BRISTOL-MYERS Company v L'OREAL

[1988] APO 36

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 526329 for a Patent by BRISTOL-MYERS COMPANY - and - In the Matter of Opposition thereto under Section 59 by L'OREAL.

DECISION OF A SUPERVISING EXAMINER OF PATENTS

Background

Patent application No. 526329, which is entitled "Hair Conditioning Composition and Method", was lodged on 2 July, 1980. The earliest priority date of this application which is based on three United States patent applications is 2 July 1979. Advertisement of acceptance appeared in the official Journal of 6 January 1983.

L'OREAL lodged notice of opposition under sub-section 59(1) on 6 April 1983 and service of evidence was completed on 11 November 1986. On 13 May 1985 and 11 December 1985 the applicant lodged requests to amend the complete specification under section 77 and neither req4est was opposed. Allowance of these requests was advertised in the Official Journals of 19 December 1985 and 26 June 1986 respectively. A further request to amend the complete specification under section 77 was lodged on 5 February 1988.

The opposition under section 59 was set down for hearing in Melbourne on 8 February 1988. The notice of opposition specified paragraphs (a) to (i) inclusive of sub-section (1) of section 59 as the grounds of opposition; however at the hearing argument was restricted to those grounds specified in paragraphs (e), (g), (h) and (i), i.e. anticipation, obviousness and compliance with section 40. At the hearing Mr P.W. Jones, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne, represented the applicant (BRISTOL-MYERS) and Mr J. Murray, Patent attorney of Edward Waters & Sons, Melbourne, represented L'OREAL.

The Specification

The specification, as amended by the requests under section 77 lodged on 13 May 1985 and 11 December 1985 relates to compositions that are useful in conditioning hair and to processes for conditioning hair by employing such compositions.

It is known in the prior art to treat hair with certain quaternary amine compounds for the purpose of conditioning hair i.e. to improve its compatibility, manageability and softness. Although such prior art compositions have proven to be effective in varying degrees, one of the chief drawbacks has been the fact that the effect has not been long-lasting i.e. it does not survive repeated shampooings.

Accordingly it is an object of the present invention to provide a hair conditioning composition that retains its conditioning effect through repeated hair shampooings.

The invention is then described in similar terms to those found in claim 1 which reads as follows:

"1. A composition for conditioning hair which has been previously treated with a treating agent having an alkaline pH, said composition comprising:

(a) from 0.4% to 20% of at least one cationic polymer which produces a durable conditioning effect;

(b) from 0.2% to 20% of an amphoteric surfactant; and

(c) sufficient acid to give the composition a pH in the range of from 1 to 6; the ratio

=(polymer (mer)]

[detergent (mol)]

being from 0.2 to 5; in

(d) an aqueous carrier; with the proviso that the composition does not contain an anionic surfactant".

Optionally the composition also includes from 0.1% to 5% of a betaine having the formula:

wherein R is a long chain aliphatic radical containing from'10 to 24 carbon atoms. The present invention also involves a method for conditioning hair which has been previously treated with an agent having an alkaline pH, by applying thereto the composition of this invention.

The conditioning process is described as follows:

"When the composition is brought into contact with hair which has been previously treated with an agent having an alkaline pH and, therefore, has a residual alkaline pH, the pH of the composition changes to alkaline, the amphoteric surfactant becomes anionic, and enters into a reaction with the cationic polymer product which results in the precipitation of a durable conditioning agent on the hair".

The cationic polymers which are useful for the purposes of the present invention can vary, but it is desirable that the polymer has at least one positively charged nitrogen or sulfur moiety.

The specification also states that it is entirely unpredictable from the structural characteristics of a polymer whether or not it will perform as a cationic polymer product for the purposes of the present invention.

A simple test was devised to determine the usefulness of materials for the conditioning of hair. The details of the test are described and a subjective scale of 5 values is used to define the ease of combing, i.e. the degree of conditioning of hair with the value 1 represents the compatibility of hair that is not conditioned at all and 5 represents the best conditioned value. If hair has a value of at least 3 after three shampooings then it is considered to have been durably conditioned.

A number of different polymers were tested to determine whether they satisfied the requirements of a cationic polymer product. It was determined that it is entirely unpredictable from the structural characteristics of a polymer whether or not it will perform as a cationic polymer product. For example dimethyl diallyl ammonium chloride homopolymer, sold under the name of MERQUAT-100 performed satisfactorily under the criteria for durable conditioning but its low molecular weight (5000) homolog did not. The specification then lists a number of cationic polymers which do not show a durable conditioning effect e.g. POLYMER JR-400 and GAFQUAT 755N and a number of cationic polymers which do show a durable conditioning effect e.g. ONAMER M. The term "cationic polymers" includes copolymers of multiple monomers as well as mixtures of cationic polymers.

The second essential component of the compositions of this invention are the amphoteric surfactants and there are a number of amphoteric surfactants that are suitable. Another essential feature of the present composition is that the solution have a pH that falls in the range of 1 to 6. A variety of acids may be used in adjusting the PH e.g. hydrochloric, citric or phosphoric acid.

Aside from the quantities of the cationic polymer and amphoteric surfactant, the conditioning effectiveness of the present composition is highly dependant upon the "molar ratio" of polymer to detergent being in the range of 0.2 to 5.

