T 0159/95 (Fibre reactive compounds/BAYER) 19-04-2000

1. The appeal is admissible.

Main request

2. Compliance with Article 123(2) EPC

2.1. In order to overcome the objection of lack of novelty in view of the compound disclosed in example No. 90 of document (1), the Respondent in the course of the opposition proceedings submitted an amended claim 1, wherein said compound was formally excluded by way of a disclaimer.

2.2. The Opposition Division found that the subject-matter of the claims as thus amended was novel and, implicitly, that it also complied with the requirements of Article 123(2) EPC.

2.3. The Board observes that this amendment has no basis in the application as filed, and this was eventually conceded by the Appellant.

2.4. According to the established jurisprudence of the Boards of Appeal, it may be permissible to exclude a specific prior art from the claimed subject-matter by means of a disclaimer, even if the original application provides no basis for such an exclusion (see decisions T 170/87, OJ EPO 1989, 441, point 8.4.1 of the reasons; T 645/95 of 25 February 1999, point 2 of the reasons; T 863/96 of 4 February 1999, point 3.2 of the reasons; T 917/94 of 28 October 1999, point 4 of the reasons).

2.5. However, the same jurisprudence has established that a disclaimer may only be introduced into a claim if, by this amendment, the anticipating disclosure loses its relevance for any further examination of the claimed invention, in particular for the assessment of inventive step. Some of the above-cited decisions have used the expression "accidental disclosure" in this context (see e.g. decisions T 645/95, T 863/96; T 917/94 loc.cit and T 13/97 of 22 November 1999, point 2.3 of the reasons).

2.6. The Respondent, relying upon decision T 863/96, argued that the compound in example No. 90 of document (1) was indeed an accidental disclosure given that this isolated disclosure was not in line with the general teaching of this document, which related to fiber-reactive dyestuffs carrying one or two X-SO2 substituents on the dye moiety, this finding being confirmed by the deletion of this compound from the description before a patent was granted (see point VI, paragraph 2 above).

2.7. The Board does not agree with this interpretation. Whether or not a disclosure is accidental does not depend upon how it was made available to the public. That the compound in example No. 90 is a disclosure outside the general teaching of document (1) does not alter the fact that this disclosure forms part of the state of the art.

2.8. An accidental disclosure is a chance overlap between claimed subject-matter and a disclosure which does not aim at the same objective as the claimed invention. According to the description of document (1) (pages 66 and 67), the compound in example No. 90 is a valuable dyestuff (blue) with good fastness, shades of which are obtainable on cotton fibers. Furthermore, the Respondent has never contested that the disclosure concerning this compound was enabling and that its description was accurate. Since the disclosure of this compound aims at the same objective as the claimed subject-matter (see page 2, lines 3/4; page 9, line 25 and page 10, line 9 ff. of the patent in suit), it cannot be considered an accidental disclosure.

2.9. For the above reasons, the Board concludes that the compound in example No. 90 is not an accidental disclosure on which a disclaimer can be properly based and that the present request does not comply with the requirements of Article 123(2) EPC.

Auxiliary request I

3. Compliance with Article 123(2) EPC

3.1. Claim 1 of auxiliary request I contains the same technical feature as claim 1 of the main request, i.e. a disclaimer related to the compound in example No. 90 of document (1). Auxiliary request I thus suffers from the same deficiency as the latter and is therefore not admissible under Article 123(2) EPC.

Auxiliary request II

4. Compliance with Article 123(2) EPC

4.1. Claim 1 of auxiliary request II is the result of combining the subject-matter of claims 1 and 3 as granted with the restriction that dye moiety (1) corresponding to formula (I) contained a chromophore moiety wherein the phenyl ring adjacent to the sym-triazine moiety is no longer substituted by a sulfo group, the disclaimer of the compound as defined in example No. 90 of document (1) no longer being present (see point VII b) above).

4.2. The Board sees no objection under Article 123(2) EPC to the claims of the present request. In particular, the restriction of the dye moiety of formula (I) does not amount to a selection of a specific sub-class of compounds not disclosed in the application as filed but on the contrary consists of a limitation of the possibilities already disclosed in the application as filed (see page 5, line 19 to page 10, line 2).

