T 1287/19 (Personal Care Cooling Compositions / PROCTER & GAMBLE) 04-05-2021

1. Admissibility of the appeal

1.1 With the statement setting out the grounds of appeal dated 9 July 2019, the appellant filed an amended main request and 11 auxiliary requests. These requests were later superseded by those filed on 29 April 2020.

1.2 According to the respondent, none of the requests filed with the grounds of appeal correspond to a request on which a decision was taken by the opposition division. The requests filed with the grounds of appeal include substantial amendments such that a new case has been built. As a result, none of these requests is admissible, and the patentee failed to provide the reasons for setting out the decision impugned, as required by Rule 99(2) EPC. Therefore the appeal should be rejected as inadmissible.

1.3 The Board does not share the respondent's opinion, for the following reasons.

1.3.1 It is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed. It is settled case law that the grounds for appeal can also be considered sufficient where they refer to new facts which deprive the decision of its legal basis (see T 252/95, T 760/08), particularly where new sets of claims are filed (see T 934/02, T 2226/13). In principle, appellants have two options when it comes to submitting their statement of grounds: they can attack the opposition division's decision as flawed, so that, provided they make a convincing case with respect to all reasons underlying the decision and the board accepts that case, it would be able and obliged to set the decision aside on all counts. Alternatively, they can file amended claims which they consider apt to remedy the deficiencies identified by the opposition division in the decision (see for more details the Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, V.A.2.6.5 c)).

1.3.2 In the present case, the Board finds that the appeal is admissible. The statement setting out the grounds of appeal, and the main request and 11 auxiliary requests filed therewith, were clearly aimed at overcoming the reasons for rejecting the main request in the appealed decision, namely the missing feature and the deficiencies in the disclaimers introduced in view of D5. These new claim requests do not amount to building a fresh case. Thus there is a sufficiently direct link between the decision under appeal and the statement of grounds of appeal.

1.4 Accordingly, the appeal is admissible.

2. Admittance of the main request and auxiliary requests 1-23 filed on 29 April 2020

2.1 The main request and auxiliary requests 1-23 were submitted after the grounds of appeal were filed. They represent an amendment to the appellant's appeal case which, under Article 13(1) RPBA 2020, may be admitted only at the discretion of the Board.

2.2 The Board sees the filing of at least the new main request and auxiliary requests 1-5 as a legitimate reaction to the new objections raised, in the respondent's reply to the appeal, against the requests filed with the grounds of appeal.

The opposition division found that the absence of the feature "in an amount sufficient to potentiate and/or modulate cooling and other sensory experience provided by the non-menthol coolant(s)" introduced added subject-matter. With its grounds of appeal, the appellant initially attempted to address this objection of added subject-matter by re-introducing this feature in all the requests. In its letter dated 15 November 2019, the respondent raised objections under Articles 123(2), 84 and 83 EPC against this feature. In reply, in all of the requests submitted by the appellant on 29 April 2020, the feature has been omitted. The filing of these new requests represents a legitimate reaction to the respondent's new objections. Since the requests on which the opposition took a decision also lacked this feature, its absence in the requests filed on 29 April 2020 does not lead to the assessment of new issues but only to a review of this aspect of the appealed decision.

Likewise, the reworded disclaimers in the main request and auxiliary request 1 filed on 29 April 2020 are seen as a bona fide attempt to overcome the respondent's objections, and do not lead to additional procedural burden.

Accordingly the Board admits the main request and auxiliary requests 1-5 filed on 29 April 2020 into the proceedings.

3. Admittance of documents A030-A035

A030-A035 were filed by the appellant together with its grounds of appeal in support of its arguments regarding the wording of the disclaimers in the claims requests filed therewith. Following the rewording of the disclaimers in the requests filed on 29 April 2020, the appellant no longer relies on these documents. The issue of their admittance is therefore moot.

4. Main request and auxiliary request 1, clarity

4.1 In the course of the opposition and appeal proceedings, the appellant filed several requests in which disclaimers had been introduced into claim 1 excluding a number of compositions in order to establish novelty over D5, prior art under Article 54(3) EPC.

