T 0004/80 (Polyether polyols) 07-09-1981
I. Originally disclosed subject-matter, clearly definable by technical features, may, at the applicant's request, be excluded from a wider claim by a disclaimer, if the subject-matter remaining in the claim cannot technically be defined directly (positively) more clearly and concisely.
II. The fact that the disclaimer concerns the subject-matter of an earlier, not previously published national application or corresponding patent is no bar to such a formulation.
Delimination of earlier national application
Disclaimer in claim
I. European patent application No. 78 100 648.1. filed on 11 August 1978 and published on 18 April 1979 under publication No. 0 001 389, claiming the priority of the prior application in the Federal Republic of Germany of 23 August 1977, was refused by decision of the Examining Division of the European Patent Office dated 31 July 1980. That decision was based on 11 claims, of which claim 1 in the version of 3 March 1980 is worded as follows: "Process for the production of polyether polyols having an average molecular weight in the range of 200 to 10 000 and an average hydroxyl functionality of 2.0 to 7.0 by the addition of one or more cyclic ethers, in the presence of an acid catalyst, to a starter consisting of sugars and optionally polyhydric alcohols, characterised in that as starters A) formose which is optionally aldolated in the alpha-position, or B) liquid mixtures of (a) high and/or low molecular weight polyhydroxyl compounds and/or mono- or di-saccharides and/or natural or synthetic invert sugars and (b) formose which is optionally aldolated in the alpha-position, are employed, those formoses being excluded which have been directly produced from synthesis gases containing formaldehyde in accordance with DE-OS 2 721 093 and 2 721 186."
II. The Examining Division stated that as against the only relevant citation, AT-B 262 620, there was novelty and inventive step, with the latter in particular supported by the comparative tests submitted. The application nevertheless had to be refused, since claim 1 was formally inadmissible, because, inter alia, it contained an inadmissible disclaimer referring to the previously unpublished DE-A- 2 721 186. The reference to an as yet unpublished document, whose contents could not be known even to the European Patent Office on the day the application was filed, meant that on the filing date a person skilled in the art could not ascertain the scope of the application and, moreover, the reference thus jeopardised the invention's reproducibility (Article 83). If such a reference were maintained, it would from a purely formal point of view constitute an amendment extending the subject-matter of the application on the day that document was published beyond the content of the application as filed, and thus contravene Article 123(2).
III. On 16 August 1980 the applicant lodged an appeal, accompanied by a Statement of Grounds, against the decision of 31 July 1980.
IV. In reply to the objections to the above-mentioned claim raised by the Technical Board of Appeal in its communication of 17 February 1981, the appellant submitted claims in good time which, having regard to the amendments requested on 23 July 1981, finally took the following form: "1) Process for the production of polyether polyols having an average molecular weight in the range of 200 to 10 000 and an average hydroxyl functionality of 2.0 to 7.0 by the addition of one or more cyclic ethers, in the presence of an acid catalyst, to a starter consisting of sugars and optionally polyhydric alcohols, characterised in that as starters A) formose which is optionally aldolated in the alpha-position, or B) liquid mixtures of (a) high and/or low molecular weight polyhydroxyl compounds and/or mono- or di-saccharides and/or natural or synthetic invert sugars and (b) formose which is optionally aldolated in the alpha-position, are employed, those formoses being excluded which have been directly produced from formaldehyde-containing synthesis gases. 2) Process according to Claim 1, characterised in that 20 to 80% by weight solutions of crystalline mono- or di-saccharides and/or natural or synthetic invert sugars in formose are used as starters. 3) Process according to Claim 1, characterised in that 30 to 70% by weight solutions of crystalline mono- or di-saccharides and/or natural or synthetic invert sugars in formose are used as starters. 4) Process according to Claims 1 to 3, characterised in that the starter contains 2 to 100% by weight, based on formose, of di- or polyhydric alcohols having a molecular weight between 62 and 300 and/or polyether, polyester, polyacetal and/or polycarbonate polyols having a molecular weight between 300 and 4 000. 5) Process according to Claims 1 to 4, characterised in that formoses having a molecular weight between 92 and 360 are used. 6) Process according to Claims 1 to 5, characterised in that formoses having a content of reducing compounds, expressed as glucose, of 4 to 85% of weight are used. 7) Process according to Claims 1 to 6, characterised in that ethylene oxide and/or propylene oxide are used as cyclic ethers. 8) Process according to Claims 1 to 7, characterised in that an adduct of a carboxylic acid or of a carboxylic acid anhydride with boron trifluoride is used as acid catalyst. 9) Process according to Claims 1 to 8, characterised in that the starter contains 0.5 to 4% by weight of water. 10) Use of polyether polyols obtained according to Claims 1 to 9 in mixture with polyisocyanates for the production of polyurethanes.
