arguments, as far as they are relevant for the present decision, can be summarised as follows:

(a) The amendment to claim 8 as granted, which was based on the original disclosure, in particular on page 6, lines 1-4, restored novelty.

(b) It was not denied, as had been held by the Opposition Division, that D4 constituted the closest prior art and that the problem solved by the compositions according to claims 1 and 2 as granted over that prior art was the provision of alternative antiperspirant deodorant compositions leaving low residue after application.

(c) It was rather argued that the skilled person would not have had any motivation to modify the compositions disclosed in D4 by varying the amount of volatile and non-volatile silicones. The combination of technical features recited in independent claims 1, 2 and 8 was so specific, that it was difficult to see how the Opposition Division could have concluded that the person of ordinary skill in the art, when starting from the generic disclosure in document D4, would have routinely formulated one of the claimed compositions without being directed to do so by the teaching of the patent in suit. The relevant question to be answered was not whether the skilled person could have formulated one of the claimed composition, but whether he would have done so in light of some direction or motivation (i.e. a "signpost") within the state of the art. This followed from e.g. Decision T 2/83 (OJ EPO 1984, 265). In the absence of any specific direction to modify a particular example within the prior art D4 as to arrive at the claimed invention, the latter could not be considered as obvious. Following decision T 939/92 (OJ EPO 1996, 309) the skilled person was assumed to act not out of idle curiosity but with a specific technical purpose in mind. The Opposition Division, however, had failed to provide any reasoning whatsoever as to why a person of ordinary skill in the art would have been undertaking such variations.

(d) Furthermore, even if the skilled person had contemplated such a modification of the compositions disclosed in D4, he would certainly not have modified them in the manner that would be necessary in order to arrive at a composition within the terms of the present claims. The volatile silicone material required within the compositions of document D4 was not necessarily a cyclic volatile silicone, so that there was no specific direction to increase the level of volatile silicone by an adjustment in the level of the cyclic volatile silicone components, let alone by increasing the level of cyclohexasiloxane, as cyclotetrasiloxane and cyclopentasiloxane were more preferred than cyclohexasiloxane. D4 did in fact clearly teach away from the claimed compositions, which were substantially free or contained less than 1% by weight of cyclotetrasiloxane. Furthermore, if the skilled person, starting from any of the compositions that are disclosed in D4, wanted for some unknown reason to increase the level of volatile silicone, it could not arrive at the claimed subject-matter when using the volatile silicon materials DC®245 and DC®345 which were recommended in D4. As these materials contained only a minor portion of cyclohexasiloxane, it would be necessary in order to arrive at the amount of cyclohexasiloxane defined in the Main and the Auxiliary Request to use a total amount of DC®245 or DC®345 going beyond the maximum amount of volatile silicone authorized by D4. Thus, one could not, starting from D4, arrive at the claimed compositions without directly contravening the teaching of that document.

(e) Hence, one could arrive at the modifications of D4 as proposed in the Main and Auxiliary Request only on the basis of hindsight knowledge of the present invention. The claimed subject-matter was therefore inventive.

VII. The arguments of the Respondents, as far as they are relevant for the present decision, can be summarised as follows:

(a) Claims 1 and 2 according to either the Main or the Auxiliary Request extended beyond the content of the application as originally filed, as the original application did not disclose in the absence of any definition for an upper limit for said compound a minimum amount of cyclohexane of either 30 wt.-% or 20 wt.-%. Amended claim 8 also contravened the requirements of Article 123(2) EPC, as the range of 30 to 75% for the amount of cyclohexasiloxane was not contemplated for solid compositions. The paragraph on page 6, which had been referred to by the Appellants, did not concern solid compositions.

(b) As concerns inventive step, D4 constituted the closest state of the art. The technical problem solved over D4 was the provision of further antiperspirant and deodorant compositions with low residue performance. D4 taught amounts of volatile silicone as high as 60% and recommended among the volatile silicones, cyclomethicone having from 3 to 7 silicon atoms, to which belonged cyclohexasiloxane. Even, if the silicon material DC®345, a mixture of cyclopentasiloxane and cyclohexasiloxane, was cited, the teaching of D4 was not limited to commercially silicone materials disclosed in that document, but encompassed the use of cyclosiloxanes alone, to which cyclohexasiloxane belonged. In the absence of any evidence for a technical effect brought about by the selection of cyclosiloxane among the class of volatile silicones disclosed in D4, the subject-matter of present claims 1 to 10 amounted to an arbitrary selection for which no inventive step could be acknowledged. Reference was made to T 939/92 (supra). The claimed subject-matter, according to either the Main or Auxiliary Request lacked therefore an inventive step.

VIII. The Appellants requested that the decision under appeal be set aside and that the patent be maintained on the basis of the Main Request or, in the alternative, on the basis of the Auxiliary Request, both submitted with the statement setting out the grounds of appeal dated 20 November 2008.

IX. The Respondents requested that the appeal be dismissed.

X. At the end of the oral proceedings, the decision of the Board was announced.