Tuesday, 16 June 2015

T 0275/11: maximum objectivity by the persons conducting the tests?

In this opposition appeal the appellant (patent proprietor) filed results from comparative tests to prove that the "invention" has an advantageous effect. These results were filed to support the inventive step defense that was based on the problem of "providing a better composition for bleaching and/or highlighting keratin fibers [hair]". The Board of Appeal discusses in the decision whether the presented results are based on maximum objectivity. In the decision you can read whether the tests should have a sort of scientific basis or not.

Summary of Facts and Submissions 

III. The decision under appeal was based on the claims according to the Main Request and Auxiliary Requests 1 and 2. The wording of independent claim 1 of the Main Request read as follows:
"1. Water free composition for bleaching and/or highlighting keratin fibres especially human hair based on at least one compound with bleaching and/or highlighting effect characterized in that it comprises at least one dialkyl carbonate selected from di(caprylyl) carbonate and di(ethylhexyl) carbonate, and a cationic polymer."

V. With its statement of the grounds for appeal the Appellant defended the patent in suit on the basis of the same requests on which the decision under appeal was based. The Appellant stated that starting from document (1a) as closest state of the art the subject-matter of claim 1 of the Main Request involved an inventive step. As demonstrated with a further comparative Example described in the Appellant's submission the claimed compositions provided improved bleaching and conditioning effects on hair. From the prior art the skilled person had no incentive to use the claimed dialkyl carbonates and a cationic polymer in order to achieve these improvements. Further, document (2) did not refer to bleaching compositions, but only to hair conditioning compositions and would, therefore, not be considered by a skilled person when looking for improving the bleaching and conditioning effects on hair of hair bleaching and/or highlighting compositions.
With regard to inventive step the Respondent brought forward that the comparative Example referred to in the statement of grounds was not suitable to demonstrate any improvement over the closest prior art document (1a). The Appellant did not provide any information on the qualification of the persons who evaluated the test results. The evaluation of the Appellant, which merely specified that the properties were "very much improved", "much better" and "excellently" cannot be verified and have to be disregarded. The objective problem to be solved could only be seen in providing alternative bleaching and/or highlighting compositions. The solution as proposed by the patent in suit was, however, known already from document (2).
Reasons for the Decision 
Main Request 

3. Inventive step (Article 56 EPC)
3.1 The subject-matter of claim 1 relates to a bleaching and/or highlighting composition for keratin fibres, which effects mild bleaching and good conditioning on hair. A similar composition is disclosed in document (1a), which was accepted as representing the closest state of the art by the Opposition Division and by both parties to the appeal proceedings.

3.2 Document (1a) discloses bleaching compositions for keratin fibres, which effect mild bleaching and provide good conditioning of the treated hair. In the specific embodiment disclosed in Example 1 a water free bleaching cream is prepared, which comprised inter alia 10% by weight of a di(alkyl) carbonate(12,14), 35% by weight of potassium persulfate as bleaching compound and hydroxyethylcellulose as polymer. The cream was in the form of a water free suspension. According to the written statements the parties agreed on this teaching of document (1a). This was not disputed by the parties.

3.3 According to the Appellant the problem to be solved starting from document (1a) consisted in providing a bleaching composition with improved bleaching and conditioning effects on hair.

3.4 As a solution to this problem the patent in suit proposes the compositions according to claim 1, wherein di(ethylhexyl) carbonate or di(caprylyl) carbonate were used as di(alkyl) carbonates and a cationic polymer is present.

3.5 In order to demonstrate that the problem as stated in paragraph 3.3 supra has been successfully solved the Appellant referred to two comparative Examples:

3.5.1 The Appellant argued that the comparative Example referred to in the patent specification in paragraph [0072] showed that the composition according to the invention provides improved bleaching and conditioning effects.
However, the comparative Example of paragraph [0072] does not use any di(alkyl) carbonate and, thus, does not represent a fair comparison with the closest state of the art. Any effects that could be derived from this comparative Example cannot, therefore, support the success of the proposed solution.