The composition of the invention may be applied to hair in any suitable manner and the compositions will be applied to hair that has previously been given a treatment which leaves the hair somewhat alkaline. Typical of such treatments are oxidation hair dye systems or bleaching systems. The pH of the hair conditioning compositon will be selected to some extent on the basis of the alkalinity of the hair to be treated and the relative amounts of cationic polymer and amphoteric surfactant. In general, the pH is selected so that after the composition is applied to the hair and comes under the influence of the alkalinity of the hair, the pH of the composition is increased by approximately 1 pH unit above the pH, at which precipitation of the conditioning agent takes place.

The text of claim 1 has been set out above and claims 2 to 13 and 17 are appended to this claim. Claims 15 and 16 are appended to claim 14 which reads as follows:

"14. A method for conditioning hair which has been previously treated with a treating agent having an alkaline pH, the improvement which comprises applying to said pretreated hair a composition as defined in any one of the claims 1 to 13 for sufficient time to improve its combing characteristics and/or its manageability, and/or its softness".

The Evidence

The evidence-in-support of the opposition consists of declarations made by Karen Anne Harris, Barry Thomas Hunt, James Murray (2 declarations), Rose Therese Smith (2 declarations), David James Adamson, Jean Francis Grollier, Robert Owen Hellyer, Thomas Edwin Simmons and an affidavit made by Margaret Louise Fortescue.

Margret Louise Fortescue, who is an International Sales Manager for Union Carbide Corporation (UNION CARBIDE), states that to the best of her knowledge the technical bulletin entitled "Polymer JR for Hair Care" which is published by UNION CARBIDE, was available in Australia before July 1979. This conclusion is based on the fact that UNION CARBIDE sold and distributed POLYMER JR in Australia prior to July 1979.

The declarations of Ms. Harris, Ms Smith and Mr Murray establish that all of the documents cited by L'OREAL, apart from US patent No. 4810084, were published before the present priority date.

Mr Hunt, a Development Chemist with Ensign Laboratories Pty. Ltd., declares that in 1977 and 1978 the Journal "Soap/Cosmetics/Chemical Specialities", would have taken approximately two to three months to arrive in Australia from the United States. He also states that he would have perused each copy of the Journal.

Mr Adamson, who is Product Manager of UNION CARBIDE in Australia, states in his declaration that the dates of first sale in Australia of POLYMERS JR-125, JR-400 and JR-30M were June 1972, December 1975, and October 1979, respectively. In addition Mr Adamson, declares that the article "Polymer JR for Hair Care" is an example of written material that was available to the public in Australia prior to the present priority date.

Mr Grollier, who is the Head of the Research and Development Department of L'OREAL, criticises the accepted specification of application No. 526329, in his declaration.

Dr Hellyer, who is managing director of a company which carries out specialised technical and scientific consultancy work for the cosmetic, toiletry and pharmaceutical industry, has expertise in all the important aspects of the development and application of cosmetics and toiletries in Australia.

Dr Hellyer states that the assertions in the present specification relating to the durable conditioning effect do not appear to add anything to what was known in Australia at the priority date. He asserts this effect is mentioned in GB patent No. 1443426. Dr. Hellyer infers that any suitable, known cationic polymer is included in the present compositions and he refers to US patent No. 3917817, GB patent No. 1437912 and FR patent No. 2389374 which describe examples in which cationic polymers are combined with amphoteric surfactants. He also asserts that the French patent is equivalent to US patent No. 4180084 which was published after the present priority date and he refers to this US patent as a translation of the French document.

Dr Hellyer also points out that US patent No. 3996146 discloses shampoo formulations in which the importance of the pH is considered. He also refers to the article entitled "Onamer M-A New Cosmetic Ingredient", "Harry's Cosmeticology" and a pamphlet entitled "Hair Care, Shampoos, Conditioners and Fixatives", which he declares he had in his possession before the priority date. He makes particular reference to compositions which contain the amphoteric surfactants DERIPHAT 170-C and MIRANOL C2M5F.

Dr Hellyer concludes that the claims of application No. 526329 include matter which was known at the present priority date.

Mr Simmons, who is managing director of a company which specialises in technical consulting services to the cosmetics and toiletries industry has practical and theoretical experience with these industries in Australia dating from 1951.

Mr Simmons asserts that the conditioner of the opposed specification was known in Australia at the priority date and was marketed in Australia by Revlon under the trade mark "Milk Plus Six". He states that the Revlon formulation was based on US Patent No. 3990991, which discloses a combination of POLYMER JR-type polymers with an amphoteric surfactant and a cryptoanionic surfactant.

Mr Simmons also refers to the article "Onamer M - A New Cosmetic Ingredient". He specifically points to example (i) in this article. He submits that if such a formulation were to be used on alkaline hair, it would be expected that a durable non-flaky film of conditioning complex would be formed on the hair.

Mr Simmons declares that after examination of his personal files he can state that during the early months of 1979 he became aware of the polymer ONAMER M. He did some experimental work with the polymer and he obtained from the distributor of the polymer a copy of written material entitled "Onamer M".

According to Mr Simmons it was known in Australia at the priority date of application No. 526329 that cationic polymers were substantive to hair and were resistent to rinsing and shampooing. He says it was also known that these polymers were particularly substantive to bleached hair and that amphoteric surfacants such as MIRANOL C2MSF improved the level of deposition. He refers to the technical bulletin "Polymer JR for Hair Care" and he points out that the present specification only states that POLYMER JR-400 does not produce a durable conditioning effect. In particular Mr Simmons refers to a formulation described in the technical bulletin which uses MIRANOL C2MSF, POLYMER JR-400 and POLYMER JR-30M and which he calculates has a molar ratio within the range presently claimed.

