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Case Law of the Boards of Appeal

 
 
c)
Selection on the basis of a general formula 

Prior-art disclosure is also of key importance here. In T 181/82 (OJ 1984, 401) the board confirmed that the products of processes which were the inevitable result of a prior description of the starting materials and the process applied thereto formed part of the state of the art. This was true even if one of the two reactants manifested itself as a chemical entity (C1 alkyl bromide) from a group of generically defined compounds (C1 - C4 alkyl bromides). The board took the view that the description of the reaction of a certain starting material with C1 to C 4 alkyl bromides disclosed only the C1-substituted product, and was not prepared to recognise the disclosure of a particular butyl substituent on the grounds that four isomeric butyl radicals existed.

In T 7/86 (OJ 1988, 381) the board also based its reasoning on T 12/81 (OJ 1982, 296), stating that the principle that a substance resulting from the reaction of a specific pair from two lists could nevertheless be regarded as new, was applicable not only to starting substances in chemical reactions but also to polysubstituted chemical substances where the individual substituents had to be selected from two or more lists of some length, such as in the case in question.

Following on from T 181/82 (OJ 1984, 401) it was stated in T 7/86 that if a class of chemical compounds precisely defined only in structural terms (by a chemical reaction), and with only one generically defined substituent, did not represent a prior disclosure of all the theoretical compounds encompassed by an arbitrary choice of a substituent definition, this clearly also had to be the case for a group of chemical substances, the general formula of which had two variable groups. Therefore, a class of chemical compounds defined only by a general structural formula having at least two variable groups did not specifically disclose each of the individual compounds which would result from the combination of all possible variants within such groups.

In T 258/91 the case concerned a selection from two lists of starting compounds. The compound (formula VI) cited as taking away novelty from the patent in suit differed from the claimed compound (formula I) by the methyl residue on the amino group in the 4-position. In the board's judgment, the information in the cited document was not sufficient to disclose the compound of formula I to the skilled person in the form of a concrete, reproducible technical teaching. The board found that the cited document did not contain any teaching involving the modification of the compound, which was mentioned only by way of example. What was being taught was merely the preparation of a class of compounds and not of a specific, individual compound.

In T 658/91 the board held that the case law did not suggest that a chemical compound was deemed to be specifically disclosed only if that compound was mentioned by name or even described in an example. On the contrary, it was sufficient if the compound could be unambiguously identified as envisaged in individualised form in the document in question, since the purpose of Art. 54(2) EPC 1973 was to exclude the state of the art from patentability.