EP 3 405 558 B1 relates to laundry products of the type that a consumer may add to the laundry process to boost or adjust fragrance.
Brief outline of the case
The opposition was rejected and the opponent appealed
The board confirmed the rejection of the opposition.
The objection of lack of N raised by the opponent is of interest.
The opponent’s objection
The opponent’s objection of lack of N of claim 1 as granted was based on the disclosure provided in D1, in particular claim 8/1 and the sentence on page 6, lines 25 and 26, which referred to D2 by stating: “Perfumes are generally described in U.S. Patent No. 7,186,680 at column 10, line 56, to column 25, line 22″.
In the opinion of the opponent, this sentence would disclose all the perfumes mentioned in the portions of this document that were specifically identified above, thus also “ethyl vanillin”, listed for example at the top of the table in column 13 of D2, which was also present in both of the only two fully formulated examples “Enduring Perfume A” and “Enduring Perfume B” disclosed in columns 20 and 21 of D2.
Accordingly, a single selection – if any – among the perfumes implicitly disclosed in D1, through its reference to D2, would be sufficient to arrive at the laundry product of claim 1 of the opposed patent.
The board’s decision
For the board, the reference to D2 is so vague that it cannot be equated to a, albeit implicit, but nevertheless, direct and unambiguous disclosure that the “perfume” components of the prior art fabric treatment composition described in D1 can be any one of the specific perfumes disclosed in the cited portion of D2.
Indeed, already upon reading the wording “generally described” in the reference to D2 per se, a skilled person might expect that such a reference pertains exclusively to the general definitions of groups/classes of perfumes, e.g., in terms of their chemical classes, origin, type of scent, or other properties, possibly provided in D2.
This at least seemingly possible – if not more probable – interpretation of the reference to D2 made in D1 appears also consistent with the actual disclosure in the specific portions of D2 identified in D1.
Indeed, the disclosure from “column 10, line 56, to column 25, line 22” of D2 – besides encompassing a plethora of individual perfumes and the two specific mixtures of multiple perfumes (‘Enduring Perfume A’ and ‘Enduring Perfume B’, columns 20 and 21 of D2) – also provides several general definitions of groups or classes of perfumes.
Thus, even when considering the entire portion of D2 identified in D1, the board found the reference to D2 too vague, as it remains at least possible that the intention was to refer only to the groups or classes of perfumes described in general.
Hence, since the reference to D2 does not render part of the direct and unambiguous disclosure of the prior art in D1 the possible use of any specific perfumes disclosed in D2, including the “ethyl vanillin” cited by the opponent, the subject-matter of claim 1 is not anticipated in D1.
Comments
At a glance, one could consider the opponent’s recourse to D2 mentioned in D1 might have been a good move. This attempt may be summarised in an attempt to “incorporate into D1 the teaching of D2”. In other words, the famous “incorporated by reference” was used.
The OD considered that a plurality of selections was needed to come to the subject-matter of claim 1 as granted. This is one possible way, but the position of the board is much better as it denied that any direct and unambiguous teaching was to be derived from the incorporation by reference of D2 into D1.
In spite of citing a specific part of the referenced document, the reference was too broad to be considered directly and unambiguously derivable.
It might possible in US procedure to incorporate by reference the teaching of one document in another one, but this is not possible in European procedure. And it is good so.
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