CABINET CHAILLOT
PATENTS TRADEMARKS DESIGNS
French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO
ISO 9001 CERTIFIED
The appeal of the patent proprietor is against the decision of the opposition division revoking European patent no. 1867708.
Claim 1 of the main request concerns a composition comprising a modified cellulose derivative having a molecular weight of 20 000 to 500 000 kDaltons and a selected bacterial cellulase exhibiting endo-beta-1,4-glucanase activity at a weight ratio of the cellulose derivative to active cellulase enzyme protein of 20:1 to 10000:1, the composition having further limitations as to the content of sodium nonanoyl oxybenzene sulfonate and sodium perborate monohydrate, if present.
It is not in dispute that the compositions of examples 11 and 12 of D2 disclose a composition according to claim 1 at issue.
D2 is an international application published on 21 December 2007, i.e. after the filing date of the patent in suit (27 November 2006), but benefiting from the priority date from US 60/814,442 of 16 June 2006.
The patent in suit claims five different priorities, the earliest one (16 June 2006) being from EP 06115574 (the disclosure of which corresponds to that of D3). The disclosure of D2 is thus potentially state of the art under Articles 153(5) and 54(3) EPC with respect to claimed subject-matter which does not benefit from the earliest priority date.
For the board, it is directly apparent from D3 that the claims of the priority document do not recite a composition as claimed in the patent. And even though dependent claim 5 of D3 recites the same selected bacterial cellulase as claim 1 at issue, claim 1 of D3 does not recite any modified cellulose derivative and concerns a more generic composition comprising an alkaline bacterial enzyme exhibiting endo-beta-1,4-glucanase activity, up to 10 wt% aluminosilicate and/or phosphate builder and having a reserve alkalinity of greater than 4, which last features are not part of claim 1 at issue. It follows that it cannot be derived therefrom that the claimed priority is valid for a composition as disclosed in D2.
D3 discloses however in its examples specific compositions which are to be considered as alternatives also encompassed by the subject-matter disclosed in said claims 1 and 5.
According to G 1/15 the claimed priority date can be accorded also to alternatives specifically disclosed in the priority document in question, and thus in the present case also to compositions disclosed by the examples of D3.
Since examples 11 and 12 of D3 disclose compositions very similar to those of examples 11 and 12 of D2, the appellant argued that the patent would benefit from said priority date also with respect to the compositions disclosed in examples 11 and 12 of D2.
Specifically, the compositions of examples 11 and 12 of D3 differ from those disclosed in D2 in that they comprise:
- 0.1 wt% Termamyl**(®), instead of 0.15 wt% of an amylase as disclosed in D2 (Optisize**(®) HT Plus being mentioned as an example thereof),
- a starch encapsulated perfume and
- a different amount of the enzyme Celluclean**(®) (0.15 wt%, instead of 0.1 wt%).
The board notes that, as stated in G 1/15, the criteria for determining whether the disputed priority applies also to compositions as disclosed in D2, are those illustrated in decision G 2/98. In this respect, the skilled person, even using common general knowledge, would not directly and unambiguously derive the different compositions of D2 from the disclosure of D3, already because the amylases used according to the teaching of D2 are different from Termamyl**(®), and are thus not disclosed in D3.
Therefore, the earliest priority date of 16 June 2006 of the patent in suit does not extend to compositions as disclosed in examples 11 and 12 of D2, which thus take away the novelty of claim 1 at issue. It follows that the main request is not allowable already for this reason.
Auxiliary request - Admissibility of the disclaimer
Claim 1 of this request differs from that of the main request in that it contains a disclaimer against examples 11 and 12 of D2, found to be novelty destroying under Articles 153(5) and 54(3) EPC.
For the board the disclaimed compositions are broader than those disclosed in said examples of D2 in the sense that they do not identify precisely some of the components. Moreover, the disclaimer identifies some of the enzymes by their generic trademarks without thus defining clearly the limits of the claim.
The disclaimer thus removes more than necessary to restore novelty and has not been drafted as required. It is thus inadmissible and auxiliary request therefore not allowable already for this reason.
The appeal is dismissed.