The patent relates to a fabric treatment composition, exactly to a softener.
Brief outline of the case
Opponent 2 appealed the decision to reject the opposition.
In appeal there was a long discussion about experimental data submitted by all the parties. Those data were all post-published.
There was unanimity among the parties that D1=DE 10 2006 034 051, example E4, represented the closest prior art as it disclosed a silicone in a softener, but not 0.1 to 5 wt% of a cationic polysaccharide polymer (in the following CPP).
Eventually the patent was revoked for lack of IS.
The case is interesting as it deals with the effect as understood in G 1/21.
The proprietors’ position
The proprietors argued that the distinguishing feature of claim 1 at issue would provide an unexpected advantage in terms of improved softness and in particular a synergy due to the combination of the silicone with a CPP.
The board’s point of view
The board noted that the formulation of the technical effect in appeal differed from that identified in the patent, and thus it was important to verify whether such a formulation is in accordance with the conclusion of the Enlarged Board of Appeal in G 2/21 (reasons 94).
For the board, it is not in dispute that the application as filed does not relate to a synergistic effect arising from the combination of a silicone with CPP or any other component. Also the fact that the application as filed indicates the CPP to be a preferred cationic polymer without explaining the reason for this preference cannot foreshadow that the claimed combination would provide any type of synergism.
The proprietors did also not file any evidence that it was common general knowledge that silicone and cationic polymers may provide a synergism in terms of improved softness.
Therefore, it followed that the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and has to be disregarded.
The board further noted that the only data available from the proprietors and comparing the alleged invention with a composition at least in part similar to the closest prior art, were not apt to show any possible improvement due to the choice of CPP as an additional softener. In the absence of any other comparison against the closest prior art, it can only be concluded that improved softening has not been convincingly proven across the entire scope of claim 1.
It followed that the objective technical problem underlying the invention and solved by the composition of claim 1 at issue has thus to be formulated in less ambitious terms, namely as the provision of a further fabric treatment composition comprising silicone.
It can be concluded from the present decision that, in the absence in the description as filed of the mention of a synergy effect, it is much more difficult to justify IS on a later alleged synergy effect.
At least, the post-published submitted experimental data has to convincingly prove the alleged synergy across the entire scope of the claim.
On the procedure
The ISR established by the EPO mentioned one X and three A documents, but not D1.
The decision of the OD is a further one of the numerous decisions of an OD set aside by a board.