Again after examination of his personal files, Mr Simmons states that during May and June, 1977 he obtained a copy of a booklet entitled "Polymer JR Resins" from UNION CARBIDE in Australia. He concludes that the claims of application No. 526329 include compositions which have been previously disclosed.

The evidence in answer consists of declarations made by January Wolfram and Dianne Atkinson.

Dr Wolfram, who is named as one of the actual inventors in the present application is vice president and research director of a subsidiary company of BRISTOL-MYERS in America.

Dr Wolfram distinguishes the shampoo compositions described in GB patent No. 1470234 from the present compositions because the cited compositions include POLYMER JR-type polymers, which the present specification states do not produce a durable conditioning effect.

Dr Wolfram argues that the fundamental requirement that the composition include an amphoteric surfactant is not disclosed in GB Patent No. 1433426, because one essential ingredient is selected from a list of surfactant which includes anionic surfactants. He also points out that the examples described in this citaton use high concentrations of surfactants.

Dr Wolfram also declares that the cationic polymers, which are used in the compositions described in US patent Nos. 3917817 and 3990991 and GB patent No. 1437912, do not produce a durable conditioning effect. In respect of the compositions disclosed in the first citation he says that the molar ratio is outside the range defined in the present claim 1. In respect of the compositions disclosed in the other two citations he points out that they include a cryptoanionic surfactant, which functions as an anionic surfactant.

Dr Wolfram points out that cationic or non-ionic surfactants are described as the preferred compounds for use in the compositions disclosed in FR patent No. 2389374, moreover he says this citation does not suggest that an acid pH is essential to the invention.

Turning to the article entitled "Onamer M-A New Cosmetic Ingredient" Dr Wolfram asserts that the composition described in example (J) has a molar ratio and a pH which lie outside the ranges specified in the present claims. He also points out that at least two anionic detergents are essential ingredients of the composition described in US. patent No. 3996146.

Dr Atkinson, who is a lecturer in Colloid Science at Swinburn Institute of Technology in Melbourne has written several papers in the field of surface and colloid chemistry dealing with solid substrates of industrial importance.

Dr Atkinson declares that she recognises Dr Wolfram as an international expert in the field of keratin chemistry and she also states that she agrees with many of the arguments which Dr Wolfram raises in his declaration.

Dr Atkinson disagrees with Mr Grollier's submission that the term cationic polymer is inadequately defined. She states that in her considered opinion, a skilled expert in Australia would not have had any difficulty in understanding the invention as described in the opposed specification prior to its priority date. She states this expert would have no difficulty in setting up the apparatus and undertaking the tests required to decide whether a selected cationic polymer did or did not produce the durable conditioning effect which is described in the opposed specification.

The evidence-in-reply consists of further declarations made by Mr Murray, Mr Simmons and Dr Hellyer.

Dr Hellyer declares that it is practically impossible to calculate the molar ratio in the various examples of the main citations since the cationic polymers and/or the amphoteric surfactants are not well defined products. But he points out that this difficulty in calculation does not necessarily lead to the conclusion that the values claimed are not actually anticipated by these citations. Dr Hellyer states that there are specific examples in the various citations which fall within the defined range and he tabulates these. Included in this table are two patents which were not cited in the evidence-in-support (FR patent Nos. 2251307 and 2382232) but which were available in the Patent Office library before 2 July, 1979.

Regarding Dr Wolfram's statement that all POLYMER JR-type polymers do not provide a durable conditioning effect, Dr Hellyer, states that such a mere affirmation, without supporting evidence, is not credible.

Mr Simmons merely states that he agrees with the arguments raised in Dr Hellyers's second declaration and Mr Murray's declaration exhibits certified translations of the French patents which are mentioned for the first time in Dr Hellyer's second declaration.

Molar Ratio

An essential feature of the composition defined in the present clam 1 is that the molar ratio has to lie in the range of 0.2 to 5. The relevant part of the present description reads as follows:-

"The term "molar ratio" as used herein is designated by the letter a and is defined as:

a =[Polymer (mer)]

[Detergent (mol)]

In the above expression and elsewhere in the specification and claims, the term [Polymer (mer)] refers to the number of mols of the repeating units of the polymer contained in the compositon and bearing a positive charge. The term [Detergent (mol)] in the aforesaid expression and elsewhere is defined as the number of mols of detergent contained in the composition".

A document lodged at the hearing on behalf of BRISTOL-MYERS sets out the calculation of the molar ratio for the composition described in example 1 of US patent No. 4180084, in which the value of [polymer(mer)] is calculated using the molecular weight of the repeating unit of the cationic polymer.

I allowed both Mr Jones and Mr Murray to lodge documents after the hearing in respect of the calculation of the molar ratio of compositions described in some of the citations.

The document lodged on behalf of L'OREAL describes the calculation of the molar ratio for the same examples in the same citations that are described in the BRISTOL-MYERS documents. However the L'OREAL document states as follows:-

"the term [Polymer(mer)] refers to the number of mols of the repeating units of the polymer bearing a positive charge (which obviously means one positive charge)".