5. Compliance with Article 123(3) EPC

The claims of auxiliary request II also meet the requirements of Article 123(3) EPC in that the claimed subject-matter does not extend the protection conferred on the patent, in view of the restriction introduced in the definition of the dye moiety of formula (I).

6. Novelty - Article 54(2) EPC

6.1. Document (1) discloses soluble dyes with fiber-reactive properties of the formula:

FORMULA (1)

wherein

D is an organic dye moiety;

X is a vinyl-, ß-thiosulfatoethyl-, ß-sulfatoethyl- or ß-chloroethyl group;

R is a hydrogen atom or a C1-4alkyl group;

n is 1 or 2;

p is 1 or 2;

Y is a substituent -O-R1; -S-R1 or -NR2R3 in which:

R1 is an optionally substituted C1-4alkyl group or an optionally substituted aromatic carbocyclic or aromatic heterocyclic group,

R2 is a hydrogen atom or an optionally substituted lower aliphatic group or a cycloaliphatic group and

R3 is a hydrogen atom or an optionally substituted lower aliphatic or an optionally substituted aromatic carbocyclic group or a lower alkoxy group or the cyano group or the group of formula -CS-NH2 or an optionally substituted amino group or R2 and R3, together with the nitrogen atom, can form a ring containing a lower alkyl and, optionally, a heteroatom (see page 1, line 12 ff.).

6.2. The description further indicates that the optional amino groups which may form group R3 include a group of the formula:

FORMULA

wherein

R4 is hydrogen, chloro, methyl, methoxy or nitro and

R5 is a sulfo group or a ß-sulfatoethylsulfonyl- (emphasis added by the Board) or ß-thiosulfatoethylsulfonyl group (see document (1), page 3, lines 9 to 25).

6.3. The claimed compounds fall within the scope of the general definition of formula (1) indicated in document (1) (see point 6.1 above) but they result from a multiple selection within the above-mentioned alternative meanings of the Y substituent, first requiring the choice of the substituent -NR2R3 among three substituents, then the choice of the benzanilide group among numerous other substituents and then the choice of a hydrogen atom for the substituent R4 and ß-sulfatoethylsulfonyl- for the substituent R5. In the absence of any pointer to this particular combination of substituents, such multiple selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from document (1).

6.4. The exemplified compounds falling within the scope of formula (1) of document (1) do not alter that conclusion. The exemplified compounds most closely related to the claimed compounds are those where the substituent R3 is a phenyl substituted by a sulfo group which is not the same as benzanilide itself substituted by the substituent Z according to the claimed invention.

6.5. In view of the list of dye moieties (A) to (M) now claimed, the individual compound No. 90 disclosed in document (1) does not destroy the novelty of the claimed subject-matter.

6.6. Documents (2) and (3) are Japanese documents for which no translation in one of the official languages of the EPO was provided. In the absence of a translation, the Board can rely on those documents only to the extent that the parties made plausible and uncontested submissions in respect of them.

6.7. It turns out that document (2) in its example No. 10 and document (3) in its example No. 8 disclose a dyestuff of the formula:

FORMULA

6.8. This compound does not destroy the novelty of the claimed subject-matter due to the presence of a methoxy substituent on the benzanilide moiety, while the corresponding benzanilide moiety (see group A of formula (II) in point VII b) above) in the claimed subject matter of claim 1 does not have such a methoxy group.

6.9. For these reasons none of documents (1), (2) or (3) anticipates the claimed invention as defined in the claims of the second auxiliary request.

7. Inventive step - Article 56 EPC

7.1. In accordance with the "problem and solution approach" consistently applied by the Boards of Appeal to assess inventive step on an objective basis, it is necessary to identify the closest state of the art as the starting point, to determine in the light thereof the technical problem which the invention addresses, to verify that the technical problem is solved by all the embodiments encompassed within the claimed solution and to examine whether the claimed solution is obvious or not in view of the state of the art.

