T 134/10 – Small Change, Big Effect

No reader of the case law of the Boards of appeal can ignore that clarity is not a ground for opposition but that clarity objections may be raised against claims that have been amended during opposition (appeal) proceedings, if the lack of clarity arises from the amendment.

Sometimes even apparently minor amendments can open the door to clarity objections, as the present decision shows.

Here the opponent filed an appeal against the decision to maintain the opposed patent in amended form.

Claim 1 of the main request before the Board was directed to a pearlized cleansing composition for personal care consisting of ingredients (a) to (h). Ingredient (g) was defined to be “optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”.

The opponent argued that in a claim directed to a composition of matter and drafted with an open wording of the type “composition comprising ...”, additional not specifically listed ingredients could still be comprised in the claimed composition; consequently, the exact assessment of the range of compounds falling under the definition of classes of ingredients which are optional according to the wording of the claim was not relevant for determining which compositions were excluded from the extent of the claim; to the contrary, a closed wording of the type “composition consisting of ...” did not allow the presence of additional not specifically mentioned ingredients; therefore, in such a case the extent of all the classes of components listed, including optional ones, had to be clear in order to enable the skilled person to recognise the limits of the claimed composition. The change from the open wording of claim 1 as granted to the closed wording of claim 1 according to the main request rendered necessary the interpretation of the meaning of the optional ingredient (g); therefore, objections to the clarity of this ingredient (g) arising from the amendments to the granted claim had to be allowed. In claim 1 the optional component (g) included some functionally defined classes of compounds, the meaning of which was not explained in the patent in suit; therefore, it was not clear which range of compounds was encompassed by the wording “an effective amount of a viscosity modifying agent”, which could theoretically include a multitude of very different ingredients having more than one possible functional activity; therefore, it was not possible for the skilled person to assess exactly the extent of the claimed composition.

The patent proprietor argued that the wording of component (g) had remained unchanged with respect to that of the granted claim 1; therefore, its clarity could not be challenged. Moreover, the classes of compounds listed as optional component (g) were well known to the skilled person and some suitable compounds were listed in the description of the patent in suit; therefore, claim 1 was clear.

The Board found the opponent’s arguments more persuasive:

[1.1] Lack of clarity is not itself a ground for opposition and according to the established jurisprudence of the Boards of Appeal of the EPO objections to the clarity of claims are only allowable if they arise in relation to the amendments made (see Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, point VII.D.4.1.4 […], as well as point VII.D.4.2 […]).

In the present case the [opponent] raised inter alia an objection as to the clarity of component (g) of claim 1 which reads: “(g) optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”. Even though the wording of component (g) has remained identical to that contained in the granted claim 1, the amendment of granted claim 1 from the open wording “A pearlized cleansing composition for personal care comprising ...” into the closed wording “A pearlized cleansing composition for personal care consisting of ...” has rendered, in the [opponent]’s view, the limits of the claim unclear insofar as component (g) is concerned.

Therefore, the objection to the clarity of the claim should be allowed.

[1.2] It is undisputed that the closed wording of claim 1 according to the main request implies that only the components specifically listed in the claim can be contained in the pearlized cleansing composition. Therefore, also the meaning of the optional component (g) is essential for defining the limits of the claimed composition and for knowing which compositions are not encompassed by the wording of the claim.

To the contrary, the granted claim 1, because of its open wording, implied that additional amounts of unspecified ingredients suitable for use in a pearlized cleansing composition could still be included in the claimed composition. Consequently, the extent of the optional component (g) was not important for defining the limits of the claimed composition.

In fact, even though the skilled person would have been uncertain if a certain amount of a compound X could fall under the definition of component (g), the open wording of the claim would have allowed anyway the presence of such a compound X as additional ingredient not specifically listed in the claim and there would have been no doubts upon the exact extent of the subject-matter covered by the claim.

Hence, even though the wording of component (g) has not been modified with respect to that of the granted claim 1, the amendment to the granted claim from an open wording to a closed one has in the present case an influence on the assessment of the extent of the claim insofar as component (g) is concerned.

Therefore, the possible unclarity originates from this amendment and the objection raised by the [opponent] as to the clarity of claim 1 with regard to component (g) is allowable.

[1.3] It is established jurisprudence of the Boards of the Appeal of the EPO that, in order to insure legal certainty, a claim must clearly define the matter for which protection is sought (see T 728/98 [3.1] as well as T 337/95 [2.2-5]).

Insofar as component (g) is concerned, claim 1 according to the main request requires, for example, the optional presence of “an effective amount of a viscosity modifying agent”. Therefore, the principle of legal certainty requires the identification of the meaning of the above mentioned technical feature in order to establish without any doubt the subject-matter covered by the claim.

The description of the patent in suit does not contain any specific definition for the term “viscosity modifying agent” and for its “effective amount” and reports only two examples of viscosity modifiers, sodium chloride and sodium cumene sulphonate, and some preferred concentrations (see paragraph 27).

Moreover, the Board remarks that many ingredients, which are theoretically able to modify the viscosity of a composition, can have in the same composition also other different functions. In fact, as discussed in the oral proceedings, behenyl alcohol, which is component (b) of claim 1, is a pearlizing agent but also increases the viscosity of the composition and sodium chloride, one of the two viscosity modifying agents specifically cited in the patent in suit, is also well known as electrolyte. Furthermore, solvents such as water or ethanol could also be considered as viscosity modifiers because of their solubilising properties.

From the above considerations it results that, in the absence of a specific teaching in the patent in suit which would suggest to the skilled person which compounds should be intended as “viscosity modifying agents” and which not, the labelling of an optional component as a “viscosity modifying agent”, which is essential for establishing the limits of the extent of the claim, is arbitrary and depends on the mental label the user wishes to apply to a specific ingredient (see, for example, T 586/97 [4.1.2.2]).

Therefore, a composition comprising an ingredient X, which would be part of the extent of the claim if it is added in virtue of its ability to modify the viscosity, would fall outside the extent of the claim if the viscosity of the composition is modified by other components and the ingredient X is included for another purpose, for example as an electrolyte.

Consequently, the functionally defined class of compounds “viscosity modifying agent” does not identify clearly and unambiguously a limited range of ingredients.

Moreover, the unclarity of the exact limitation conferred to the claim by the wording of this specific component (g) is increased by the requirement of the claim to comprise “an effective amount” of such an ingredient; in fact, the meaning of “effective amount” is not specified in the patent in suit and, for example, the amount of a component X, necessary for modifying the viscosity of the composition, will depend on the other components present in the composition and could be different for any compound and any composition.

The Board thus concludes that the wording of claim 1, for the reasons mentioned above, does not allow the skilled person to recognize with certainty which compositions are included and which are excluded from the extent of the claim.

Claim 1 thus lacks clarity.

The patent was finally revoked.

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