Thus in this document the value of [polymer(mer)] is calculated using the molecular weight of the repeating unit of the cationic polymer divided by the number of charges in the repeating unit.

I do not think that the method of calculation, which is described in the L'OREAL document, was used to calculate all the molar ratio values reported in the opponents evidence even though the same values are reported for the examples, which appear in both the L'OREAL document and Dr Hellyer's declaration in the evidence-in-reply.

Thus in the evidence-in-support Mr Grollier states that (polymer (mer)] is calculated as follows:

"% by weight cationic polymer molecular

weight of each repeating unit of polymer"

Mr Simmons, in the evidence-in-support, states that the value for the molar ratio of the composition described in example (i) in the article "Onamer M - A New Cosmetic Ingredient" is 0.77. Whereas Dr Hellyer in the evidence-in-reply, calculates a value of 0.22 for this composition. In my view Dr Hellyer would not obtain this value for the molar ratio if in the calculation of (polymer (mer)] he had used the molecular weight of the repeating unit of ONAMER M divided by the number of positive charges in the repeating unit of this cationic polymer.

I note that Dr Wolfram states that the term [polymer (mer)] refers to the molar concentration of polymer bearing a positive charge. Thus in my view the phrase "and bearing a positive charge" in the definition of this term in the present specification indicates that only the amounts of cationic polymer are used in the calculation and not the amounts of all polymers. Thus the phrase does not indicate that the molecular weight of the repeating unit is divided by the number of charges in the repeating unit. Therefore I consider that the calculation of the molar ratio for the composition described in example 1 of US patent No. 4180084, which is set out in the L'OREAL document, does not accord with the definition in the present specification.

The document lodged on behalf of BRISTOL-MYERS after the hearing reports the calculation of the molar ratio for the composition described in example 10 of FR patent No. 2382232. This composition contains two cationic polymers and the molar ratio is calculated using only the amount of the cationic polymer which produces a durable conditioning effect. The L'OREAL document, on the other hand, includes the amounts of both cationic polymers in the calculation of the molar ratio.

Although the compositions of the present invention may contain optional ingredients to improve the organoleptic character of the product or its ease of application, I note that the specification does not specifically mention cationic polymers, which do not produce a durable conditioning effect, as optional ingredients. It seems to me, therefore, that the calculation of the molar concentration of polymer bearing a positive charge only includes the cationic polymers which are an essential feature of the present invention. Consequently I consider that the molar ratio value for the composition described in example 10 of FR patent No. 2382232, which is set out in the L'OREAL document, has not been calculated according to the definition in the specification of application No. 526329. It is also apparent that the molar ratio values which are tabulated in Dr Hellyer's second declaration and which are equivalent to those calculated in the L'OREAL document are also not in accordance with the present specification.

I consider that the calculations in both the BRISTOL-MYERS documents are in accordance with the present specification.

Common General Knowledge

Before considering whether the invention defined in the claims of application No. 526329 has been anticipated or is obvious, it is necessary to decide which, if any, of the documents lodged by L'OREAL are part of common general knowledge.

Mr Jones conceded that "Harry's Cosmeticology" was fundamental to this area of technology but submitted that there was no evidence to show that any other document served by L'OREAL was part of common general knowledge.

Mr Simmons does not mention "Harry's Cosmeticology" in his declaration whereas Dr Hellyer declares that it is one of the standard text-books in the industry. However for the purposes of this decision I will assume that the pages of "Harry's Cosmeticology", which have been adduced by L'OREAL, are part of common general knowledge. I agree with Mr Jones's submission with respect to the other documents served by the opponent.

Obviousness

Mr Jones drew my attention to the law set out in Minnesota Mining and Manufacturing Co. and 3M Australia Pty. Ltd., V. Bieirsdorf Ltd., (29 ALR 29 at pages 57 to 59), i.e. that evidence in support of the objection of obviousness has to come from common general knowledge in the art in Australia. He argued that this was not the situation in the present opposition as all that the declarations lodged on behalf of L'OREAL established was what was public knowledge rather than what was common general knowledge.

The pages from "Harry's Cosmeticology", which form part of L'OREAL'S evidence-in-support, describe the raw materials used in the formulation of shampoos including a classification of the surfactants which are used. Dr Hellyer refers to this reference to illustrate his argument that various features of the presently claimed composition (e.g. amphoteric surfactants) are well known in Australia. However, in my view, these pages of "Harry's Cosmeticiology, do not make it obvious to the non-inventive skilled worker in the field to select the combination of features presently claimed (Minnesota Mining case, supra, page 58). Therefore I am satisfied that there is insuffient evidence for me to find that the claims of the specification of application No. 526329 are obvious.

Anticipation

Mr Murray submitted that the claims of application No. 526329 were anticipated by the disclosures in many of the documents adduced by L'OREAL. However I will only consider the most relevant of these citations.

GB Patent No. 1470234

GB patent No. 1470234, which was published in Australia before the earliest priority date, relates to an aqueous detergent composition, characterised by the capacity for conditioning cleansed hair, comprising a substantially water soluble quaternary nitrogen containing cellulose ether in combination with an amphoteric detergent or a polar non-ionic detergent or a mixture thereof in aqueous solution. The patent states that the compositions provide excellent conditioning of the hair because of the strong association between the quaternary nitrogen containing cellulose ether and the hair fibre, which is sufficient to withstand repeated rinsing. Dr Hellyer in the evidence-in-reply points out that the certified translation of the corresponding French patent No. 2229390 actually states that the hair withstands repeated washings. The concentration of the amphoteric detergent in the formulation may vary from 5 per cent to 30 per cent by weight. The patent contemplates the inclusion of an organic anionic detergent and the pH range is disclosed as being from a pH of 5.0 to 10.0. The cationic polymers disclosed in GB patent No. 1470234 are POLYMER JR-125, JR-400 and JR-30M.

