Bristol-myers Company v L'OREAL

[1989] APO 16

In the Matter of the Patents Act 1952

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In the Matter of Application NO. 552400 for a Patent by BRISTOL‑MYERS COMPANY

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In the Matter of Opposition thereto under Section 59 by L'OREAL.

DECISION OF AN ACTING SUPERVISING EXAMINER OF PATENTS:
Background
         Patent Application No. 552400 which is entitled "Meta‑ Phenylenediamine Coupler Compounds and Oxidative Hair Dye Compositions and Methods Using Same" was lodged on 29 February 1984.  The application is based on a United States patent application which has a priority date of 10 March 1983.  Advertisement of acceptance appeared in the Official Journal on 29 May 1986.
         L'OREAL lodged notice of opposition under sub‑section 59(1) on 4 August 1986 and service of evidence‑in‑support was completed on 4 February 1988.  However on 3 October 1988 BRISTOL‑MYERS gave L'OREAL notice that it did not intend to serve evidence‑in‑answer.  Consequently the matter was set down for hearing in Melbourne on 13 February 1989.  The notice of opposition specified paragraphs (e), (g), (h) and (i) of sub‑section (1) of section 59 as grounds of opposition and also stated that the opponent reserved its right to base its opposition on the grounds in paragraphs (a), (b), (c), (d) and (f) of sub‑section (1).  At the hearing, argument was restricted to those grounds concerned with prior publication, novelty and

obviousness.  At the hearing BRISTOL‑MYERS was represented by Mr P.W. Jones, patent attorney of Phillips, Ormonde & Fitzpatrick and Mr J. Murray, patent attorney of James Murray & Co., represented Edwd. Waters & Sons, L'OREAL's patent attorneys.
The Specification
         The specification, as accepted commences as follows:

"This invention relates to 2‑equivalent coupler compounds for oxidative hair dye compositions, some of which are also novel compounds, 1,5‑disubstituted‑2,4‑

dinitrobenzene intermediary compounds thereof, as well as to oxidative hair dyeing compositions and hair dyeing methods using these coupler compounds.  More particularly, this invention relates to a class of 2‑

equivalent oxidative hair dye coupler compounds which are meta‑phenylenediamines with additional substituents at the 1‑position and at the 5‑position of the benzene ring.  During the oxidative coupling reaction between the oxidative dye coupler and an oxidation developer or base, the 5‑substituent is eliminated."

Then follows a description of the prior art which includes a reference to an article written by John F. Corbett, who is named as one of the actual inventors in the present application, and a reference to US patent No. 3037057.
         The invention is described in similar terms to those found in the claims and for the purposes of this decision the two relevant claims are the independent claims 1 and 9 which read as follows:

"1.An oxidation dye coupler compound of the formula

wherein R and R' may be the same or different and represent alkyl, hydroxyalkyl, polyhydroxyalkyl, alkoxyalkyl, alkyl substituted with phenyl, aminoalkyl, monoalkylaminoalkyl, dialkylaminoalkyl, phenyl or phenyl substituted with alkyl except that R and R' are not both methyl, and when R is hydroxyalkyl, R' is not alkyl; and the acid addition salts thereof.

9.A hair dyeing composition comprising an aqueous mixture of at least one oxidation dye coupler of the following formula (I):

wherein R represents alkyl, hydroxyalkyl, polyhydroxy‑ alkyl, alkoxyalkyl, alkylphenyl, aminoalkyl, mono‑ and di‑alkylaminoalkyl, phenyl or phenylalkyl, and X represents a halogen atom or the group ‑OR' where R' has the same meaning as R and when X is ‑OR', the groups ‑OR and ‑OR' may be the same or different; except that when R is methyl R' is not methyl; and the acid addition salts thereof, and at least one oxidation base developer compound, said coupler and said developer being reactive with each other in the presence of an oxidizing agent to form a colored dye on hair."

