T 1485/08 (Black azo dyes/DYSTAR) 20-12-2012

1. The appeal is admissible.

2. Admissibility of document (16T)

2.1 Document (16T), which is an English translation of Korean patent No. 94-2560 (document (16)) filed with the notice of opposition, was submitted by the Appellant during oral proceedings before the Opposition Division and was resubmitted with the statement of grounds of appeal. According to the decision under appeal (page 8, first and second paragraphs) the Opposition Division adopted the Respondent's position that the translation had been filed too late in the proceedings and should therefore be disregarded.

This decision was challenged by the Appellant on the grounds that the Opposition Division in disregarding document (16T), which was highly relevant to the issue of novelty, had not properly exercised its discretion.

2.2 An Opposition Division has a discretionary power under Article 114(2) EPC to disregard evidence which has not been submitted in time. A Board of Appeal should only overrule the way in which a first-instance department has exercised its discretion in a decision in a particular case if the Board comes to the conclusion that the first-instance department in its decision has exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (G 7/93, OJ EPO 1994, 775, point 2.6 of the reasons).

The question to be examined therefore is whether or not the Opposition Division has exercised it discretion correctly.

2.3 According to established jurisprudence of the Boards of Appeal, a decisive criterion for admitting late-filed documents is their prima facie relevance (T 1002/92 OJ EPO, 1995, 605, point 3.3).

In this context the Board notes that document (16) was filed with the notice of opposition against novelty of the patent in suit. Although not in one of the official languages of the EPO, from the use of various English terms in the description of document (16) it is already discernible that its subject-matter is related to the claimed subject-matter (see page 4 of document (16), which refers to "exhausting dying", "printing", and "cold pad batch dying"). Moreover, the structural formulae according to claim 1 and on pages 1-2 closely correspond to the formulae of compounds III, VIII and IX of the patent in suit. The definition of the substituents in the formulae of document (16) cannot be clearly determined from the Korean patent, but this information is available in a straightforward manner, without requiring particular effort, from the English translation of document (16), in particular the examples. Taking into account the diazo starting material, it can immediately be seen that some of these examples disclose mixtures falling within the scope of the patent in suit. Document (16T) was, therefore, prima facie relevant to the issue of novelty.

The contested decision and the minutes of the oral proceedings, however, do not contain anything that allows the conclusion that the Opposition Division considered the relevance of document (16T).

2.4 Other criteria for deciding on the admissibility of late-filed documents, such as whether their submission disadvantaged the other party in presenting its case or even constituted a procedural abuse or led to excessive delay in the proceedings, have also been held to be relevant for the exercise of discretion. However, neither the decision under appeal nor the minutes of the oral proceedings contain anything that allows the conclusion that the Opposition Division took into consideration any criteria other than the late-filing of the translation.

2.5 In view of the above, it is the Board's opinion that the Opposition Division in not admitting document (16T) for the sole reason that it was late-filed, without having examined its relevance or considered any other criteria, did not properly exercise its discretion.

2.6 In its reply to the statement of grounds of appeal the Respondent argued that the late-filing of document (16T) was at odds with fair proceedings. The document had been filed more than 30 months after the Respondent's reply to the notice of opposition, where it had been pointed out that document (16) was in Korean and could not be understood. Moreover, the Appellant had made further submissions on 2 September 2005 before the oral proceedings before the Opposition Division without addressing document (16).

2.7 The Board is not convinced by the Respondent's argument.

2.7.1 Although the Appellant should have provided a translation of document (16) much earlier, preferably with the notice of opposition or at least sufficiently in advance of the oral proceedings, nevertheless, in the present case considering the prima facie relevance of document (16T) the decision of the Opposition Division to disregard this document solely because it was filed at a late stage in the proceedings was not justified. The Board also notes that the Respondent did not provide any arguments to the effect that it would not have been in a position to adequately deal with the content of document (16T) and to properly address the objection of lack of novelty during the oral proceedings before the Opposition Division. The argument that it would have been unfair to admit document (16) can therefore not succeed.

2.7.2 Furthermore, document (16T), which was resubmitted with the Appellant's statement of grounds of appeal, is sufficiently highly relevant to justify its admission into the appeal proceedings, as the Board had clear reasons to believe that it would prejudice the maintenance of the patent (see point XI above). The Board is also satisfied that the Respondent had ample time to consider the content of document (16T) and a fair chance to prepare a proper defence.

2.8 For the above reasons, the Board decided, in the exercise of its discretion pursuant to Article 12(4) RPBA, not to hold document (16T) inadmissible.

Auxiliary request 2

3. Novelty

3.1 According to the Appellant, claim 1 of auxiliary request 2 lacked novelty in view of examples 7 and 8 of document (16T).