Mr Murray submitted that the present specification merely states that POLYMER JR-400 does not produce a durable conditioning effect whereas GB patent No. 1470234 also discloses compositions which include POLYMER JR-125 and JR-30M. Mr Jones stated that none of the POLYMER JR-type polymers produce a durable conditioning effect.

According to Dr Wolfram's declaration, none of the POLYMER JR-type polymers produce a durable conditioning effect. He explains as follows:

"The invention the subject of the opposed specification is based on the formation of an insoluble precipitate onto the hair to be treated which precipitate is formed as a result of the reaction between a cationic polymer and an amphoteric surfactant which on contact with hair which has been pretreated by a treating agent having an alkaline pH forms an anionic surfactant. Therefore a basic requirement of any cationic polymer for use in the present invention is that it will react with an anionic surfactant to form an insoluble precipitate. If such a precipitate does not form then the cationic polymer can be immediately left out of further consideration under the test described in the opposed specification. In the case of the JR-type polymers, whilst a precipitate did initially form, that precipitate then redissolved in excess of the anionic surfactant. Hence no durable conditioning effect, that is one that lasts through several shampoos can be obtained with polymer JR-type polymers."

Dr Hellyer comments in this regard that a mere affirmation, without supporting evidence for all POLYMER JR-type polymers, is not credible since the present specification states that it is entirely unpredictable whether or not a polymer will produce a durable conditioning effect. Thus he points out that the specification states that MERQUAT-100 will work whereas its low molecular weight homologue does not work.

Dr Hellyer's comment places the onus of showing that the POLYMER-JR-type polymers, other than POLYMER JR-400, do not produce a durable conditioning effect on BRISTOL-MYERS. However in opposition proceedings the onus lies on the opponent to show that the patent, if granted, would be clearly bad on the ground alleged (Stamp v. W.J. Powell Pty. Ltd., 24 CLR 339 at page 343).

Dr Wolfram is satisfied from tests conducted during the development of the present invention that none of the POLYMER JR-type polymers produce a durable conditioning effect even if the specification only refers to POLYMER JR-400 in this regard. Dr Hellyer merely responds by pointing out that the certified translation of the French patent, which is equivalent to the citation, actually refers to repeated washing rather than repeated rinsing. In my view this is not sufficient evidence for me to find that POLYMER JR-30M and POLYMER JR-125 do produce the durable conditioning effect which is described in the present specification. Consequently I am not satisifed that GB patent No. 1470234 anticipates the claims of application No. 526329.

UNION CARBIDE'S publications

Ms. Fortescue states that it was UNION CARBIDE'S policy to provide customers with technical bulletins, once published, to develop the sales of POLYMER JR. Mr Adamson says that the technical bulletin "Polymer JR for Hair Care" is an example of written material, which was available to the public in Australia before 2 July, 1979. However, Mr Simmons, who declares that the final formulation of a shampoo he helped develop for a client contained POLYMER JR-400, says that during the development work he obtained a booklet and information sheets entitled "Polymer JR Resins" from UNION CARBIDE in Australia. I note that there are some differences between the technical bulletin and the booklet and information sheets. However I consider that it will make little difference to the present matter if I assume that the technical bulletin "Polymer JR for Hair Care" was also published in Australia before the present priority date.

I am not satisfied, for reasons similar to those explained above with respect to GB patent No. 1470234, that the above mentioned UNION CARBIDE publications anticipate the present claims.

GB Patent No. 1443426

GB patent No. 1443426 discloses a cosmetical shampoo composition which comprises at least one detergent which is a sulphated fatty amine, fatty acid amide or fatty acid alkanolamide or a sulphated ethoxylated fatty amine, fatty acid amide or fatty acid alkanolamide and at least one cationic conditioner (as defined) dispersed in an aqueous medium, the pH of the composition being in the range of 4 to 7. The term "cationic conditioner" is defined as a compound in which the molecules have one or more cationic charges, which contain at least one backbone chain having a minimum of eight carbon atoms and which has a molecular weight above 200. Examples of cationic conditioners include quaternised polyvinylpyrrolidone, RESYN 78-3510, GAFQUAT, DELSETTE and POLYMER JR.

The total level of detergent in the shampoo is generally in the range of from 5 to 35% by weight of the total composition. The amine, amide or alkanolamide based detergent may be partially replaced by a subsidiary detergent including an anionic detergent. The cationic conditioner is used in an amount of from 0.1 to 10% by weight of the total composition.

Mr Murray argued that the compositions described in this citation prior publish the compositions defined in the present claims. He pointed out that GB patent No. 1443426 states that the cationic conditioner is substantive to human hair, an effect believed to be due to electrostatic attraction. Mr Jones argued that ex post facto selections had to be made from the lists of ingredients disclosed in the citation in order to arrive at compositions that are within the scope of the present claims. Moreover he pointed out that the preferred embodiments described in GB patent No. 1443426 used very high concentrations of detergent as well as cationic conditioners which, according to the present specification, do not produce a durable conditioning effect (e.g. POLYMER-JR, DELSETTE and GAFQUAT).