Claims 2 to 8 and 17 are appended to claim 1.  Claim 10 is appended to claim 9 and claims 11, 12 and 18 are appended to claims 9 or 10.  Claims 13 to 15 define a method of dyeing keratinic fibers which comprises applying to the fibers the hair dyeing compositions of any one of claims 9 to 12 in the presence of an oxidizing agent.  Claim 16 defines a prepackaged unit dosage hair dyeing composition comprising in a first compartment an amount of the hair dyeing composition of claim 9 and in a second compartment a stabilised peroxide oxidizing agent.
         I note that the description, which commences at page 11, line 12, describes the oxidation dye coupler compounds of the invention by reference to the same formula which is used in claim 9, but in contrast to claim 9 the compounds in which "R" and "R'" are both methyl are not excluded.  This description also conflicts with the description on page 5.  Consequently I think the invention is not fully described because the description on page 11 is in error.
The Evidence
         The evidence‑in‑support of the opposition consists of declarations made by Peter Chapman Cook, Jean Cotteret, James Murray and Lia Bronstijn.
         The declarations of Ms Bronstijn and Mr Murray establish that all of the documents cited by L'OREAL were published before the present priority date.
         The declaration of Mr Cotteret who is a chemical engineer employed by L'OREAL states that tests were carried out under his supervision and he concurs with Mr Cook's presentation and analysis of the results of these tests.
         Mr Cook, has experience in the pharmaceutical industry in Australia.  In his declaration he criticises the specification of application No. 552400 on a number of points.  Firstly he says he doubts the correctness of the statement that the present oxidation dye couplers produce hair dyes with superior colorfastness compared to the oxidation dye coupler disclosed in Dr Corbett's article.  Secondly he criticises the present specification as follows:

"There is no comparison with the "inventive" compound closest to a known compound, that is, where one of the methoxy groups is replaced by an ethoxy group."

Thirdly he criticises the statement on pages 24 and 25 of the specification which states that an advantage of the present 2‑equivalent oxidation dye couplers is that they require a smaller amount of oxidizing agent, than a 4‑equivalent coupler, to produce the same degree of coloration.
         Mr Cook then discusses the prior art which he considers relevant to the present claims which includes US patent No. 3037057 and two articles written by Dr Corbett.
         Mr Cook's declaration also includes two exhibits one of which (exhibit LO1) contrasts the reaction pathway and intermediates involved in dye formation from 2‑equivalent and 4‑equivalent oxidation dye coupler compounds.  The other exhibit (LO2) describes the results of the series of tests which Mr Cotteret supervised.
Submissions
         I do not think that it is necessary to summarise the submissions which were made at the hearing apart from those relating to a document which Mr Murray lodged at the hearing.  This document was similar to exhibit LO1 to Mr Cook's declaration.  Mr Jones argued that the lodgement of this document was an attempt to introduce further evidence and he submitted that I should not allow Mr Murray to present arguments on the basis of this document.  Mr Murray agreed to base his submissions on exhibit LO1 consequently there is no need to consider this document further.  However I should point out that I am satisfied that consideration of this document would not alter my findings in this decision.
Obviousness
         The law on obviousness is set out by Aikin, J in the case of Minnesota Mining and Manufacturing Co. and 3M Australia Pty. Ltd. v. Biersdorf Ltd. (29 ALR 29 at pages 57 to 59). Mr Jones argued that there was no evidence that any of the citations formed part of common general knowledge. Consequently he submitted that there was no basis on which to attack the specification of application No. 552400 on the ground of obviousness. I agree with Mr Jones and I am satisfied that the subject matter which is defined in the present claims is not obvious.
Anticipation
         In my view the only citations which have some relevance to the present claims are two articles written by John F. Corbett and US patent No. 3037057.  Moreover I think that the question of anticipation can be resolved by consideration of the disclosures of these citations with respect to claims 1 and 9 only because these two claims are the only independent claims.
The Corbett Articles
         The article, which is referred to as prior art in the present specification was published in The Journal of the Chemical Society Volume, Perkin II and is entitled "Benzoquinone Imines.  Part X.  The Mechanism and Kinetics of the Reactions of p‑Benzoquinone Di‑imine and p‑Benzoquinone Monoimine with C‑Methoxy‑
m‑diamines and p‑Methoxy‑ and p‑Chloro‑phenols."  The other article was published in the Journal of the Society of Cosmetic Chemists and is entitled "The Role of Meta Difunctional Benzene Derivatives in Oxidative Hair Dyeing. I. Reaction with p‑Diamines".
         Mr Murray submitted that both these articles constituted a single source of information because the former article was cross referenced in the latter article (Warner Laboratories (George) Pty. Ltd. v. Chemspray Pty. Ltd. 41 ALJR 75). Mr Jones argued that the only compound which is within the scope of the present structural formulae and which is also disclosed in these articles is excluded from the scope of claims 1 and 9 by the exception of compounds in which both "R" and "R'" are methyl. 4,6‑dimethoxy‑1,3‑diamino‑ benzene is the only compound which I can find disclosed in Dr Corbett's articles which is also within the scope of the structural formulae in the present claims 1 and 9. The structural formulae in these claims corresponds to this compound when "R" and "R'" are both methyl. The compound in which "R" and "R'" are both methyl is excluded from the scope of the both claims. Accordingly 4,6‑dimethoxy‑1,3‑diaminobenzene and the addition salts thereof are specifically disclaimed by claims 1 and 9 of application No. 552400 (EMI v. Lissen 56 RPC 23 at page 39). Therefore the subject matter claimed in claims 1 and 9 cannot be anticipated by the disclosures in Dr Corbett's articles.
US Patent No. 3037057
         US patent No. 3037057 describes a broad range of aromatic aminoalcohols represented by the general formula:

