T 0577/07 (Oligoketide synthesis/KOSAN BIOSCIENCES) of 16.5.2008

European Case Law Identifier: ECLI:EP:BA:2008:T057707.20080516
Date of decision: 16 May 2008
Case number: T 0577/07
Application number: 00911673.2
IPC class: C07C 327/30
Language of proceedings: EN
Distribution: C
Download and more information:
Decision text in EN (PDF, 18.650K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: SYNTHESIS OF OLIGOKETIDES
Applicant name: Kosan Biosciences, Inc.
Opponent name: -
Board: 3.3.10
Headnote: -
Relevant legal provisions:
European Patent Convention Art 123(2)
Keywords: All requests: Amendments (not allowable) - added subject-matter
Catchwords:

-

Cited decisions:
-
Citing decisions:
T 0198/13

Summary of Facts and Submissions

I. The appeal lodged on 11 December 2006 lies from the decision of the Examining Division posted on 12 October 2006 refusing European patent application No. 00 911 673.2.

II. The decision under appeal was based on amended sets of claims according to a main and three auxiliary requests. In its decision, the Examining Decision held that the subject-matter of the main, second and third auxiliary requests extended beyond the content of the application as filed (Article 123(2) EPC) and that the subject-matter of the first auxiliary request did not meet the requirements of unity of invention (Article 82 EPC).

III. With the Statement of Grounds of Appeal, dated 21 February 2007, the Appellant (Applicant) submitted a main request and two auxiliary requests.

Claim 1 of the main and first auxiliary request reads as follows:

"A method to prepare a chiral diketide or triketide N-acylcysteamine thioester which method comprises treating a 2-oxazolidinone carrying said chiral diketide or triketide on the nitrogen atom of the 2-oxazolidinone moiety with the lithium salt of the thiol anion of an N-acylcysteamine in the presence of Lewis acid to reduce the basicity of the thiol anion so as to form the N-acylcysteamine thioester of said diketide or triketide."

Claim 1 of the second auxiliary request reads as follows:

"A method of preparing a diketide N-acylcysteamine thioester which method comprises treating an imide from a 2-oxazolidinone and said diketide with the lithium salt of the thiol anion of the N-acylcysteamine in the presence of Lewis acid to reduce the basicity of the thiol anion so as to form the N-acylcysteamine thioester of said diketide."

IV. In a communication dated 8 February 2008 (see points 3.3 and 5) pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal and annexed to the summons to oral proceedings, the Board raised doubts as to whether inter alia claim 1 of each of the requests met the requirements of Article 123(2) EPC as regards the deletion of the feature "sufficient".

V. In reply, without making any substantive submissions in response to this objection, the Appellant informed the Board by letter dated 10 April 2008 that it did not intend to attend oral proceedings and requested a decision on the basis of the written submissions previously presented.

VI. The Appellant requested that the decision under appeal be set aside and that the case be remitted to the first instance for grant of a patent on the basis of the claims of the main request or, alternatively on the basis of the claims of the first or second auxiliary requests, all requests dated 21 February 2007.

VII. At the end of the oral proceedings held on 16 May 2008 in the absence of the Appellant, the Board gave its decision.

Reasons for the Decision

1. The appeal is admissible.

2. Claim 1 of each of the requests on file is based on claim 1, method b) of the application as filed. Amongst the amendments made to claim 1 of each of the requests on file vis-à-vis original claim 1 is the deletion of the feature "sufficient" quantifying the amount of Lewis acid to be used.

The feature "sufficient" implies that an adequate amount of Lewis acid must be present. The deletion of said term extends the subject-matter claimed, since in the absence of said term, any amount of Lewis acid may be present. The Appellant has not provided any basis in the application as filed for the deletion of said feature, nor can the Board find any basis in the application as filed for this amendment.

3. In the communication dated 8 February 2008, the Board had already indicated to the Appellant that the deletion of the feature "sufficient" raised doubts as to whether the requirements of Article 123(2) EPC were met. The Appellant neither commented on this objection in writing, nor attended the oral proceedings.

4. The content of claim 1 of each of the requests on file thus extends beyond the content of the application as filed (Article 123(2) EPC). None of the Appellant's requests is therefore allowable.

ORDER

For these reasons it is decided that:

The appeal is dismissed.

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