EP 3 085 683 B1 relates to compositions comprising biologically derived 1,3-propanediol (“PDO”) and an extraction product, as well as a process for their preparation. The compositions are used as cosmetics or for personal care.
EP 3 085 683 B1 results from a divisional application EP 07750672. The corresponding patent EP 1 991 515 B1 has been revoked.
Brief outline of the case
The OD decided that all the requests on file were either infringing Art 123(2) and Art 76(1) or lacked N over D4 and its translation D4t=JP 05-221821
The patent was revoked and the proprietor appealed.
The board confirmed the revocation.
The MR as well as of AR 1-3 in appeal were underlying the OD’s decision
The board held that claim 1 of the MR was lacking N over D4. We will concentrate on the reasons as to why the MR lacked N when it comes to impurities.
Claim 1 reads
“A composition comprising 1,3-propanediol and an extraction product, wherein:
the 1,3-propanediol is biologically-derived, has a purity level of less than 400 ppm total organic contaminants and has a concentration of peroxide of less than 10 ppm; …….”
The proprietor’s point of view
The claims of all requests underlying the OD’s decision were novel over D4, in particular due to the impurity profile recited therein and due to the feature “biologically derived“. The OD’s novelty objection followed an incorrect application of the relevant case law.
The proprietor stated that D4 is silent as to the content of the impurities defined in the claim, either as a part of the individual components or finally in the overall compositions.
The proprietor argued that disregarding impurities in D4 was fundamentally flawed. In the proprietor’s view the board’s analysis compared apples with pears since a comparison between the claim and D4 would have to be made on the basis of disclosed features, and not on the basis of undisclosed features like the possible impurity content in D4.
The proprietor compared the situation with a comparison when assessing comparative tests in the course of an IS analysis and referred to T 2319/14 and T 0041/16.
The opponent’s point of view
The composition claims were not novel over D4. Neither the impurity profile, nor the feature “biologically derived” could distinguish the claims from the compositions disclosed in D4.
The board’s decision
D4 discloses a composition comprising PDO and olive oil. It was undisputed that olive oil is an extraction product according to the claim. The N discussion focused on the two possibly distinguishing features underlined above, namely
- the concentration limits for “total organic contaminants” and “peroxide“, and
- (ii) the PDO being “biologically-derived“.
Concentration limits
The board held that the case law cited by the OD on purity, i.e. T 0990/96 was superseded by T 1085/13.
The claim defines a composition in an open form, i.e. “comprising“. Maximum concentration limits for impurities present (or not) in only one of the ingredients, the PDO, do not translate into technical features of the claimed composition.
The present claim covers compositions containing less than 400 ppm of “total organic contaminants” and less than 10 ppm of peroxide, e. g. in case the extract or other optional ingredients do not add any of these components.
However, the claim also covers compositions containing more than 400 ppm of “total organic contaminants” and more than 10 ppm of peroxide because these components may be introduced as by-product of the extract or of any other ingredient or even expressly added.
The board concluded that, for the claimed composition as a whole these concentration features are meaningless as they do not effectively limit the claimed composition at all.
The board agreed with the proprietor that it is not known whether the PDO used in D4 complies with the impurity profile defined in the claim, and it is also not known whether and how much of these impurities are present in the composition disclosed in D4.
However, this does not render the claim novel over D4, since the claim covers both compositions that adhere to the concentration limits of the impurities as well as compositions that do not.
When analysing comparative experiments, cf. T 2319/14 or T 41/16, in order to establish whether an additional feature of a claim, e. g. an ingredient in a composition, results in a certain technical effect, it is correct that like must be compared with like.
Only the distinguishing feature of the claim versus the prior art should make the difference between two compositions to be compared. However, the prerequisite for such an analysis is that there actually exists a feature of the claim which distinguishes any claimed composition from the prior art compositions, i. e. that the claim is novel over the prior art due to this feature.
In the present case, there is no distinguishing feature of the claim versus the prior art, since the feature relied on by the proprietor is not a feature of the claimed composition, but only of an ingredient to the composition.
In a physical composition falling under the claim this feature is not retrievable anymore and for this reason the skilled person cannot distinguish the claimed composition from the composition disclosed in D4.
Comments
The decision is interesting as it makes clear that in a composition, defining impurities profiles for certain components, cannot allow to distinguish the claimed composition from the same composition in the prior art, even if the latter does not define any impurity profiles.
The reason for this is simple: the impurity profile for a single component is not retrievable anymore in the composition.
On the procedure
Although the Guidelines do not mention expressis verbis T 1085/13, the last § in Guidelines G-VI, 6, reproduces the headnote of T 1085/13. The OD should thus have known better.
Although the ESR mentioned one JP document, it failed to mention D4.
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