wherein R designates alkylene and oxyalkylene radicals containing at least 2 carbon atoms, the oxyalkylene radicals being connected to the phenyl ring through the oxygen atom thereof; X designates hydrogen, halogen, and the lower alkyl and lower alkoxy radicals containing up to four carbon atoms, Y designates the same radicals as X as well as the amino radical, and the hydroxyl radical is connected to the phenyl ring through a carbon chain containing at least 2 carbon atoms.
         Mr Murray submitted on the basis of the judgement in General Tire v. Firestone (The General Tire and Rubber Company v. The Firestone Tyre and Rubber Co. Ltd. 1972 RPC 457 at page 486) and the judgement in Griffin v. Isaacs (Griffin v. Isaacs 12 ALJ 169) that the subject matter defined in claims 1 and 9 had been prior published by and rendered not novel by US patent No. 3037057. Mr Jones pointed out that the compounds described in this citation are excluded from the scope of claim 1 by the exception of compounds wherein "R'" is not alkyl if "R" is hydroxyalkyl. He then submitted that US patent 3037057 did not anticipate the invention defined in the present claim 9.
         I agree with Mr Jones that all the compounds, which are described in US patent No. 3037057, and which are defined by the structural formula in claim 1, have been excluded from the scope of the claim by the exception in that claim.  These compounds are therefore disclaimed by claim 1 (EMI v. Lissen 56 RPC 23 at page 39). Thus I am satisfied that the compounds defined in claim 1 are not anticipated by the disclosures in this citation.
         Although claim 9 claims a composition it is apparent that US patent No. 3037057 will not satisfy the well known criteria for anticipation, e.g. clear and unmistakable directions (Flour Oxidizing Co. v. Carr Co. Ltd. 1908 RPC 428 at page 457) unless the generic formula described in the citation discloses compounds with the structural formula defined in the claim. In this regard it seems to me that the generic formula in US patent No. 3037057 satisfies "the gorilla test" (Beecham Group Ltd. v. Bristol Myers Co. 1 NZLR 192 at page 218). That is, the generic formula describes countless permutations and combinations of chemical formulae which could have been produced by a gorilla mindlessly producing chemical formulae with no knowledge of what they mean, nor whether any suggested formula was capable of manufacture. Thus I do not think the proper approach is to consider that the generic formula in US patent No. 3037057 discloses all the structural formulae which a gorilla might derive by choosing any of the substituents and by choosing any substitution pattern of the benzene ring. Rather I think the generic formula has to be considered in conjunction with the compounds specifically described in the citation in order to determine which combinations of substituents, and which substitution patterns are disclosed in the citation. To do otherwise is to ignore a molecule as an entity and merely regard it as a collection of substituents which can be interchanged at any positions of the benzene ring. It is apparent after reading US patent No. 3037057 that the citation does not specifically describe any 4,6‑disubstituted‑1,3‑diaminobenzenes, which are the compounds claimed in claim 9. Thus I consider that the generic formula in the citation does not disclose the oxidation dye couplers defined in the present claim 9. An alternative analysis can be performed by applying the reasoning of the High Court in the case of Ethyl Corp. v. Commissioner of Patents (1969 AOJP 2860).  Applying this reasoning to the present situation I conclude that the generic formula in US patent No. 3037057 does not disclose the compounds claimed in claim 9 because the generic formula may, but it does not necessarily include them.  Consequently I am satisfied that the disclosures in this citation do not anticipate the composition claimed in claim 9 of application No. 552400.
Section 40
         Mr Murray did not make specific submissions with respect to the compliance of the specification of application No. 552400 with section 40, however he did say that he relied on all the points raised in Mr Cook's declaration.  The tests described in exhibit LO2 compare the colorfastness of four hair dye compositions which have similar proportions of components  to those described in the present example 8.  The oxidation dye couplers used in these tests include those with the structural formula in claim 1 in which "R" and "R'" are both 2‑hydroxyethyl (compound 2), "R" and "R'" are both methyl (compound 3) and "R" is methyl and "R'" is 2‑hydroxyethyl (compound 4).   The results of the tests showed that the three oxidation dye coupler compounds produced dyes which had identical colourfastness on hair.  Compound 3 is the compound disclosed in Dr Corbett's articles.  In Mr Cook's opinion the results of these tests cast doubt on the statement which bridges pages 14 and 15 of the present specification which states that the present oxidation dye coupler compounds have superior colorfastness compared to the coupler compound disclosed in Dr Corbett's article.  Mr Jones submitted that the oxidation dye coupler compounds which were tested are not relevant to the statements in the present specification.
         The relevant part of the description in this regard reads as follows:

