Thursday 1 September 2011

T 2299/08 – Right Method, Wrong Problem


The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application.

The Board found the main and the first and second auxiliary requests to lack novelty over document D1.

It then dealt with the third auxiliary request, claim 1 of which read:
1. A method for bleaching and colouring human or animal hair comprising applying to the hair a hair bleaching and colouring composition comprising:

(a) an oxidising agent;

(b) an oxidative hair colouring agent, wherein said oxidative hair colouring agent comprises an oxidative hair colouring agent selected from the group consisting of N,N bis(2-hydroxyethyl)-p-phenylenediamine, 2-amino-3-hydroxypyridine, 4-amino-2-hydroxytoluene, 2-methylresorcinol, m-aminophenol, and 1-napthol; and

(c) ammonium carbonate and/or ammonium carbamate; and

wherein the pH of the composition is from about 7 to about 9, and wherein said composition is applied to the hair between 5 minutes and 30 minutes.
Novelty (A 54)

[6] Document D1 discloses a method for colouring hair comprising applying to the hair a colouring composition having a pH of about 7 to about 9 and comprising an oxidising agent, an oxidative hair colouring agent, in particular m-aminophenol and 1-napthol, and ammonium carbonate. Document D1 further discloses that the composition is applied to the hair during sufficient time to assure substantial dyeing […], but does not disclose any precise application time, let alone an application time comprised between 5 minutes and 30 minutes.

Consequently, the subject-matter of claim 1 is novel over document D1.

Inventive step (A 56)

[7] According to the established jurisprudence of the Boards of Appeal it is necessary, in order to assess inventive step, to establish the closest state of the art, to determine in the light thereof the technical problem which the invention addresses and successfully solves, and to examine the obviousness of the claimed solution to this problem in view of the state of the art. This “problem-solution approach” ensures the assessment of inventive step on an objective basis.

Closest prior art

[7.1] Document D1 relates to oxidative hair colouring compositions and method for colouring hair and describes all the technical features required by the method according to claim 1 with the exception of the indication of a particular application time of the colouring composition on the hair […].

Consequently, the Board considers, in agreement with the ED that the disclosure of document D1 specified above represents the closest state of the art, and, hence, takes it as the starting point in the assessment of inventive step.

The [applicant] considered, however, that the closest prior art would rather be the general knowledge of the person skilled in the art relating to conventional oxidative hair colorations carried out with an oxidation system, comprising ammonium hydroxide and hydrogen peroxide at pH 10, this system being by far the most used.

However, the closest prior art is represented by a prior art document disclosing subject-matter conceived for the same purpose as the claimed invention and additionally having the most relevant technical features in common. In the present case, a method for colouring hair using an oxidation system comprising ammonium hydroxide and hydrogen peroxide at pH 10, the purported general knowledge of the skilled person, differs from the claimed method by the oxidation system which is involved, whereas the claimed method for colouring hair falls within the ambit of the disclosure of document D1.

The Board concludes therefore that a method for colouring hair using the ammonium hydroxide/hydrogen peroxide system is further away from the claimed method than the method for colouring hair disclosed in document D1. This argument of the [applicant] must thus be rejected.

Technical problem underlying the application

[7.2] The [applicant] submitted that the technical problem underlying the application consisted in finding dyes which lead to a different coloration in an ammonium carbonate and/or ammonium carbamate system than that obtained in the ammonium hydroxide system.

However, the subject-matter of claim 1 which, following the problem-solution approach, should represent the solution to this technical problem, relates to a method for bleaching and colouring hair characterized by a particular application time of the colouring composition. Hence, the proposed solution is not a solution to the problem identified by the [applicant].

The [applicant] argued that the problem-solution approach was not appropriate in the present case. The feature establishing novelty with respect to document D1 was the period of time of 5 to 30 minutes during which the colouring composition is applied to the hair. However, the inventive step resided in the selection of hair colouring agents which were more sensitive to a system comprising ammonium carbonate than to a system comprising ammonium hydroxide. This increased sensitivity was demonstrated by the filed data of the comparative tests. Document D1, on the other hand, failed to distinguish such carbonate-sensitive hair colouring agents from carbonate-insensitive hair colouring agent.

This argument does not, however, put into question the applicability of the problem-solution approach to the present case, it merely shows that the [applicant] defined a technical problem which is not in agreement with the claimed subject-matter. In fact, the technical problem defined by the [applicant], i.e. finding particular colouring agents having specific properties cannot logically have as a solution a method of colouring hair with known colouring compositions characterized by the length of time they are applied to the hair.

With regard to the comparative tests on which the Applicant relied, the comparison with the closest state of the art must be such that the purported effect is convincingly shown to have its origin in the distinguishing feature of the invention (see T 197/86 [6.1.2-3]). In the present case, the experimental report filed with the letter of 20 October 2008 compared the colorations of compositions differing from each other by the presence of ammonium carbonate instead of ammonium hydroxide.

However, the claimed method is characterised in that the colouring composition is applied to the hair for a length of time from 5 to 30 minutes, the presence of ammonium carbonate as required by present claim 1 being already disclosed in the closest prior art […]. Accordingly, this test report does not concern the impact of the essential technical feature distinguishing the claimed composition from the closest prior art […], i.e. that the composition is applied to the hair for a length of time from 5 to 30 minutes. Hence, the comparison provided by this test does not adequately demonstrate any effect linked to the feature distinguishing the claimed subject-matter from the closest prior art.

In the absence of any demonstrated effect with respect to methods disclosed in document D1 the technical problem underlying the application is to be reformulated into the provision of a further method for colouring hair.

Solution

[7.3] The proposed solution is the method according to claim 1 characterised in that the colouring composition is applied to the hair for between 5 and 30 minutes.

Obviousness

[7.4] At the oral proceedings before the Board the [applicant] submitted that the introduction into claim 1 of the range of time during which the composition is applied was only intended to establish novelty with respect to the method disclosed in document D1, which merely required sufficient time to colour the hair without further precision. Therefore, since the claimed range of time of from 5 to 30 minutes is not linked to any surprising technical effect, it must be considered as an arbitrary limitation for which no inventive step can be acknowledged.

As a result, claim 1 of auxiliary request 3 is not allowable since its subject-matter lacks an inventive step pursuant to A 56.

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