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Judgment
Prabha Sridevan, J
This appeal is filed against the order dated 11/07/2011 refusing the patent under S. 15 of the Patents Act, 1970. This patent application
898/MUMNP/2007 entitled ""Water-in-oil microemulsions for hair treatment"" was filed as PCT National Phase Application on 14/06/2007.
The invention relates to water-in-oil microemulsions for hair treatment, which have enhanced sensory properties and enhanced compatibility with
hair benefit agents. There were originally 15 claims.
In the First Examination Report the objections raised were:-
Subject matter of claim 15 does not constitute an invention under section 21(j) of the Patents Act, 1970 as amended (Act in short) and claims 1-15 do
not involve an inventive step in view of US Patent 5298240 (D1) and WO/2001/045651 (D2) and that claims 1 to 14 fell within S. 3(e) of the Act and
hence not patentable and other objections.
The International Search Authority had given its opinion. This too referred to the same prior arts, namely D1 & D2. It is stated that though the
claims were novel, they cannot be said to be inventive in view of D1 & D2. In its response to the examiner's objections, the appellant deleted claim 15
but as regards the objection relating to D1 & D2, they submitted that the invention involves an inventive step above the prior art. The other objections
were also addressed by the appellant.
The amended claims were presented as follows:-
A water-in-oil microemulsion for hair treatment comprising: (a) an oil phase comprising:
(i) a first oily component which is one or more glyceride fatty esters, and
(ii) a second oily component which is one or more hydrocarbon oils of average carbon chain length less than 20 carbon atoms, and (b) a hydrophilic
phase comprising: (i) water,
(ii) a nonionic emulsifier which is an ethoxylated alcohol having an HLB of at least 6, and
(iii) a hair conditioning agent.
A microemulsion according to claim 1, in which glyceride fatty esters is selected from coconut oil, sunflower oil, almond oil and mixtures thereof.
A microemulsion according to claim 1 or claim 2, in which the total content of glyceride fatty ester ranges from 20% to 80% by weight based on
total weight of the microemulsion.
A microemulsion according to anyone of claims 1 to 3, in which the hydrocarbon oil is light mineral oil.
A microemulsion according to anyone of claims 1 to 4, in which the total content of hydrocarbon oil ranges from 20% to 80% by weight based on
total weight of the microemulsion.
A microemulsion according to anyone of claims 1 to 5, in which the glyceride fatty ester: hydrocarbon oil weight ratio ranges from 95:5 to 5:95,
preferably from 90:10 to 10:90,' most preferably from 80:20 to 20:80.
A microemulsion according to anyone of claims 1 to 6, in which the water level ranges from 3 to 7%, more, preferably from 4 to 6% by weight
based on total weight of the microemulsion.
A microemulsion according to any one of claims 1 to 7, in which the HLB value of the ethoxylated alcohol ranges from 6 to 12, preferably from 7 to
10, more preferably from 7 to 9.
A microemulsion according to claim 8, in which the ethoxylated alcohol is a higher aliphatic, primary alcohol containing about 9 to 15 carbon atoms,
condensed with about 2.5 to 10 moles of ethylene oxide.
A microemulsion according to claim 9, in which the ethoxylated alcohol is C12 to 13 alkanol condensed with 3 moles ethylene oxide.
A microemulsion according to anyone of claims 1 to 10, in which the hair-conditioning agent is a quaternary ammonium cationic surfactant.
A microemulsion according to claim 11, in which the quaternary ammonium cationic surfactant is a monoalkyl quaternary ammonium compound in
which the alkyl chain length is C12 to C22.
A microemulsion according to anyone of claims 1 to 10, in which the hair conditioning agent is a cationic polymer.
A microemulsion according to claim 13, in which the cationic polymer is a cationic guar gum derivative, especially guar
hydroxypropyltrimethylammonium chloride.
The Controller held that the problems solved by the present invention is to incorporate hair benefit agents such as hair conditioning agents into an oil
phase in order to obtain a water-in-oil micro emulsion which is stable. The learned Controller felt that the difference between the invention and the
teaching of D1 which is the closest prior art is the specific mixture of the oil phase. According to the Controller, this specific mixture namely, the
mixture of glyceride fatty ester and hydrocarbon oil is described in D2. The Controller felt that a skilled person would therefore regard a specific
mixture taught by D2 as a normal option to solve the problem which is allegedly solved by the invention. He also held that the oil phase formulation of
present claims 1 to 14 is merely one of several straightforward possibilities from which the skilled person would select, in accordance with the
circumstances, without the exercise of inventive skill.
The learned counsel for the appellant submitted that the amended claims were submitted at the hearing. But this was not considered by the learned
Controller. The learned counsel submitted that the water level in the invention is fixed at 10% by weight since if it exceeds this, it may lead to a hazy
product which is undesirable to users of hair-oil. According to the learned counsel, there is no teaching or suggestion or motivation in the prior art that
a lower amount of water will enhance the visual appeal. The learned counsel submitted that there is nothing in D1 to indicate 6% of water since
according to D1, the micro-emulsion composition contains 50-89.5% weight of water. The learned counsel submitted that in the same prior art, it is
stated that ""The water content of the hair care composition according to our invention amounts to 50-89.5% of weight advantageously 60-80% by
weight"". According to the learned counsel, in the amended claims that were submitted during the time of hearing, claim 1 specifically covers the
invention comprising inter alia of water in account not exceeding greater than 10% of the total weight. The learned counsel submitted that D2 also
refers to composition including water preferably from 50-90% by weight. The learned counsel submitted that the impugned order should be set aside
for failure to consider the issue in the proper perspective.