Dr Wolfram asserts that all the examples of cationic polymers described in GB patent No. 1443426 do not produce a durable conditioning effect. However I cannot be certain that quaternised polyvinylpyrrolidones and RESYN 78-3510 do not produce a durable conditioning effect because Dr Wolfram's assertion does not clearly state that he has tested these compounds. Neither are these compounds specifically mentioned in the present specification.

In my view GB patent No. 1443426 broadly discloses matter, some of which falls within the scope of the present claims without disclosing a specific example that lies within the scope of the present claims. Thus the claims are in a position to be considered in terms of the law on selection. A requirement for a selection patent is the discovery that one or more members of a previously known class of products possess some special advantage for a particular purpose, which could not be predicted before the discovery was made (Beecham Group Ltd. v. Bristol Laboratories International SA 1978 RPC 521 at page 579).

I think that it is apparent from the description of GB patent No. 1443426 that the sulphated fatty amine and the sulphated ethoxylated fatty amine are amphoteric surfactants. I also think that the cationic conditioner which is present in the cited composition may include a cationic polymer which produces a durable conditioning effect. However, in my view, GB patent No. 1443426 does not teach that it is essential for anionic surfactants to be excluded from the composition and that it is essential for the molar ratio of the cationic polymer and the amphoteric surfactant as well the pH, to lie within a range of values.

The special advantage of the compositions defined in the claims of the specification of application No. 526329, in my opinion, is that a durable conditioning agent precipitates on the hair when the composition is brought into contact with hair which has been previously treated with an alkaline agent. This durable conditioning agent is produced by a reaction between the cationic polymer and the amphoteric surfactant as a result of the change in pH caused by the residual alkalinity of the hair. It seems to me that GB patent No. 1443426 does not describe this special advantage even though the cited specification acknowledges that the cationic conditioner itself is substantive to human hair. Thus I consider that the composition and method of conditioning hair which are defined in the present claims are a selection from the composition and method described in GB patent No. 1443426. Therefore I am satisfied that the claims of application No. 526329 are not anticipated by the disclosures of the citation.

FR patent No. 2251307.

I am satisfied, using reasoning similar to that used for GB patent No. 1443426, that FR patent No. 2251307 does not anticipate the claims of application No. 526329.

FR Patent No 2389374

FR patent No. 2389374 was available in Australia before the present priority date. However instead of referring directly to this French patent both Dr Hellyer, in his declarations, and Mr Murray at the hearing, made reference to the corresponding US patent No. 4180084, which was published after the present priority date. Mr Jones said that this US patent was being used as a de facto translation of the French document and he noted that there was no declaration which related the two documents even though there were differences between them. Whilst I agree with Mr Jones I think that in the present case it will make little difference if I consider the text of the US patent.

The text of US patent No. 4180084 relates to the use of polymeric quaternary ammonium salts, which contain particular cationic repeating units, in cosmetic compositions including hair care compositions. Mr Murray centred his submissions on Example 1 and Mr Jones directed my attention to the document which he lodged at the hearing. Earlier in this decision I considered that the molar ratio value disclosed in this document, which lies outside the range defined in the present claim 1, had been calculated according to the present specification. Thus US patent No. 4180084 does not disclose a specific example of a composition which lies within the scope of the present claims whilst broadly describing matter which lies within the scope of the present claims. I am satisfied for reasons similar to those described above for GB patent No. 1443426, that had US patent No. 4180084 been published in Australia before the present priority date, it would not have anticipated the composition and method defined in the claims of application No. 526329. Consequently I am also satisfied that FR patent No. 2389374 is not an anticipation of the present claims.

FR patent No 2382232

FR patent No. 2382232, which was available from the Patent Office library before the present priority date, was first cited in Dr Hellyer's declaration in the evidence-in-reply. However I will consider this citation without determining whether it is strictly evidence-in-reply.

Mr Murray directed my attention to example 10, which Dr Hellyer asserts has a molar ratio of 0.22 whereas Mr Jones at the hearing submitted, without supporting evidence, that the molar ratio of example 10 was 0.097.

Both parties lodged documents after the hearing in respect of the molar ratio of the composition described in example 10. Earlier in this decision I found that the values in the L'OREAL document had not been calculated according to the present specification. I note that the BRISTOL-MYERS document discloses that the molar ratio for the composition of example 10 is .097. Therefore I consider that FR patent No. 2382232 broadly discloses some of the matter which lies within the scope of the present claims without disclosing a specific example that lies within the scope of the present claims. Thus for reasons similar to those discussed with respect to GB patent No. 1443426, I am satisfied that FR patent No. 2382232 does not anticipate the claims of application No. 526329.

ONAMER M publications

The article "Onamer M - A New Cosmetic Ingredient" was published in Australia before the priority date of the claims of application No. 526329 and Dr Hellyer in his declaration refers particularly to example (J). Mr Simmons declares that he did some experimental work with ONAMER M after becoming aware of the polymer during the early months of 1978. During this period he obtained from the distributor of the polymer a booklet entitled "Onamer M". Mr Simmons points out that Example 1 corresponds with example (J) in the article "Onamer M - A new Cosmetic Ingredient".