V. The appellant asked that the appealed decision be set aside and that the patent be granted on the basis of this version of the claims.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. There can be no formal objection to the present version of Claim 1, the preamble of which takes due account of the most relevant prior art - as disclosed in AT-B-262 620 (Rule 29(1) EPC). The features of the current Claim 1, apart from the disclaimer (cf. the last 3 lines) are supported in Claim 1 as first published. The subject-matter expressly excluded from protection and defined by the technical features in accordance with Rule 29(1) EPC, namely the use of formoses produced directly from synthesis gases containing formaldehyde, was originally disclosed by the applicant as a possible, particularly economical embodiment of the invention (cf. page 11, line 18 to page 12, line 11).
3. At the request of the applicant, such subject-matter can subsequently be excluded from the protection sought by a wide claim by means of a disclaimer, if the subject-matter remaining in the claim cannot be defined more clearly and concisely directly, i.e. by positive technical features (Art. 84 EPC). Those conditions are satisfied in this case. The description states that formoses of any kind can be used and they can be produced by numerous processes including the applicant's new processes (cf. page 8, line 14 to page 11, line 17). To list all those processes would make a clear and concise claim impossible and, if the list of existing processes was by chance incomplete, might in addition unjustifiably limit the claim. The use of the disclaimer here is therefore the clearest and most concise form for Claim 1.
4. The fact that the disclaimer in part concerns the subject-matter of an earlier, not previously published national application or corresponding patent is no bar to such a formulation. Although the European Patent Convention does not provide for exclusion of such applications and patents, it may be in the interest of the applicant at an early stage to exclude, as a precaution, a potential or existing prior national right (cf. Art. 139 (2) EPC).
5. Apart from amendment of Claim 4 in line with the original disclosure on page 17, line 21, current Claims 2-8 are identical to original Claims 2-8. Claims 9 and 10 are covered by original Claims 10 and 11.
6. AT-B 262 620 describes a process for producing practically non-reducing, relatively low-viscosity sugar polyethers by reaction of mono- or oligosaccharides, i.e. sugars and sugar mixtures (cf. page 2, para.2), with 1,2 epoxides in the presence of a boron halide catalyst, with a polyhydric alcohol added or produced by water in situ as liquid medium (cf. Claims 1 and 4 in conjunction with page 3, lines 2-3). The addition of a polyhydric alcohol or water is also possible in the claimed process (cf. Claim 1 and page 14, para. 3 and Claim 9); similarly the claimed process preferably used boron fluoride catalysts (cf. Claim 8 and page 16, lines 18-23 with the examples in the above-mentioned AT-B). This document also describes the further reaction of sugar polyethers with polyisocyanates to yield polyurethanes (cf. page 3, lines 7-17 in conjunction with example 4).
7. The claimed process differs from this insofar as a special sugar mixture of polyols, hydroxyaldehydes and hydroxyketones obtainable by autocondensation of formaldehyde and described as formose is used (cf. Claim 1 in conjunction with page 8, lines 14-18). The process under claim 1 and the dependent claims 2-9 is therefore novel. Use-claim 10 is also novel, because it uses the polyethers produced in accordance with claims 1-9.
8. The application involves an inventive step. In view of the problem stated, primarily the production of relatively low-viscosity polyether polyols, without darkening (cf. page 19, line 33, to page 20, line 2, in conjunction with the last paragraph on page 3 and page 7, lines 18-22), the applicant's proposed solution of using formose as the starter cannot be considered obvious; in fact the degree of reduction in the viscosity of the polyether polyol that can be achieved in accordance with the application is - as the department of first instance found (cf. test report of 28 January 1980) - surprising to a person skilled in the art. This surprising property of the polyether polyols produced in accordance with Claims 1-9 has advantageous effects for its further processing into polyurethanes (cf. page 33, line 21, to page 34, line 15), which is the subject of Claim 10, and thus supports the latter's patentability.
9. The contested decision of the Examining Division already found that the subject-matter of the invention was novel and involved an inventive step. It was still necessary for the Board of Appeal to check these conditions for patentability for the purposes of the order set out below.
10. On the grounds stated the Board considers the appeal well-founded.
11. No application has been made for reimbursement of the appeal fee in accordance with Rule 67 EPC, and the facts of the case would not justify such a measure.
For these reasons, it is decided that:
1. The decision of the Examining Division of the European Patent Office dated 31 July 1981 is set aside.
2. The case is remitted to the first instance with the order to grant a European patent on the basis of the following documents...