We will now look at the background of the invention. The background stated that consumers, oil their hair both pre-wash and post-wash. Existing
prior art conditioning agents combine with hair oil in a manner that gives an un-attractive appearance and a tendency to separate, due to differing
density of the two phases. Therefore, according to the inventor, if a particular type of nonionic emulsifier is found, the problem will be solved.
According to the inventor, the invention provides an oil or fatty materials which has enhanced sensory properties and enhanced compatibility. The
invention comprises of an oil phase comprising two oily components, one being a glyceride fatty ester and the other a hydrocarbon oil and the
hydrophilic phase comprising water and nonionic emulsifier and a hair conditioning agent. Regarding the inclusion of water, the complete specification
says ""The hydrophilic phase of the water-in-oil microemulsion of the invention comprises water, suitably at a level of from about 2% by weight based
on total weight of the microemulsion. Suitably the water level does not exceed about 10% by weight based on total weight of the microemulsion since
this may lead to a hazy product appearance which is undesirable to consumers of hair oils. Preferably the water level ranges from 3 to 7%, more
preferably from 4 to 6% by weight based on total weight of the microemulsion.
As regards the composition of the nonionic specification, it says ""The level of nonionic emulsifier in microemulsions of the invention suitably ranges
from 10 to 40%, preferably from 15 to 35%, by weight based on total weight of the microemulsion.
In response to the objections, the stand of the appellant was that the invention lay in the particular type of nonionic emulsifier which marked it from
the prior art. Now, the stand of the appellant is that the invention lies in combination of water in existing 10% by weight based on total weight of the
microemulsion. The nonionic emulsifier according to the invention is an ethoxylated alcohol having HLB of at least 6. The HLB value of the
ethoxylated alcohol ranges from 6 to 12, preferably from 7 to 10, more preferably from 7 to 9.
Exhibit D1 is an invention which behaves as if it is a one phase system. The microemulsions of the state of art on the date of D1 were said to load
the hair strength with oil which gave hair a greasy appearance. Therefore, the object of D1 was not only to give the good conditioning and good wet
and dry combability but also good hair feel and hair glow. D1 contained a 5 to 20% by weight of a nonionic surfactant with HLB value from 6 to 10.
As per the claims, it is said to have been amended so the nonionic emulsifier has HLB of the range from 10-40%.
D1 says that the HLB of the nonionic emulsifier is preferably 6-10. In the examples given in D1, examples 5, 8, 12, 13 contains water, which is less
than 10%. Again, the aim of D1 was to find an aqueous hair composition, which inter alia has a superior sensory feel.
The patent specification indicated that in the state of the art at that time the hair treatment compositions tend to form two phases and however a
problem is that such agents are generally not compatible with the oil and cannot be incorporated into the oil in a stable manner. When such agents are
combined with hair oils at effective levels, they tend to form a two phase system, with an unattractive appearance and a tendency to separate due to
differing density of the two phases. The present inventors have found that this problem can be solved if a particular type of nonionic emulsifier is
formulated with the oil. The invention allegedly provides an oil microstructure which has enhanced sensory properties and enhanced compatibility with
hair benefit agents such as hair conditioning agents.
Detailed description of the invention the specification explains what a microemulsion is and in the oil phase, the first oily component is a glyceride
fatty ester. It also says that these types of materials are present in vegetables and animal fats and oils and vegetables derived fatty esters are
preferred. The second oily component is hydrocarbon oil and the preferred hydrocarbon oil is light mineral oil.
As regards water, the specification says that ""The hydrophilic phase of the water-in-oil microemulsion of the invention comprises water, suitably at
a level of from about 2% by weight based on total weight of the microemulsion. Suitably the water level does not exceed about 10% by weight based
on total weight of the microemulsion since this may lead to a hazy product appearance which is undesirable to consumers of hair oils. Preferably the
water level ranges from 3 to 7%, more preferably from 4 to 6% by weight based on total weight of the microemulsion.
As regards nonionic emulsifier, the specification gives the preferred HLB value. As regards hair conditioning agent, the specification mentions a
suitable clause of conditioning agent is a quaternary ammonium cationic surfactant. It gives the preferred cationic polymer and also the change of the
total amount of hair conditioning agent.
In the reply to the examiner's objections, the inventor by the letter dated 23/01/2009 had stated that ""However, the present inventors have found
that this problem can be solved if a particular type of nonionic emulsifier is formulated with the oil"". In the grounds, it is stated that the distinguishing
features from the closest prior art D1 is the reduced amount of water and absence of cationic surfactant. It is difficult to comprehend what the
appellant means by this and since in the above paragraphs extracted from patent specifications it clearly mentions the inclusion of quaternary
ammonium cationic surfactant. In fact, claim 12 preferred is a composition containing cationic surfactant. Even the reduced proportion of water which
is below 10% is found in D1 in one of the examples. It is therefore clear that the Controller found the person skilled in the art would have been taught
by D1 & D2 to arrive at this water and oil microemulsion i.e., claimed to be the invention. If the aim of the invention is to arrive at a hair treatment
which is less hazy, it would have been obvious for the person skilled in the art to try including water between 50-80% and also less than 10% which is
found in the examples in D1. Since we do not find any inventive step, we are not looking into the amended claims that are produced before us. In any
event, the case indeed put forward before us that it is the reduced percentage of water which is the invention whereas in the patent specification it
was the inclusion of the nonionic emulsifier, the inclusion of which is taught by the prior art. For these reasons, we are not inclined to interfere with the
order of the Controller. The appeal is dismissed.