S.P.C.M. , S.A vs Controller General Of Patents

,

The present appeal has been filed under Section 117A of the Indian Patents Act, 1970 against the order dated 30/11/2018, passed by Respondent",

No. 2, being the Assistant of Patents & Designs, under Section 15 of the Indian Patents Act, 1970, refusing to grant the Appellants’ Indian patent",

application no. 10071/DELNP/2012.,

About the invention:,

2.1 The invention disclosed in the 10071/DELNP/2012 relates to softening compositions for the laundry with a thickener and fabric softener. The,

softener is a cationic softener which is non-soluble in water, having a hydrophilic part and a hydrophobic part. The thickener is a cationic terpolymer",

obtained by polymerizing a cationic monomer with a monomer of hydrophobic nature.,

2.2 The inventors has surprisingly found that the selection of specific hydrophobic monomers for preparing a cationic polymer makes it possible to,

improve the rheological profile and the stability of softening compositions, compared with the polymers of the prior art.",

2.3 In addition, the use of this type of polymer makes it possible to significantly reduce the amount of polymer in the softening composition.",

The facts of the case is as under:,

3.1 The present patent application no. 10071/DELNP/2012 entitled “THICKENER CONTAINING A CATIONIC POLYMER AND,

SOFTENING COMPOSITION CONTAINING SAID THICKENER, IN PARTICULAR FOR TEXTILESâ€​ was filed on 20/11/2012.",

3.2 The present patent application derived from PCT International application no. PCT/FR2011/051208 dated 27/05/2011, which claims priority from",

French Applications No. FR 1054095 filed on 27/05/2010.,

3.3 A request for examination for the said application was filed on 20/11/2012. The application was published under the provisions of Section 11A of,

the Patents Act, 1970 on dated 07/11/2014.",

3.4 This application was examined and First Examination Report (FER) was issued on 06/07/2017 with following main objections:,

(a) NOVELTY:,

(i) Claim(s) 1-14 lack(s) novelty, being anticipated in view of disclosure in the document cited above under reference D1-D6 for the following reasons:",

Subject matter as described and claimed lacks novelty in view of the following prior art documents. D1: US 2004/052746 A1 (TAMARESELVY,

KRISHNAN [US] ET AL) 18/03/2004 D2: EP 1099749 A2 (NAT STARCH CHEM INVEST [US]) 16/05/2001 D3: WO 2005/087188 A1,

(BEIERSDORF AG [DE]; VON THADEN STEFANIE [DE]; WARNKE KATJA [DE]; MEIER) 22/09/2005 D4: WO 97/22640 A1 (RHONE,

POULENC SURFACTANTS & SP [US]) 26/06/1997 D5: US 4454060 A (LAI KUO-YANN [US] ET AL) 12/06/1984 D6: EP 1449862 A1,

(SEPPIC SA [FR])25/08/2004 The subject matter of present application claims 1-14 is not novel. Dl discloses a cationic polymer which has surprising,

(thickening) beneficial rheological properties in acidic aqueous compositions and which exhibits good compatibility with cationic materials, for instance",

laundry softeners such as esterquat (D1: paragraph 178, examples 2, 3, 5). This polymer is obtained by emulsion polymerization of a cationic monomer,",

such as 31-40 weight% of MADAME, of a hydrophobic monomer, such as 3 weight% of behenyl methacrylate E025, and of a plurality of nonionic",

monomers (EA, MAEOnH, HEMA, etc.) in the presence or absence of a crosslinking agent, such as 0.15 weight% of TEGDMA, and in the presence",

of surfactant(s). D1 describes the use of said polymers as a thickener in softening compositions for laundry and for the hair, in usual concentrations of",

0.25-2 weight% (D1: examples). Dl also discloses an emulsion comprising a comparative polymer (D1; table 1, paragraphs 214, 220) which is a",

terpolymer obtained by emulsion polymerization of a cationic monomer (DMAEMA), of a hydrophobic monomer (BEM25) and of a nonionic",

monomer (EA) in the presence of nonionic surfactant and in the presence or absence of crosslinking agent. Because the term softening is not clearly,

defined, the presence of nonionic surfactant means that said emulsion is considered to be a softening agent. The subject matter of claims 1-8 is",

therefore known from Dl. D2 discloses (D2: claims 1, 2, paragraphs 17, 18, examples) an associative thickener for aqueous fabric softener",

compositions, which is a polymer obtained by emulsion polymerization of 5-80 weight% of a cationic monomer such as those of the present claim 5,",