Mr Jones said that the present specification states that ONAMER M produces a durable conditioning effect and he also conceded that the molar ratio of the components in example (i) fell within the range defined in claim 1. However he argued that the pH of the composition described in example (J) lay outside the range defined in claim 1. Mr Murray pointed out that the pH in example (J) was 6.5, which is just outside the claimed range, and he drew my attention to the purposive approach to construction discussed in the judgement in the Catnic case (Catnic Components Ltd. v. Hill and Smith Ltd. 1982 RPC 183 at page 242).

I consider the disclosures of the two ONAMER M publications to be the same, thus any finding with respect to the "Onamer M - A New Cosmetic Ingredient" article will apply equally to the booklet entitled "Onamer M".

In my view example (i) is the only specific example which is relevant to the composition defined in the present claim 1. However it seems to me that persons with practical knowledge and experience of the formulation of hair treatment compositions would understand that strict compliance with the pH range defined in claim 1 is an essential requirement of the invention (Catnic case, supra, page 243). This is because the relevant description in the present specification reads as follows:

"A cationic polymer product cannot be in the same composition with an anionic surfactant because they will react and form an insoluble precipitate. The present invention solves this problem by providing in the composition within certain critical concentration ranges a cationic polymer product and an amphoteric surfactant and sufficient acid to maintain the pH of the composition at an acidic level to prevent the amphoteric surfactant from becoming an anionic surfactant. Under these circumstances the ingredients of the composition can be stably maintained alongside each other in the composition".

Moreover I note that the composition in example (i) also includes 20% by weight of a non-ionic surfactant whereas the present specification clearly states that the maximum proportion of neutral surfactant is 10% by weight. Thus I consider the example (J) does not lie within the scope of the compositions defined in claim 1 of application No. 526329.

Therefore I think that both the ONAMER M publications broadly disclose matter which falls within the scope of the present claims without disclosing a specific example that lies within the scope of the claims. Thus the claims are in a position to be considered in terms of law on selection. For reasons similar to those discussed with respect to GB patent No. 1443426, I am satisfied that the claims of application No. 526329 are not anticipated by either of the ONAMER M publications.

GB patent 1437912

GB patent No. 1437912 relates to formulations for application to hair and it describes an aqueous shampoo-conditioner composition containing as essential ingredients from 4 to 25% by weight of an amphoteric surfactant, from 4.5 to 25% by weight of an cryptoanionic surfactant as defined and from 0.1 to 5% by weight of a cationic surfactant. The amounts of amphoteric and cryptoanionic surfactants are adjusted so that the final composition has a pH of from 4.5 to 7.1.

Cryptoanionic surfactants are defined as compounds that, although acting as a non-ionic resin, have "hidden" anionic properties and have the formula:

R-O-(R₁O)_n - (CH₂)_m - C0₂H

wherein R is a long chain alkyl group, R_l is ethylene or propylene, n has a value of from about 3 to 9 and m is at least 1.

The cationic surfactants are ammonium compounds having surfactant properties and include polymeric substances carrying quaternary ammonium groups. Examples of such polymeric substances include the POLYMER JR-type polymers and GAFQUAT.

Mr Jones argued that GB patent No. 1437912 is not a relevant citation because an essential feature of the composition is the cryptoanionic surfactant, which functions as an anionic surfactant, thus he argued that the cited compositions are excluded by the proviso in the present claim 1.

I note that Dr Atkinson considers that the term "cryptoanionic" is a term that does not have a well known or documented description in Australia. I also note that Dr Wolfram states that the presence of the cryptoanionic surfactant would lead to premature precipitation in the compositions according to the opposed specification. In response Dr Hellyer declares that because the anionic properties are "hidden" any statement that they behave as the usual anionic surfactants requires experimental support. He also states that it has not been established that premature precipitation occurs.

According to the "Encyclopedia of Chemical Technology" (Kirk-Othmer, Third Edition, Vol. 22, page 348) polyalkoxycarboxylates, which have the same structural formula as the cryptoanionic surfactants described in GB patent No. 1437912, possess a somewhat nonionic character which manifests itself in greater compatibility with cationic surfactants. In my view this reference does not clearly state that polyalkoxycarboxylates have none of the usual properties of anionic surfactants. Moreover I have pointed out above that the onus is on L'OREAL to show that the patent, if granted, would be clearly bad on the ground alleged. I think that L'OREAL has not lodged sufficient evidence to show that a cryptoanionic surfactant is not excluded by the proviso in the present claim 1 Consequently I am not satisfied that this citation anticipates the claims of application No. 526329.

US patent No 3990991

I consider US patent No. 3990991, which is equivalent to GB patent No. 1437912, also does not anticipate the present claims.

US patent No 3917817

US patent No. 3917817 relates to a piperazine-based low molecular weight film forming cationic polymer which is employed in a cosmetic hair conditioner composition comprising a solution of the polymer in amounts of about 0.1-5 weight per cent of the composition in a solvent such as water, acidified water, or aqueous alcohol solution. Example 25 of this citation describes a shampoo which has a pH of 5 and includes an amphoteric surfactant. Mr Jones at the hearing conceded that the molar ratio of the composition disclosed in this example fell within the range defined in claim 1 in the opposed specification. Mr Jones also asserted that the cationic polymer which was used in example 25 did not produce a durable conditioning effect.