"Surprisingly, it has now been found that in the coupling reaction with p‑phenylenediamine color developers used in hair dye compositions the colorfastness of the dialkoxy m‑phenylenediamine compounds of formula (I‑a) wherein R and R' are both alkyl with the total number of carbon atoms in the two alkoxy groups being 3 or more are unexpectedly superior to the colorfastness of the compound disclosed by Corbett, i.e. R=R'‑CH3 (a total of 2 carbon atoms in the dimethoxy groups)."

Thus the relevant comparison in this statement is between the compound disclosed in Dr Corbett's article and compounds with the structural formula of claim 1 in which both "R" and "R'" are alkyl.  However the results described in exhibit LO2 do not exemplify such a comparison because the comparative compounds (compounds 2 and 4 above) have structural formula in which at least one of "R" or "R'" is a hydroxyalkyl group.  Consequently I agree with Mr Jones's submission that the compounds which were tested are not relevant to the statements in the present specification.
         The second criticism made by Mr Cook concerns the present specification's lack of description in relation to a comparison of the properties of the present oxidation dye couplers with the properties of the closest known compound.  Thus, in his opinion, the present specification should have described a comparison between the colorfastness of hair dyed with the oxidation dye coupler which has the structural formula defined in claim 1 in which "R" is methyl and "R'" is ethyl with hair dyed with the compound disclosed in Dr Corbett's articles.  It seems to me that the purpose of this criticism is to cast further doubt on the accuracy of the paragraph which bridges pages 14 and 15 of the specification which I have quoted above.  Mr Cook does not report the results of the comparison which he considers ought to be described in the present specification.  And, as Mr Jones pointed out, L'OREAL bears the onus of proving the inaccuracy of statements in the present specification (McGlashan v. Rabbett 9 CLR 223 at page 229). Because there is no evidence before me in regard to the accuracy of the paragraph which bridges pages 14 and 15 of the specification I conclude that this paragraph does not result in the present specification not complying with section 40.
         Mr Cook's third criticism of the specification relates to the amount of oxidizing agent which is used in the present hair dyeing compositions.  In particular he states as follows:

"The fact that, in the reaction mechanism, the particular couplers act as 2‑equivalent couplers (a known mechanism, as pointed out above) is a matter of theoretical interest.  They would act in that way whether the oxidizing agent was in excess or not.  In this connection, I note that all dyeing compositions make use of an excess of oxidizing agent, even the compositions exemplified in the application.  This excess drives the reaction to completion, the oxidizing agent being a relatively cheap component."

The results described in exhibit LO2 do not relate to a comparison of the amount of oxidizing agent required by various oxidation dye coupler compounds to produce the same degree of coloration.  The relevant parts of the specification which describe the amount of oxidizing agent reads as follows:

"Usually, the amount of oxidizing agent is far in excess of that required to oxidize the intermediates, the amounts taken being dependent on the form and concentration of the oxidizer selected.  However, it is one of the important features of the present invention that since the meta coupler component of formula (I), including the novel compounds of formula (I‑a), are 2‑equivalent couplers and, therefore, only about one‑

half of the amount of oxidizing agent usually used for oxidation dye compositions, based on 4‑equivalent meta couplers, is required to produce the same degree of coloration. ... Or (sic) course, to the extent that other oxidation dye intermediates are used in conjunction with the meta coupler compounds of this invention an actual 50% reduction of the total quantity of oxidizing agent may not be practical."

Mr Jones said that it was apparent from the description in the present specification that the amount of oxidizing agent could be reduced by up to 50% and, in his opinion, this was a desirable feature of the compositions.  He also pointed out that L'OREAL had not adduced any evidence which showed that the amount of oxidizing agent could not be reduced by up to 50%.  I agree with Mr Jones in this regard.  However I note that earlier in this decision I found an instance where the specification failed to comply with section 40.
Summary
         I have found that the specification of application No. 552400 has not been anticipated and is not obvious.  The specification however does not comply with section 40 in the instance I have noted and I allow BRISTOL‑MYERS 60 days from the date of this decision to propose amendments to overcome this defect.  I award the costs of this opposition against L'OREAL.

(M. KENDALL)

Attorneys for the Applicant: Phillips, Ormonde & Fitzpatrick