7.2. As set out in point 6.1 and 6.2 above, document (1) aims at the same objective as the claimed invention and comprises a disclosure represented by the general definition of compounds of formula (1) and, therein, a specific technical teaching related to the specifically disclosed compounds. In the Board's view, the closest state of the art is to be found among this specific technical teaching which was in fact the sole prior art available to the public, namely the compounds of formula (1) wherein inter alia R3 is a phenyl substituted by a sulfo group such as the compounds in examples 1 to 4.

7.3. Those specifically disclosed compounds of document (1) are closer to the claimed invention than the compound in example No. 10 of document (2), which falls outside the general definition of formula (1). In principle, in the case of a new selection of a group of compounds within a general disclosure aiming at the same objective as the claimed compounds, the closest state of the art is found among the compounds specifically disclosed in the said general disclosure.

7.4. Nor can the individual compound in example No. 90 be considered the closest state of the art, in the present circumstances, as it does not fall within the scope of the general definition of formula (1).

7.5. The problem to be solved should therefore be determined in respect of fiber-reactive dyestuffs of formula (1) of document (1) wherein the substituent R3 is a phenyl substituted by a sulfo group such as compounds of examples 1 to 4.

7.6. In the light of this closest state of the art, and in the absence of any evidence showing an improvement in respect thereof, the technical problem can only be seen in the provision of fiber-reactive dyestuffs other than those known from document (1) wherein the substituent R3 is a phenyl substituted by a sulfo group such as the compounds in examples 1 to 4.

7.7. This problem is essentially solved by replacing, in the structure disclosed in document (1), the groups R3 representing a phenyl substituted by a sulfo group by other substituents of the formula:

FORMULA

R1, A and Z being as defined in point VII b) above.

7.8. In view of the dyeing examples Nos. 1 and 3 (see pages 18. and 19) and the printing example No. 2 (see page 19) related to tests carried out with the compounds in example No. 1 (see page 10) and examples Nos. 2 to 31 (see Tables, pages 11 to 18), the Board is satisfied that the claimed subject-matter represents a solution to the technical problem defined above.

7.9. It remains to be decided whether or not the proposed solution to the problem underlying the patent in suit in the version now under consideration is obvious in view of the cited prior art.

7.10. In the Board's view, the question is whether the person skilled in the art, faced with the problem of designing fiber-reactive dyestuffs other than those specifically disclosed in document (1), would have considered compounds corresponding to those claimed for dyeing properties on fibers.

7.11. The Respondent argued that the claimed subject-matter represented a non-obvious multiple selection among a great number of possibilities encompassed by the disclosure of document (1) as the person skilled in the art, faced with the problem of designing dyestuffs other than those where the substituent R3 is a phenyl substituted by a sulfo group, would not have had any relevant information allowing him to select the claimed compounds. Furthermore, document (1) taught fiber-reactive dyestuffs, the substituent X-SO2 of which is attached to the dye moiety while, in the claimed invention, the said X-SO2 substituent is attached to the opposite part of the molecule. The fact that "optionally" the dye moiety of the claimed compounds could also comprise an X-SO2 substituent is not to be taken into consideration as this optional feature was not an essential one. Although the person skilled in the art could have made this selection, he would not have done so. This is sufficient for acknowledging inventive step in accordance with the proper standard.

7.12. The Board concurs with the Respondent that the claimed compounds derive from a multiple selection, not specifically mentioned, among a great number of compounds generally disclosed in document (1). This is the reason why novelty was acknowledged (see point 6.3 above). However, according to well-established jurisprudence of the Boards of Appeal, a special group of substances merely mentioned incidentally amongst numerous other groups of substances, and not emphasised by an example, nevertheless permits a surmise of comparable suitability and effectiveness for the purpose in hand if these groups of substances are interchanged (see decisions T 01/80, OJ EPO 1981, 206, point 12 of the reasons; T 181/82, OJ EPO 1984, 401, point 13 of the reasons).

7.13. Furthermore, the fact that the substituent X-SO2 on the dye moiety is optional does not change the situation, as the corresponding claimed compounds are part of the claimed subject-matter in the same manner as those which do not contain such a substituent on the dye moiety. Since all the embodiments of a claim must meet the patentability requirements set out in Articles 52 to 57 EPC, it follows that the claimed compounds the dye moiety of which is substituted by a X-SO2 substituent must satisfy the inventive step requirement.