3.2 Document (16T) discloses deeply black reactive dye compositions (I) obtained via the reaction of the diazotised compound of formula (II) with compounds of formula (III-1), (III-2) and (III-3).

FORMULA/TABLE/GRAPHIC

FORMULA/TABLE/GRAPHIC

(see formulae on page 2 and page 2, lines 2-7 of document (16T)). The Board notes that the first formula of product (I) contains an obvious error in that the group SO2CH2CH2X on the left phenyl ring should be attached via the sulfone group. This error is obvious with regard to formula (II).

According to example 7, 4 mol of 1-amino-2-methoxy-benzene-5-beta-sulfatoethyl sulfone, a compound of formula (II), was diazotised and reacted with 1 mol of each of the compounds 1-amino-8-hydroxynaphthalene 3,6-disulfonic acid (compound III-1), 1,3-diaminobenzene-4-sulfonic acid (compound (III-2) and 1-naphthylamine-4-sulfonic acid (a compound of formula (III-3) (see table on page 7 of document (16T)). The Board agrees with the Appellant (see Annex 1 of document (16A)) that the resulting black reactive dye composition thus comprises the following compounds:

FORMULA/TABLE/GRAPHIC

In example 8 of document (16T) the reaction takes place with 1-amino-2-methyl benzene-5-beta-sulfatoethyl sulfone, resulting in a composition as described above with a methyl instead of a methoxy group in the structure of each of the compounds (see table on page 7 of document (16T) and Annex 2 of document (16A)).

The first of the compounds in the aforementioned compositions corresponds to a compound of formula (III) of auxiliary request 2, with R1/R3 equal to methoxy (C1 alkoxy) or methyl (C1 alkyl), R2/R4 equal to hydrogen and Y/Y' equal to SO2X with X equal to CH2CH2OSO3H. The second compound of the aforementioned compositions corresponds to a compound of formula (IX) of auxiliary request 2, with R7/R8 equal to amino, R1 equal to methoxy (C1 alkoxy) or methyl (C1 alkyl), R2 equal to hydrogen and Y equal to SO2X with X equal to CH2CH2OSO3H.

Due to the word "comprises" in claim 1 of auxiliary request 2, compounds other than those of formula (III) and (IX) can be present, for example the third compound of the composition according to examples 7 and 8 of document (16T). Accordingly, compositions obtained in examples 7 and 8 of document (16T) fall within the scope of claim 1 of auxiliary request 2.

3.3 The Respondent did not provide any arguments concerning this issue.

3.4 For the aforementioned reasons, the Board concludes that the subject-matter of claim 1 of auxiliary request 2 is not novel within the meaning of Article 54 EPC.

Auxiliary request 3

4. Amendments

4.1 Claim 1 of auxiliary request 3 was amended inter alia by introducing the feature that the substituent Y in the general formula (IX) is at the para-position.

4.2 The Respondent did not provide a basis for this amendment in the application as filed, but rather argued that the amendment restricted the claim and was therefore admissible under Article 123(2) EPC.

4.3 The Board cannot accept this argument. Article 123(2) EPC prohibits amendments which generate "subject-matter that extends beyond the content of the application as originally filed". Thus, the introduction of any technical information which a skilled person would not have objectively and unambiguously derived from the application as filed, even if it results in a restriction, is prohibited (see decision T 288/92, not published in OJ EPO, point 3.1 of the reasons)

4.4 According to the general formula IX of the application as filed, the position of the substituent Y at the phenyl ring to which it is attached is not defined (see page 14 of the description and claim 1) and no explicit disclosure can be found elsewhere in the description referring to a particular position of Y. The Board notes that in addition to the general formula (IX) the application as filed also refers to four individual compounds (IX-1) to (IX-4) (see pages 22 and 23). In these compounds Y is attached in para-position to the azo group. However, at the same time Y is always a particular residue, namely -SO2CH2CH2OSO3H, and, except for the azo group, no further substituent is present on the phenyl ring to which Y is attached, i.e. R1 and R2 according to the general formula (IX) are hydrogen. Moreover, in all four individual compounds, the second phenyl ring also has a specific substitution pattern, i.e. an amino group in para- and the required -SO3H residue in meta-position. Therefore, the original disclosure of these individual compounds cannot support the generalisation in amended claim 1, which results in claiming compounds of formula (IX) where Y, independently of its definition and independently of the definition of the other substituents, is in para-position.

Thus, the amendment that Y in the general formula (IX) is in para-position represents technical information which is not objectively and unambiguously derivable from the application as filed.

4.5 For the aforementioned reasons, the Board concludes that claim 1 of auxiliary request 3 extends the subject-matter claimed beyond the application as originally filed and thus contravenes Article 123(2) EPC.