such as diethylaminomethyl methacrylate, of 0.01 to 30 weight% of an implicitly hydrophobic associative monomer under the name (iii)b obtained by",

condensation of a nonionic surfactant with an ethylenically unsaturated carboxylic acid or anhydride, such as acrylic acid, methacrylic acid, crotonic",

acid, maleic acid and itaconic acid, in particular cetyl 20 EO itaconate, and of 5-80 weight% of a nonionic monomer, such as the alkyl ester of acrylic",

or methacrylic acid, for instance EA, in the optional presence of 0-1 weight% of crosslinking agent comprising two ethylenic unsaturations, such as a",

good number of those from the list presented in the present claim 7, and of a moderator such as isopropanol, considered to be the transfer agent of",

claim 9. The present application is therefore a selection of the associative monomer among those disclosed in D2, not distant from that which is",

particularly preferred in D2, cetyl 20 EO itaconate, and by analogy those of the same category (iii)b. The objective of the present application appears",

to be comparable to that of D2. The present application cannot therefore be considered to be a selection invention. The subject matter of claims 1 and,

2 is therefore known from D2. D2 also discloses the alternative of obtaining said polymer by inverse emulsion polymerization (D2: paragraph 21). D2,

also describes an aqueous laundry softening composition comprising a cationic surfactant which is implicitly the softening agent and 0.5 to 10%,",

relative to the weight of the composition, of the thickening polymeric agent. The subject matter of claims 1, 2, 5-11 and 14 is therefore known from",

D2. The additional features of claims 3, 4, 12 and 13 appear to merely constitute a simple arbitrary choice offered to a person skilled in the art, which",

exhibits no surprising effect compared with that disclosed in D2. In order to implement the teaching of D2 (D2: paragraph 21), a person skilled in the",

art will immediately apply this technical knowledge in the field of inverse emulsion polymerization known from D6 (D6: claims 1, 12 and 13, examples)",

to the teaching of D2, arriving at the subject matter of claim 11, simply and without exercising inventive skill. D3 discloses (D3: claims 5 and 6,",

examples on pages 17, 18, lines 1-12, and 20, lines 11-33) a cosmetic or laundry composition comprising a softener in the form of glycerin, silicone,",

etc., said composition therefore being implicitly a softening composition, and 0.01-10% by weight of a polymer obtained by polymerization of a cationic",

monomer in the form of 31-40 weight% of dimethylaminoethyl methacrylate (MADAME), of 2.5- 5 weight% of ethoxylated (25 EO) behenyl",

methacrylate and of nonionic monomers in the presence of 0.05-0.2 weight% of triethylene glycol dimethacrylate. The use of a transfer agent in this,

type of emulsion polymerization is implicit for a person skilled in the art. D3 does not describe the thickening property of the polymer thereof; it,

nevertheless appears to be implicit, otherwise claim 1 does not provide all the technical features essential to the definition of the present invention, and",

that situation would not meet the requirement of clarity. The subject matter of claims 1, 3-9 and 14 is therefore known from D3. D4 discloses (D4:",

claims 1-8 and 20-25, example 1, tables 2 and 3) an aqueous dispersion of a foaming polymer obtained by polymerization of a cationic monomer such",

as those of claim 5, in particular diallyl dimethyl ammonium chloride (DADMAC), in a content such as that of claim 6, of a monomer such as that of",

formula (I) of the present claim 1, in particular ethoxylated (25 EO) behenyl methacrylate, and of a nonionic monomer, in particular acrylamide. D5",

does not describe the thickening property of the polymer thereof; it nevertheless appears to be implicit, otherwise claim 1 does not provide all the",

technical features essential to the definition of the present invention, and that situation would not meet the requirement of clarity. The aqueous",

dispersion of D4 therefore comprises the polymer of the present claims 1-7 and 12 in proportions according to claim 14, and surfactants. As it",

happens, considering the lack of clarity of the term softening, a person skilled in the art can interpret said dispersion as being capable of softening",

hides after tanning through the effect of surfactants of the aqueous dispersion which make it possible to remove the residues and to thus soften the,

tanned hides. The subject matter of claims 1-7, 12 and 14 is therefore known from D4. D5 discloses (D5: passages cited in the search report) a liquid",

detergent composition comprising surfactants and a foam-stabilizing cationic copolymer coming under the definition of the present claims 1, 2 and 5-7,",

in a content according to the present claim 14. To avoid the risk of a lack of clarity for the definition of the invention, the copolymer of D5 is",

considered to also have the thickening property. Given the lack of clarity of the present claim 1, the detergent composition of D5 is considered to",

soften any supple object treated with said composition in order to remove the fatty and solid substances covering it, thus giving it a supple appearance",

and therefore falling under the scope of the claims of the present application. The subject matter of claims 1, 2, 5-7 and 14 is therefore known from",