7.14. In that context, in the Board's judgment, contrary to the opinion of the Respondent, the person skilled in the art, starting from dyestuffs of formula (1) of document (1) wherein the substituent R3 is a phenyl substituted by a sulfo group such as compounds of examples 1 to 4, would have considered the claimed dyeing compounds as possible alternatives, given that the general disclosure of document (1) teaches that the groups with phenylamino substituted by sulfo are interchangeable with groups of the formula:

FORMULA

for obtaining new fiber-reactive dyestuffs. The Board notes furthermore that the so-called "could/would approach" applies when some improvement or advantage is set forth, as correctly pointed out by the Respondent on page 6, second paragraph, of his letter of 8. September 1995 (see also decisions T 2/83, OJ EPO 1984, "Headnote"; T 7/86, OJ EPO 1988, 381, in particular point 6 of the reasons). The Respondent not having shown that the claimed subject-matter provided an unexpected result, it can only considered that it is an arbitrary selection, as opposed to a purposive selection, and thus does not fulfill the requirements of Article 56 EPC.

7.15. For this reason, auxiliary request II is not allowed.

Auxiliary request III

8. Compliance with Article 123(2) EPC

8.1. Claim 1 of auxiliary request III is the result of combining the subject-matter of claims 1, 3 and 6 as granted, with the further restriction that dye moiety (1) corresponding to formula (I) contained a chromophore moiety wherein the phenyl ring adjacent to the sym-triazine moiety was no longer substituted by a sulfo group, the disclaimer of the compound as defined in example No. 90 of document (1) no longer being present (see point VII c) above).

8.2. The Board sees no objection under Article 123(2) EPC to the present request. In particular, the deletion of a sulfo group in die moiety (I) does not amount to a selection of a specific sub-class of compounds not disclosed in the application as filed but on the contrary is a limitation of the possibilities already disclosed in the application as filed (see page 5, line 19 to page 10, line 2).

9. Compliance with Article 123(3) EPC

9.1. The claims of auxiliary request III also meet the requirements of Article 123(3) EPC in that the claimed subject-matter does not extend the protection conferred by the patent as granted in view of the restriction introduced in the definition of dye moiety (1).

10. Novelty - Article 54(2) EPC

10.1. The disclosure of document (1) does not destroy the novelty of the subject-matter of claim 1 of auxiliary request III for essentially the same reasons as those set out for auxiliary request II (see points 6.3 and 6.4. above).

10.2. Likewise the claimed subject-matter is novel in view of the compound in example No. 90 of document (1) and of the compound in example No. 10 of document (2) (see points 6.5 to 6.8 above).

11. Inventive step - Article 56 EPC

11.1. Claim 1 of auxiliary request III contains essentially the same technical feature as claim 1 of auxiliary request II, i.e. a group of substances encompassed but not disclosed by the general disclosure of document (1) and aiming at the same objective as document (1). In particular, in the claimed formula:

FORMULA (1)

n is 0, 1 or 2 (emphasis added by the Board).

11.2. In the Board's judgment, it would have been obvious for the person skilled in the art starting from dyestuffs of formula (1) of document (1), wherein the substituent R3 is a phenyl substituted by a sulfo group such as compounds of examples 1 to 4, to arrive at fiber-reactive dyeing compounds such as claimed, given that the general disclosure of document (1) teaches that the groups with phenylamino substituted by sulfo are interchangeable with groups of the formula:

FORMULA

for the purpose in hand (see point 7.14 above). The Respondent has not shown that this choice produced any unexpected result. Therefore it can again only be concluded that it is an arbitrary selection, as opposed to a purposive selection, and thus this choice does not fulfill the requirements of Article 56 EPC.

11.3. For these reasons, this request suffers from the same deficiency as auxiliary request II and is not allowable under Article 56 EPC, either.