4.2 The disclaimer in claim 1 of the present main request has been reworded as follows:

"with the proviso that the personal care composition is not a composition of any one of dentifrice IIIB of Example III of EP-A 2 313 070, dual phase dentifrice of IIIB with IIID, IIIE or IIIF of Example III of EP-A 2 313 070, or dentifrice IVJ of Example IV of EP-A 2 313 070."

4.3 Thus the excluded compositions are defined by referring directly to EP-A 2 313 070, which corresponds to D5. The appellant considers it has thereby simplified the wording for clarity and conciseness, and refers to T 1843/09 (see the Case Law of the Boards of Appeal of the European Patent Office, 9th Edition, 2019, II.E.1.7.3.b).

In T 1843/09, claim 1 of the main request comprised a disclaimer excluding embodiments defined by direct reference to specific parts of a document D15, prior art under Article 54(3) EPC. Although compliance with Article 84 EPC was not explicitly the subject of this decision, the competent Board found that the disclaimer clearly referred to a specific disclosure in D15 characterised unambiguously by a number of technical features (see point 3.2 of the reasons).

4.4 In the present case, the disclaimed embodiments of D5 are not unambiguously characterised by clear technical features. The presence of undefined components and trademarks in the examples of D5 was noted in the appealed decision (see e.g. paragraphs 4.1.6.5-4.1.6.7, or 7.2.2). The Board concurs with the opposition division in particular that the component of example IIIB denoted by the commercial name "Glass H polyphosphate" is not clearly defined. The presence of unspecified "other flavor agents" in the artificial mint flavor of example III of D5 also renders these compositions unclear.

4.5 This lack of clarity in the compositions of the examples of D5 is incorporated into claim 1 of the main request because the disclaimer is drafted by direct reference to these examples. The Board adds that the appellant's choice to resort to disclaimers in order to address the issue of novelty over D5, and its difficulties in drafting these disclaimers appropriately, cannot justify an exception to the requirements of clarity or a pragmatic approach as suggested by the appellant.

4.6 The appellant questioned how the examples of D5 could be clear enough to be novelty-destroying but not clear enough to be referred to in a disclaimer. The Board sees no contradiction here. The lack of clarity in D5 noted above (see 4.4) does not concern the features of the composition specified in claim 1 of the main request, namely regarding the non-menthol coolant, the calcium ion source and the orally-acceptable carrier, but rather pertains to components and features of the compositions other than those specified by claim 1. Thus the conclusion that the compositions of D5 as a whole are unclearly defined is not in contradiction with the finding that these compositions unambiguously exhibit the features of claim 1.

4.7 Accordingly, the main request does not meet the requirements of clarity of Article 84 EPC. Since claim 1 of auxiliary request 1 is identical to claim 1 of the main request, auxiliary request 1 likewise contravenes Article 84 EPC.

5. Auxiliary request 2, Article 123(2) EPC

5.1 Independent claim 1 of auxiliary request 2 finds basis firstly in claim 6 of the application as filed. The question arises as to whether the deletion of the following functional feature of claim 6 as filed introduces added subject-matter.

5.1.1 Claim 6 of the application as filed functionally defines the amount of calcium ion source and/or calcium transport agent to be "sufficient to potentiate and/or modulate cooling and refreshing sensation provided by the non-menthol coolant(s)". The Board agrees with the appellant that this feature merely requires that the amount of calcium ion source be such that it has a potentiating or modulating effect, but does not specify the degree of this potentiation of modulation.

5.1.2 In claim 1 of auxiliary request 2, this functional definition of the amount of calcium is absent. However, the composition of claim 1 is defined in structural terms, not only by the nature of the non-menthol coolant(s) and of the calcium ion source, as well as the ratio of calcium to coolant, but also by an amount of calcium ion source which "provides at least 10 ppm to 10,000 ppm Ca **(2+)ions by weight of the composition". This amount of calcium is disclosed on page 10, lines 30-32 of the application as filed, followed by "for potentiating activity". Consequently, the Board agrees with the appellant that these structural limitations of claim 1 of auxiliary request 2 make the above functional definition of the amount of calcium superfluous.