3.5.2 In its statement of grounds for appeal the Appellant referred to a further comparative Example, which was based on Example 1 of document (1a). In order to modify this composition to mimic a composition according to the claims of the patent in suit the di(alkyl) carbonate(12,14) of the prior art composition has been replaced by an equal amount of di(ethylhexyl) carbonate and 0.5% by weight of the hydroxyethylcellulose polymer has been replaced by 0.5% by weight of Polyquaternium-10 as a cationic polymer. The comparison was done according to the procedure indicated in the patent in suit, paragraph [0073], using ten volunteers. In view of the results obtained the Appellant stated that in 60% of the cases a "slightly lighter" bleaching effect was obtained with the composition according to the invention. In 80% of the cases the hair treated with the claimed composition "showed a much better combability, hair had very much improved elasticity and hair felt excellently natural and in the remaining 20% of the cases the aforementioned differences were present but at a lower level". Further, in was observed that none of the cases of hair bleached with the composition of document (1a) was found to have improved properties compared to hair treated with the composition according to the present invention.
However, the properties of the treated hair as regards the bleaching were obtained by inspection by eye and conditioning effects and were apparently determined by touching or combing the treated hair. Since this kind of evaluation represents inherently subjective evidence the comparison has to be made under conditions that ensure maximum objectivity on the part on the persons conducting the tests. It is, therefore, desirable to show that the tests have been carried out under "blind" conditions to avoid any suspicion of bias. Further, the testers should indicate the results of their inspection in a detailed manner - either by a detailed report or according to a suitable scoring system - in order to allow the Board and the other parties to evaluate the different opinions objectively (see T702/99, points 2. to 4. of the Reasons).
In the present case the Appellant has not given any information on the identity of the persons evaluating the quality of the treated hair, nor their relationship to the Appellant. No indication was given on the conditions under which these tests were run. Further, in its statement of grounds of appeal the Appellant only gave a summary of the test results, which can assist the Board in its evaluation of the experimental evidence, but which cannot substitute for the detailed information on the individual test results presented either in terms of written statements of each testing person or in terms of tables containing the individual scores given by these testers. Therefore, the Respondent and the Board did not have the information to objectively assess and evaluate the experimental evidence referred to by the Appellant.
In the absence of any information on how this comparative test has been executed and in the absence of the individual test results, any effects referred to by the Appellant have to be disregarded.

3.5.3 Since none of the two comparative tests referred to by the Appellant can support the alleged improvements over the closest prior art, the technical problem as stated in paragraph 3.3 supra above is regarded as having not been successfully solved.

3.6 As a consequence, the technical problem as stated in paragraph 3.3 supra has to be reformulated as to provide an alternative bleaching and/or highlighting composition.

3.7 In order to provide an alternative the skilled person would turn to document (2). This document relates to hair conditioning compositions which are also used for bleaching compositions (claim 7). He knew from this document that cationic polymers and di(alkyl) carbonates, such as di(octyl) carbonate (identical to di(caprylyl) carbonate) are suitable additives to provide hair with improved conditioning effects (see claim 6; page 5, lines 21 to 28; page 3, lines 25 to 29) in compositions for hair treatment, including hair bleaching compositions. The skilled person would thus have arrived at the subject-matter of claim 1 without having to exercise any inventive skill.
The Appellant brought forward that the skilled person when looking for an alternative bleaching and/or highlighting composition would not have considered document (2), since this document does not refer to water free compositions and does only relate to the problem of hair conditioning.
However, document (2) does not only refer to water containing compositions, but explicitly states that the compositions may also be in the form of water free oils, gels, aerosols of sticks (see page 2, lines 22 to 25). Further, the document clearly states that these compositions may be used in bleaching compositions (see claim 6). The fact that one focus of document (2) is the conditioning effect provided by the hair treatment compositions is not sufficient to deter the skilled person from considering its teaching, in particular, since the patent in suit itself aims inter alia at providing improved conditioning effects to the hair.
Therefore, this argument of the Appellant cannot succeed.

3.8 Therefore, the Board concludes that the subject-matter of claim 1 according to the Main Request does not involve an inventive step in the sense of Article 56 EPC.

Auxiliary Requests 1 and 2


For these reasons it is decided that:
The appeal is dismissed.
This decision has European Case Law Identifier: ECLI:EP:BA:2015:T027511.20150414. The file wrapper can be found here. Photo "wigs" by Steve N obtained via Flickr under CC BY-ND 2.0 license (no changes made).

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