T 1539/14 - Citrate cleaning benefit

Key points

• This case is about novelty of a second non-medical use claim. The claim is for using citric acid in a (clainging) composition for treating a hard surface to provide a "next time cleaning benenefit". The prior art teaches a composition comprising citric acid that is used for the same purpose. However, the prior art does not identify citric acid as being the component responsible for the "next time cleaning benefit" .
• According to the Board, this does not provide for novelty.
• The Board cites T 892/94: " it can be inferred from decision G 2/88 that no novelty exists, if the claim is directed to the use of a known substance for a known non-medical purpose, even if a newly discovered technical effect underlying said known use is indicated in that claim".
• Regarding the present case: "  the newly discovered technical effect of citric acid is not the purpose of the claimed use. [The] claimed use comprises the (activity of) treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to providing) the treated surface with Next Time Cleaning Benefit. Thus, the actual purpose of the claimed use (activity) is that of providing NTCB to a hard surface. This is exactly the same purpose that is disclosed in D12 "

EPO T 1539/14 -  link

Reasons for the Decision

Main Request of the Proprietor

1. Interpretation of claim 1

1.1 As explicitly stated in the Proprietor's reply of 26 January 2015 (see page 1, paragraph "Interpretation of claim 1"), its interpretation of claim 1 (full wording under III, supra) is the one adopted by the Opposition Division (see IV, supra), namely that this claim defines

- the use of citric acid in a composition comprising a surfactant and citric acid
- in which a hard surface is treated with the composition
- to provide an NTCB [next time cleaning benefit] (i.e. to facilitate the removal of soil deposited on the surface previously treated with the composition).

In other words, the claimed use (activity) comprises treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to provide) the treated surface with an NTCB.

1.2 The Board holds that this interpretation is correct. Considering that based on this interpretation also adopted by the Proprietor, the Board reached a negative conclusion as regards the novelty of the claimed subject-matter, no further details regarding the reasons for adopting this interpretation need to be given.

2. Lack of novelty - claim 1

2.1 The Board notes preliminarily that the wording of claim 1 at stake implies the ability of citric acid to provide a certain technical effect. Said effect is that when a hard surface is treated with a composition containing surfactants and citric acid, this latter ingredient provides (or at least contributes to provide) an NTCB to the treated surface.

2.1.1 It is undisputed among the Parties that the prior art does not disclose as such that citric acid may provide or contribute to providing this technical effect.

2.1.2 Hence, herein below this technical effect attributable to the presence of citric acid will be referred to as the newly discovered technical effect.

2.2 The Board notes further that novelty of the subject matter of claim 1 was disputed in view of, inter alia, the compositions for cleaning hard surfaces disclosed in D12, such as the composition "L" described on page 40 of D12. It is undisputed that the pH and the amounts of surfactant(s) and citric acid fall within the ranges defined in claim 1 at issue as regards the "composition" to be used. According to D12 (Page 41, last paragraph) "[c]ompositions A to L provide not only excellent first time cleaning performance both when used under neat or diluted conditions but also excellent next time cleaning performance. Thus the cleaning process is facilitated". Composition L is thus expressly and unambiguously disclosed to provide an NTCB (also) when used in neat form.

2.3 The assessment of novelty over D12 thus boils down to answering the question whether or not the definition of the subject-matter of claim 1 at issue embraces the use of the composition L to provide an NTCB to hard surfaces as disclosed in D12.

2.4 The Proprietor essentially relied on the reasoning given by the Opposition Division in the contested decision, i.e. that the subject-matter of use claim 1 was novel because of the novelty of the newly discovered technical effect. In particular, according to the Opposition Division, this newly discovered technical effect had to be taken as a technical feature of the claimed use "in view of G 2/88".

2.5 According to G 2/88 (OJ EPO, 1990, 93), Reasons 10.3, "... with respect to a claim to a new use of a known compound, such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect)."

If not previously made available to the public, such functional feature may thus impart novelty to the the claimed subject-matter.

An identical reasoning is given in G 6/88 (OJ 1990, 114, Reasons, 9).

2.6 In T 892/94 (Reasons, 3.4) invoked by Opponent 3, the Board, taking into consideration inter alia G 2/88, Reasons, 10.3, came to the following conclusion:

"It follows from decision G 2/88 .... that novelty within the meaning of Article 54(1) can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claim in terms of the use of that substance for a hitherto unknown, new non-medical purpose reflecting said effect (ie a new functional technical feature), even if the only novel feature in that claim is the purpose for which the substance is used.
Conversely, it can be inferred from decision G 2/88 that no novelty exists, if the claim is directed to the use of a known substance for a known non-medical purpose, even if a newly discovered technical effect underlying said known use is indicated in that claim."

2.7 Hence, also in the present case it needs to be assessed whether the claimed use is a use of a substance for a new non-medical purpose or for a known non-medical purpose.

2.7.1 In its reasoning regarding novelty, the Proprietor only referred to the newly discovered technical effect and to the means of realisation of this effect. Thus, the Proprietor's submissions appear to implicitly equate the purpose of the claimed use (activity) with the newly discovered technical effect of citric acid.

2.7.2 The Board holds, however, that the newly discovered technical effect of citric acid is not the purpose of the claimed use. As already addressed under 1.1, supra, the claimed use comprises the (activity of) treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to providing) the treated surface with NTCB.

Thus, the actual purpose of the claimed use (activity) is that of providing NTCB to a hard surface.

2.7.3 This is exactly the same purpose that is disclosed in D12 as regards the use of composition L.

The Proprietor stressed that in D12 the NTCB attained was not attributed to the citric acid component (only referred to as "buffer" and "builder" in D12, see the Tables on pages 39 and 40 and page 27, lines 7 and 22) but to other, polymeric "antiresoiling ingredients" of composition L (D12: paragraph bridging pages 2 and 3).

These indications have no bearing on the fact that D12 discloses that the citric acid containing composition L can be used in neat form on a hard surface with the purpose of providing this latter with an NTCB (page 41, last paragraph).

2.7.4 Hence it is apparent, in view of the implications of the decision G 2/88 as set out in the passages of T 892/94 quoted under 2.6, supra, that in the present case claim 1, being directed to the use of a known substance (as a component of a known composition) for a known non-medical purpose (of said composition), is, thus, not directed to a new use in the sense of G 2/88 even though a newly discovered technical effect underlying said known use is indicated in the claim.

2.8 This finding of the Board is also in accordance with the rationale of the decision T 254/93 cited by the Opponents.

2.8.1 Reference is made, in particular, to Reasons 4.8 of T 254/93, in which the Board considered, in respect of a use claim, that "the mere explanation of an effect obtained when using a compound in a known composition, even if the explanation relates to a[n] ... effect which was not known to be due to that compound in the known composition, cannot confer novelty on a known process [sic; read 'use'] if the skilled person was already aware of the occurrence of the desired effect when applying the known process" [sic; read 'use'].

The relevance, for the present case, of this decision actually relating to a second medical indication becomes apparent when considering

- that already before publication of the patent in suit the person skilled in the art reading D12 was taught to provide an NTCB to a hard surface by treating it with composition L (because this latter comprised certain polymeric compounds), but

- that after the publication of the patent in suit such composition would still be used for the very same purpose disclosed in D12, although the user would now be aware of the (further) explanation that (also) the citric acid contributes to the NTCB.

2.9 In the Board's judgement based on the above considerations, the subject-matter of claim 1 of the Proprietor's Main Request lacks novelty over the prior art disclosed in D12 (Article 52(1) and 54(1),(2) EPC).