T 0082/11 (Cosmetic compositions/REVLON) 08-01-2013

1. The appeal is admissible

2. Non-appearance at oral proceedings

According to Article 15(3) of the Rules of Procedure of the Boards of Appeal (RPBA) the Board is not obliged to delay any step in the proceedings, including its decision, by reasons only of the absence at oral proceedings of any party duly summoned who may then be treated as relying only on its written case. In deciding not to attend the oral proceedings, both Appellant and Respondent chose not to avail itself of the opportunity to present their observations and counter-arguments orally but instead to rely solely on their written case. Insofar the Parties are deemed to expect that during the oral proceedings the Board would consider any written submission of the Parties and the admissibility of amendments to claims, here those carried out in claim 1 of auxiliary request 2, which must be examined as a matter of course, in particular the support of those amendments in the application as filed (see T 341/92, OJ 1995, 373).

In the present case the Board had therefore the power and the duty to take a final decision at the oral proceedings on the case before it, notwithstanding the announced absence of the duly summoned Parties.

3. Request to strike document (15) out from the proceedings

The Appellant requested document (15) to be struck out for the reason that it was not relevant and therefore the Opposition Division erred in finding that it should be allowed into consideration.

The EPC requires that a notice of opposition must be filed in a written reasoned statement within nine months from the publication of the mention of the grant of the European patent (Article 99(1) EPC) and that this statement has to indicate the extent of opposition, the grounds of opposition and the facts, evidence and arguments in support of these grounds (Rule 76(2)(c) EPC). According to Article 114 (2) EPC, the European Patent Office has discretionary power to consider or else disregard evidence which are not submitted in due time. Therefore, admission of late filed documents by an Opposition Division is not as a matter of principle excluded.

According to the established case law of the Boards of Appeal the discretionary power conferred by Article 114 EPC implies necessarily that the department of first instance of the EPO must have a certain degree of freedom in exercising its power. A Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if the Board comes to the conclusion that the first instance department has exercised its discretion without taking into account the right principles, or in an unreasonable way (see T 640/91, OJ EPO 1994, 918, point 6.3).

In the present case, the opposition division decided to admit document (15) belatedly filed by the Respondent into the opposition proceedings. The Opposition Division justified its decision by reasoning that this document was prima facie relevant to novelty and inventive step, which are the grounds for opposition (see point 3 of the reasons in the decision under appeal).

The Board cannot discover any defects which would indicate that the opposition division has erred in the exercise of its discretion in accordance with Article 114(2) EPC. In particular, the opposition division's decision is based on the relevance criteria, which in the Board's view constitutes an objectively fair and thoroughly elaborated principle for evaluating the admissibility of late-filed documents into opposition proceedings.

Since the introduction of document (15) in the opposition proceedings has not been alleged to be, and indeed was not the result of a procedural violation, the Board concludes that the opposition division has exercised its discretionary power according to the right principles and in a reasonable way so that there is no reason for the Board to overrule its decision.

Consequently, document (15) belongs to the factual framework of the case on appeal.

Main request: claims as granted

4. Novelty

Document (15) on page 79 discloses a water-in-oil emulsion comprising

- 16% of cyclomethicone and dimethicone copolyol,

- 15,5% of cyclomethicone,

- 5% of dimethicone and trimethylsiloxysilicate, and

- 73% water.

The Appellant did not challenge that this composition comprised all the components of the composition according to claim 1 in the claimed range, but argued that document (15) failed to disclose the feature required by claim 1 that at least a portion of the trimethylated silica and the volatile silicone are present as a pre-blended mixture.

However, according to the patent-in-suit, the volatile solvent generally has low viscosity ranging from 0.5 to 100 centipoise (mPa.s) at 25ºC and includes linear polydimethylsiloxanes (dimethicone) (see paragraph [0012] of the patent-in-suit). Thus, as pointed out by the Respondent, a dimethicone (100cs) is a volatile silicone.

The resinous silicone incorporated in the composition disclosed on page 79 of document (15) is disclosed as being the same as in the preceding example, i.e. is, according to the preceding example on page 78, either a pre-blend comprising 33% trimethylsylilsiloxate and 67% dimethicone (PDMS), 100 cs or a pre-blend comprising 60% trimethylsylilsiloxate and 40% dimethicone, 100 cs, with the consequence that the requirement of claim 1 that at least a portion of the trimethylated silica and the volatile silicone are present as a pre-blended mixture is satisfied for the composition disclosed on page 79 of document (15).

Consequently, the Board comes to the conclusion that the composition disclosed in document (15) anticipates the subject-matter of claim 1. Hence, claim 1 of the main request lacks novelty.

As at least a portion of the trimethylated silica and the volatile silicone are present as a pre-blended mixture in the preparation of the composition of document (15), the appellant's argument based on the declaration of Zen Aponte is not relevant to the issue of novelty and hence must be rejected.

Auxiliary request 1

5. Novelty

Claim 1 of auxiliary request 1 differs from claim 1 of the main request only due to the switch of the claim category, i.e. from the composition claimed per se to the process for preparing said composition, the sole process feature being bringing component (a), (b) and (c) into intimate physical contact with component (e). This process requirement, however, is inevitably met by the composition comprising the component (a), (b) (c) and (e) disclosed in document (15) and, hence, cannot provide novelty to the subject-matter of process claim 1.

Accordingly, the subject-matter of claim 1 of auxiliary request 1 also lacks novelty with respect to the disclosure of the composition on page 79 of document (15) (see point 4 above).

Auxiliary request 2

6. Modification

Claim 1 of auxiliary request 2 has been amended vis-à-vis claim 1 of the auxiliary request 1 by the indication of a viscosity range for the dimethicone and/or dimethicone copolyol, i.e. having a viscosity of 200 to 1,000,000 centipoise at 25ºC.

The Appellant had however filed auxiliary request 2 without indicating the support for this amendment in the application as filed.

The Board has found only one occurrence in the application as filed indicating a viscosity range for the dimethicone and/or dimethicone copolyol, i.e. in the last paragraph of page 8. However the disclosed viscosity range is from 200 to 600,000 centistokes, preferably 350 to 100,000 centistokes at 25ºC, which ranges are different from the claimed viscosity range of 200 to 1,000,000 centipoise at 25ºC.

Furthermore, the Board has found six occurrences in the application as filed of a viscosity range of 200 to 1,000,000 centipoise at 25ºC, i.e. on page 3, line 4, page 6, lines 16, page 13, line 21, in the line bridging page 15 and 16 and in claims 1, 24 and 25 of the application as filed. However none of these sections of the application as filed concerns the viscosity of dimethicone and/or dimethicone copolyol, let alone concerns a process for preparing a water and oil emulsion wherein at least a portion of the trimethylated silica and the volatile silicone are present as a pre-blended mixture.

Hence, claim 1 amended according to auxiliary request 2 extends beyond the content of the application as filed and, hence, does not fulfil the requirements of Article 123(2) EPC. This request must therefore be refused.