Key points
- "The respondents [proprietors] argued that the distinguishing feature of claim 1 at issue would provide an unexpected advantage in terms of improved softness and in particular a synergy due to the combination of the silicone with a CPP."
- "The board notes that this formulation of the technical effect differs from that identified in the patent, and thus it is important to verify whether such a formulation is in accordance with the conclusion of the Enlarged Board of Appeal in G 0002/21 (reasons 94) that "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention".
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"In the present case it is not in dispute that the application as filed does not relate to a synergistic effect arising from the combination of a silicone with CPP or any other component. Also the fact that the application as filed (page 2, lines 7-8) indicates the CPP to be a preferred cationic polymer without explaining the reason for this preference cannot foreshadow that the claimed combination would provide any type of synergism. The respondents did also not file any evidence that it was common general knowledge that silicone and cationic polymers may provide a synergism in terms of improved softness."
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Note: If the application as filed mentioned improved softness as an advantage of the invention, requiring a specific mention of a synergy seems rather strict.
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"Therefore, it follows from the above reasons that the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and has to be disregarded."
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Turning to the evidence (obiter), it seems: " these data are not apt to show any possible improvement due to the choice of CPP as an additional softener and, in the absence of any other comparison against the closest prior art, it can only be concluded that improved softening has not been convincingly proven across the entire scope of claim 1."
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In the board's view, it was thus obvious for the skilled person faced with the technical problem posed to try as an alternative to the composition of example E4, one comprising any combination of the softening agents suggested by the description such as one comprising the silicone of example E4 with any cationic polymer disclosed in the description [of E4], for example a CPP.""
source http://justpatentlaw.blogspot.com/2024/01/t-068121-synergy-and-g-221.html