5.1.3 The description as filed (see page 8, lines 23-30) mentions further structural features influencing the extent of this potentiation effect, such as the concentration of the coolant(s) or their solubilization during use. These further features are not part of claim 1 of auxiliary request 2. However, this passage of the description does not give any reason to doubt the statement on page 10 that the claimed amount of calcium, in the context of the compositions of claim 1, would lead to a potentiating or modulating effect, irrespective of its degree.

5.1.4 If follows that the deletion of the feature "sufficient to potentiate and/or modulate cooling and refreshing sensation provided by the non-menthol coolant(s)" does not infringe Article 123(2) EPC.

5.2 Furthermore, the Board does not consider that auxiliary request 2 involves multiple selections.

5.2.1 In claim 1 of auxiliary request 2, the list of calcium ion sources derives from page 10 (lines 27-30), wherein calcium halides and calcium carbonate were deleted from the list. This deletion does not involve any selection but merely leads to a shrinking of the generic group of calcium ion sources. The calcium to coolant ratio derives from page 10, lines 17-18, and the feature that "the calcium ion source provides at least 10 ppm to 10,000 ppm Ca**(2+) ions by weight of the composition" derives, as indicated above (see 5.1), from page 10 (lines 30-32). The non-menthol coolant(s) recited in claim 1 of auxiliary requests 2, namely menthone glycerol acetal (MGA) and N-(4-cyanomethylphenyl)-p-menthanecarboxamide (G-180), are not only recited in claim 8 as filed but also presented as preferred on page 10 (lines 2-4). Accordingly, the combination of these features in claim 1 of auxiliary request 2 does not introduce added subject-matter.

5.2.2 Claim 5 of auxiliary request 2 finds basis in claim 6 of the application as filed. The definition of the flavor composition as comprising a menthanecarboxamide as non-menthol coolant finds basis in page 13 (line 6) of the application as filed, mentioning non-menthol coolant of the menthanecarboxamide type as preferred. This passage on page 13 is made in the context of phytate salts, phosphate salts or carboxylate compounds. In claim 5 of auxiliary requests 2, these phytate salts, phosphate salts or carboxylate compounds, and their amount, are in turn limited based on dependent claim 10 of the application as filed.

The limitation of the polycarboxylate to a copolymer of maleic anhydride or acid and methyl vinyl ether finds basis on page 21 (line 32). Lastly, page 24, lines 6-15, of the application as filed offers a basis for the structural definition for the organic phosphate mono-, di- or tri-ester as in present claim 5. These passages on pages 21 and 24 of the application as filed relate to tooth substantive agents, which are suitable as calcium ion carriers according to page 13, lines 9-11. Additionally, a preference for the copolymer of maleic anhydride or acid and methyl vinyl ether as polycarboxylate is derivable from page 12 (lines 11-12 and table 2) of the application as filed. As to the organic phosphate mono-, di- or tri-ester, the Board agrees with the respondent that its definition in present claim 5, where the at least one organic moiety in Z**(1) / Z**(2) / Z**(3) is unsubstituted, involves a selection from the many (polymeric) phosphate esters defined on pages 23 to 25 of the application as filed. However, the subject-matter of claim 5 is not defined by a combination of this selected calcium transport agent with any further selection. Accordingly, no new subject-matter is created.

5.2.3 Finally, regarding dependent claim 6 of auxiliary request 2, the coolant N-(4-cyanomethylphenyl)-p-menthanecarboxamide (G-180) is disclosed as preferred in the application as filed in table 2 on pages 12-13 and in the examples, in addition to page 10 (lines 2-4).

5.3 In conclusion, auxiliary request 2 meets the requirements of Article 123(2) EPC.

6. Remittal to the opposition division

The Board thus finds auxiliary request 2 to comply with the requirements of Article 123(2). As to clarity, auxiliary request 2 does not contain the unclear disclaimers of the higher ranking requests, and the respondent did not raise any objection under Article 84 EPC against this request.

The question arises as to whether the case should be remitted to the opposition division for examination of the further essential issues. The appealed decision did not address the issues of novelty, inventive step or sufficiency of disclosure. The primary object of the appeal proceedings is however to review the decision under appeal in a judicial manner, as recalled in Article 12(2) RPBA 2020. In the Board's opinion, this represents special circumstances in the sense of Article 11 RPBA 2020 for remitting the case to the opposition division for further prosecution.