D5. Therefore the claims 1-14 do not constitute an invention under section 2 [1(j)] of The Patents Act 1970 as amended by the Patents (Amendment),

Act 2005.,

(b) INVENTIVE STEP:,

(ii) Claim(s) 1-14 lack(s) inventive step, being obvious in view of teaching (s) of cited document(s) above under reference D1-D6 for the following",

reasons:,

Subject matter as described and claimed lack inventive step/non-obviousness in view of the following prior art documents. D1: US 2004/052746 A1,

(TAMARESELVY KRISHNAN [US] ET AL) 18/03/2004 D2: EP 1099749 A2 (NAT STARCH CHEM INVEST [US]) 16/05/2001 D3: WO,

2005/087188 A1 (BEIERSDORF AG [DE]; VON THADEN STEFANIE [DE]; WARNKE KATJA [DE]; MEIER) 22/09/2005 D4: WO 97/22640,

A1 (RHONE POULENC SURFACTANTS & SP [US]) 26/06/1997 D5: US 4454060 A (LAI KUO-YANN [US],

ET AL) 12/06/1984 D6: EP 1449862 A1 (SEPPIC SA [FR]),

25/08/2004 The subject matter of present application claims 1-14 is obvious over D1-D6. Dependent claim 13 does not appear to contain any,

additional features which, in combination with the features of any claim to which said dependent claim is linked. Indeed, the subject matter of claim 13",

is considered to be a simple choice that a person skilled in the art can easily make among the possibilities presented in D2 without exercising inventive,

skill, since no surprising technical effect was demonstrated by said choice. Consequently, the subject matter of claim 13 does not involve an inventive",

step. It would have been obvious at the time the invention was made to make such a composition, because this reference teaches that all of the",

ingredients recited by applicants are suitable for inclusion in a surfactant composition. The person of ordinary skill in the surfactant art would expect,

the recited compositions to have properties similar to those compositions which are exemplified, absent a showing to the contrary. In the case where",

the claimed ranges overlap or lie inside ranges disclosed by the prior art. Therefore the claims 1-14 do not constitute an invention under section 2 [1(j)],

of The Patents Act 1970 as amended by the Patents (Amendment) Act 2005.,

3.5 The Appellant has filed the response to the objections raised in the said FER vide their letter dated 13/12/2017.,

3.6 Thereafter, the Respondent No. 2 vide hearing notice, dated 05/02/2018 appointed a hearing for 07/03/2018. The Appellant sought adjournment of",

the hearing vide letter dated 01/03/2018, and hearing was rescheduled on 12/04/2018. In the hearing notice, the following objections were",

communicated:,

a) Novelty and Inventive step objection in view of the following documents:,

D7: DE102009015868 (Klug et al.) (Family: US2012/0114571A1); and,

D8: US5686024 (Dahanayake et al.),

b) Claim 15 is mere use claim and do not involve any technical features to be considered as novel and inventive. The use of the above mentioned,

claims are an inherent industrial applicability of the preceding claims i.e. of the Appellant disclosure and doesn’t require separate recitation as,

claims. Hence, claim 15 is not allowable u/s 2(1)(j)of the Act.",

3.7 The Agents for the Appellant appeared for the hearing and submitted written submissions on 20/04/2018 along with the revised set of claims.,

3.8 The Respondent No. 2 vide an order dated 30/11/2018 refused patent application no. 10071/DELNP/2012 for the grant of patent.,

Aggrieved by the order dated 30/11/2018, the appellant has filed this appeal.",

The respondent no. 2 has refused the instant application on two grounds,

i.e. (i) lack of novelty and (ii) lack of inventive step. We will analyse both the contentions in seriatim. Let’s have a look on the hearing notice and,

the Order of respondent no.2.,

5.1 Hearing notice:,

“Objections,

Invention u/s 2(1)(j),

Subject matter as described and claimed lacks novelty and inventive step in view of the following prior art documents. D7: DE 102009015868 A1,