According to Dr Wolfram, the cationic polymers, which are disclosed in US patent No. 3917817, were tested during the development of the present invention and these polymers did not produce a durable conditioning effect. However the present specification does not state that the polymers disclosed in this citation do not produce a durable conditioning effect. Dr Hellyer's declarations do not describe any test results which show that the cationic polymers described in US patent No. 3917817 do produce a durable conditioning effect. According to the High Court, the grant of a patent should not be refused unless it has been clearly shown that the grounds of opposition have been made out (Montecatini Edison S.p.A. v. Eastman Kodak Co. 45 ALJR 593 at page 596). In my view L'OREAL has not clearly made out that the cationic polymers disclosed in US patent No. 3917817 produce a durable conditioning effect. Therefore I consider that there is insufficient evidence for me to find that this citation anticipates the composition and method for conditioning hair which is defined in the claims of application No. 526329.

Section 40

Mr Murray, basing his arguments on Mr Grollier's declaration, submitted that the specification of application No. 526329 did not comply with section 40. In particular he argued that the test for the durable conditioning effect was not adequately described.

The term "durable conditioning" is defined as follows:

"The term "durable conditioning" as is used throughout the specification and the claims means that after the application of the conditioning composition and the employment of a durable conditioning process, hair is easier to comb after at least three subsequent shampooings, than it is to comb when no conditioning was employed, even after a single shampoo. This defines what is meant by "durable" when we refer to a "durable conditioning effect"."

However the specification elsewhere (page 4, lines 28 to 30) states that hair is considered to be durably conditioned if it "has a value of three after three shampooings", where the value three represents a very approximate conditioning improvement of 50%. Thus it seems to me that the invention is not fully described because it is not certain if hair is durably conditioned if it is merely easier to comb or if there has to be a conditioning improvement of at least approximately 50%. Claim 1, because it includes the term "durable conditioning effect", is in my view, therefore, not clear.

I note the request which was made under section 77 on 5 February, 1988 proposes to change the definition of the term "durable conditioning" so that it states that hair is approximately 50% easier to comb. I think that this proposed amendment would not completely overcome the conflict in the description because it is also apparent from the description on page 4e, lines 7 to 12 that the conditioning improvement can be "at least 3" rather than only 3.

Mr Grollier comments in his declaration that he assumes the percentages mentioned in the description and claims of the present specification are percentage by weight. I note that the preferred embodiments describe the proportions of the components of the compositions as per cent by weight. I conclude that the claims of the specification of application No. 526329 are not clear and that the description does not fully describe the invention because it is not certain if the proportions of the components are specified as percentage by weight or otherwise.

I also consider that the statement at page 2a, lines 22 to 24 is confusing. Firstly the statement states that a complex is formed when an "ionic" surfactant is contacted with a cationic polymer whereas it seems to me that a complex is formed when a cationic polymer is contacted with an anionic surfactant. Secondly the statement implies that the formation of a substantially water insoluble complex is merely a preferred feature of the present composition whereas in my opinion it is an essential feature, if a durable conditioning agent is to precipitate on the hair. Consequently I think that the description does not fully describe the invention in this regard.

A statement on page 19 of the specification reads as follows:

"It should be noted that betaines by themselves do hot effect any conditioning when applied in a formulation in combination with the cationic polymer e.g. MERQUAT 100 or ONAMER. It is only when other amphoterics, such as the ones described above, are also present in the formula that additional conditioning is obtained from the use of the betaine."

Also at the hearing Mr Jones said that if betaines were used in the present compositions they were used with another surfactant. I conclude that an essential feature of the composition defined in claim 1 is that a betaine alone cannot be used as the amphoteric surfactant.

According to "Harry's Cosmeticology" betaines are ampholytic surfactants and Dr Hellyer declares that the words amphoteric and ampholytic surfactants refer to compounds of the same class. Thus I consider that the skilled reader of claim 1 would not understand that the term "amphoteric surfactant" did not include betaines within its scope. It also seems to me that the statement, which I have quoted above, is not drafted so that it defines the term "amphoteric surfactant" throughout the description and claims. Therefore I think that claim 1 is not fairly based on the description.

Therefore, in summary, I am satisfied that the specification of application No. 526329 does not comply with section 40.

Costs

Mr Jones submitted that in the determination of costs account should be taken of the fact that two of the citations were raised for the first time in the evidence-in-reply. Mr Murray argued that these two citations should not alter the determination of costs because there had been sufficient time for BRISTOL-MYERS to serve further evidence since the evidence-in-reply had been served well before the date of the hearing. However I did not find that either of these citations, anticipated or made obvious the hair conditioning composition and method defined in the present claims. Therefore neither of these citations is relevant in the determination of costs in the present matter.

I have found that the specification of application No. 526329 does not comply with section 40. Mr Murray at the hearing presented arguments in respect of the non-compliance with section 40. Therefore I am satisfied that I should award the costs of the present opposition to the opponent L'OREAL.

Summary

I have found that the hair conditioning composition and method which are defined in the claims of the specification of application No. 526329 are not anticipated and are not obvious. I have found that the specification does not comply with section 40. Therefore I give BRISTOL-MYERS 60 days from the date of this decision to propose amendments to overcome these defects. I award costs of this opposition to L'OREAL.

(M. KENDALL)

Supervising Examiner

11-OCT-1988

Patent Attorney for the Application: Phillips, Ormonde & Fitzpatrick

Patent Attorney for the Opponent: Edwd. Waters & Sons.