EPO - L’OREAL v/ HENKEL AG & Co. KGaA
EPO - Opposition Division
L’OREAL v/ HENKEL AG & Co. KGaA
The opponent, L’OREAL, was represented by Gérard Dossmann, European Patent Attorney. The decision of the Opposition Division is entirely favorable to the opponent L’Oreal and revokes the patent of Henkel for lack of novelty and inventive step.
The invention of claim 1 of EP patent No. 0,875,236 owned by Henkel is the use of an aqueous formulation for treating keratinic fibers, especially human hair, containing at least one natural or synthetic ingredient having the scent note of a foodstuff, said formulation being characterized in that it further contains 0.0005 to 0.1% by weight of a bitter substance, having a molecular weight of at least 250 g / mol and is soluble in the formulation at 20 ° C for at least 10 mg / l.
The main objective of the invention is to select specific bitter substances to introduce them in compositions containing an ingredient having a fragrant note of a food product or a consumer product so as to avoid indesirable ingestions and also not to alter the fragrant note of the ingredient. Such compositions include shampoos that due to their fragrant note and the presence of a particular bitter substance allow to clean the hair of children safely without risk of ingestion.
The opponent, L’OREAL, noted particularly the lack of novelty of this claim by citing example 1 of WO 97/3656. This example concerns a cosmetic composition used to treat the eyelashes (therefore keratinous fibers) comprising water, 0.08% by weight of a bitter substance and a product sold under the name Nipaguard BPX containing phenoxyethanol.
During the opposition proceedings, the opponent proved that phenoxyethanol has a rose scent and it provides, therefore, a note fragrance of a food or food product.
On the basis of this argument, the Opposition Division held that claim 1 was not new.
In order to take into account this prior art, the patentee filed an auxiliary request, stating the nature of the fragrant note. Thus, the auxiliary request specifies that the composition comprises an ingredient with a fragrant note of a food product selected from fruit or a consumer product selected from tobacco, cola, guarana, chocolate, cocoa, peppermint and rum.
This modification of the claim was considered sufficient to overcome the objection of lack of novelty.
With respect to inventive step, a brochure, disclosing the use of bitter substances in aqueous compositions for treating hair, including shampoos fragrant, was considered as the closest prior art, that is to say, the best starting point to arrive at the invention defined in the auxiliary request.
To demonstrate the inventiveness of his invention, the patentee filed the results of experimental tests showing that a bitter substance as claimed did not change significantly the scent of a composition containing an ingredient with a fragrant note apricot or strawberry.
The Opposition Division noted that the assessment of testing persons varies considerably between the ingredient with the fragrant notes of apricot (87.5% satisfied) and the ingredient with the fragrant notes of strawberry (50% satisfaction ) which means that the technical effect argued by the patentee cannot be extrapolated to all claimed ingredients with fragrant note.
In other words, the tests filed by the patentee do not show convincingly that all the claimed compositions are likely to lead to a technical effect in relation to the closest prior art.
Therefore, the technical problem is not an improvement, but consists in developing other aqueous compositions for treating hair containing bitter substances and ingredients with fragrant notes as an alternative to those disclosed in the closest prior art.
The Opposition Division therefore considered that it was obvious for a skilled person to use the fragrant ingredients mentioned in the various documents cited in aqueous compositions already containing bitter substances.
This decision highlights the importance of experimental tests that can demonstrate convincingly that a technical effect observed in the case of a specific experience can be extrapolated to all the compounds defined in the claim. In the absence of such a showing, the technical problem can not be reformulated as a technical improvement over the prior art, but as a simple alternative.
In this case, tests filed by the patentee induced doubts about the ability to extrapolate the technical effect on the entire claim 1.
The decision of the Opposition Division has not been appealed and is therefore final.