(Klug et al.) 26/11/2009 (Family: US 2012/0114571 A1) D8: US 5686024 (Dahanayake et al.) 11/11/1997 The subject matter of present application,

claims 1-15 is not novel and inventive over above cited documents. Claims 1-6, 8, 10, 11, 14-15 are being anticipated over D7 (Since priority document",

is in German language, US family document as consider for this report).The reference discloses cationic comb polymers comprising 20-99.9% by",

weight of ethoxylated and/or propoxylated comonomers as depicted in the abstract as formula (I); 0.1-20% by weight of a polymerizable quaternary,

ammonium compound; and 0-60.0% by weight of one or more nonionic structural units (abstract). Regarding the alkoxylated units, see for example",

[0063]- [0079]. Regarding suitable cationic co monomers, see [0191]. Regarding claim 8, suitable crosslinkers are disclosed at [0206]. Regarding claim",

11, see [0236]. Polymers according to the invention may be compounded with cationic surfactant [0284], such as di-(long-chain alkyl)",

dimethylammonium chloride or bromide, N,N-bis(2- long-chain alkanoyloxyethyl)- dimethylammonium chloride or methosulfate; or N,N-bis(2- long-",

chain alkanoyloxyethyl)- hydroxyethyl-methyl-ammonium chloride or methosulfate, all of which are well known in the surfactant art as fabric",

softeners. This reference differs from the claimed subject matter in that it does not disclose a composition which reads on all of applicant's claims with,

Claim 1 of IN ‘10071

Application",Claim 1 of D7

1.      A     Â

softening   Â

composition         for",

laundry comprising:

at least one cationic softener non

water soluble having a hydrophilic

part and a hydrophobic part; and

at least one thickener containing a

cationic terpolymer      Â

obtained by polymerization

of a cationic monomer

of a monomer with a hydrophobic

nature, of formula (I):

HÂ Â Â Â Â Â Â Â Â Â Â Â Â R1

O

H

XÂ Â Â Â Â Â Â Â Â Â Â Â Â C C C O C C O C C C O R2

HHH HH y m z H

H2 H2 2Â Â Â Â 2 2Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â 2

2Â 2

wherein, R1 = H or CH

3

R2 = alkyl chain having at least 16

carbon atoms

X = O, m ³³ 5, y = z = 0, or X =

NH, m ³³ z ³³ 5, y = 0, or",

X = NH, m ³³ y ³³ 5, z = 0;

-Â Â Â Â Â Â Â Â Â Âo f a nonionic

monomer.",

Claim 1 of (IN ‘10071),"Teaching of D7, Polymer of Formula Ia

,"“[0347] The listing below shows 285 copolymers

of the invention that are suitable with particular

advantage for formulating the compositions of the

invention.

[0356] Table A below lists examples of polymers of

the invention. In the first column of the table,

monomers of the following structural formula (Ia):

the amendments at this stage would amount to a rehearing, which is not the purpose of the review.",

We are inclined to agree with the respondent that amendement(s) if any proposed for the claims, it should have been made in prosecution stage",

itself. Also, the appellant has initailly suggested us to consider an amendment of claims bringing features of claim 3 to 1 and restricting it further shown",

as under:,

“A softening composition for laundry comprising:,

- at least one cationic softener non water soluble having a hydrophilic part and a hydrophobic part; and,

- at least one thickener containing a cationic terpolymer obtained by polymerization:,

- of a cationic monomer;,

- of a monomer with a hydrophobic nature selected from the group consisting of ethoxylated cetyl methacrylate (EO25), ethoxylated behenyl",

methacrylate (EO25) or a mixture thereof;,

- of a nonionic monomer.â€​,

The Learned counsel of the appellant submitted that the monomer of formula (I) is now limited to monomers in which R2 is an alkyl chain,

containing 16 (cetyl) or 22 (behenyl) carbon atoms. We agree that such a limitation will make the claim 1 further narrower and hence allowable as,

based on the description. The respondent also questioned only the timings of the amendments.,

While we partially agree with the submission of the counsel of the appellant on the grounds of refusal, we are inclined to give an further",

opportunity to the appellant. We are of the opinion that amended set of claims are allowable and we direct the appellant to file the amended set of,

claims, within 3 weeks to the respondent.",

We, therefore, set aside the order of the respondent no.2 dated 30/11/2018 and direct him to grant the patent on the amended set of claims, within",

3 weeks from the date of submission of the amended set of claims to him by the appellants.,

Appeal is allowed. No cost.,