Auxiliary request IV

12. Compliance with Article 123(2) EPC

12.1. Claim 1 of auxiliary request IV is the result of combining the granted claims 1, 3 and 6, with the further restriction that the anionic dye moiety corresponding to formula (I) contained a chromophore moiety wherein the phenyl ring adjacent to the sym-triazine moiety was no longer substituted by a sulfo group; the substituent Z was deleted and the substituents -SO2CH=CH2 and -SO2CH2CH2-OSO3H, which in the main request were optionally attached to the dye moiety, were deleted (see point VII d) above).

12.2. These amendments do not amount to an inadmissible singling-out of a specific sub-class of compounds not disclosed in the application as filed but, on the contrary, they amount to a limitation of the possibilities already disclosed in the application as filed (see, in particular, page 3, lines 21-22 "much preferred is a case where n is 0"). Furthermore, the amendments made to the other claims and, in particular, to claims 4 and 6 are appropriate and necessary to bring those claims into line with the wording of the present claim 1.

13. Compliance with Article 123(3) EPC

13.1. The claims of auxiliary request IV also meet the requirements of Article 123(3) EPC in that the claimed subject-matter does not extend the protection conferred by the patent as granted in view of the restrictions introduced in the definition of the anionic dye moiety.

14. Novelty - Article 54(2)

14.1. As already set out in point 6.1 above, document (1) discloses soluble dyes with fiber-reactive properties of the formula:

FORMULA (1)

wherein

D is an organic dye moiety;

X is a vinyl-, ß-thiosulfatoethyl-, ß-sulfatoethyl- or ß-chloroethyl group;

R is a hydrogen atom or a C1-4alkyl group;

n is 1 or 2;

p is 1 or 2;

Y is a substituent -O-R1; -S-R1; -NR2R3 in which:

R1 is an optionally substituted C1-4alkyl group or an optionally substituted aromatic carbocyclic or aromatic heterocyclic group,

R2 is a hydrogen atom or an optionally substituted lower alkyl group or a cycloaliphatic group and R3 is a hydrogen atom or an optionally substituted lower alkyl or an optionally substituted aromatic carbocyclic group or a lower alcoxy group or the cyano group or the group of formula -CS-NH2 or an optionally substituted amino group, or R2 and R3, together with the nitrogen atom, can form a ring containing a lower alkyl and, optionally, a heteroatom.

14.2. The description further indicates that the optional amino groups which may form group R3 include a group of the formula:

FORMULA

wherein

R4 is a hydrogen atom, chloro, methyl or methoxy or nitro group and

R5 is a sulfo group or a ß-sulfatoethylsulfonyl- or ß-thiosulfatoethylsulfonyl group.

14.3. The claimed subject-matter of the present request is delimited from the general disclosure of document (1) in that claim 1 is directed to compounds where the anionic dye moiety is not substituted by a group Z. It is further delimited from the individual compound of example 90 (due to the specific dye moieties D) and from the individual compound of example 10 of document (2) because A is unsubstituted phenylene.

14.4. Therefore, neither the disclosure of document (1) nor that of example No. 10 of document (2), which corresponds to example No. 8 of document (3), anticipates the claimed invention.

15. Inventive step - Article 56 EPC

15.1. As regards the assessment of inventive step, the general disclosure of document (1) is no longer relevant as it requires as an essential feature the presence of an X-SO2 group attached to the dye moiety. On the contrary, the compound of example No. 90 of document (1) aims at the same objective as the claimed invention and has all the relevant technical features in common, in particular the substituent attached to the sym-triazine moiety opposite to the dye moiety. This feature is not present in the compound in example No. 10 of document (2) and therefore the latter does not qualify as the closest prior art.

15.2. In the light of this closest state of the art, and in the absence of any evidence showing an improvement over said closest state of the art, the technical problem is to be seen in the provision of fiber-reactive dyestuffs other than the compound known from example No. 90 of document (1).

15.3. This problem is essentially solved by replacing the anionic dye moiety of the known compound by the anionic dye moieties D as mentioned in claim 1.

15.4. In view of the dyeing examples 1 and 3 (see pages 18 and 19) and the printing example 2 (see page 19) related to tests carried out with the compounds of example 1 (see page 10) and examples 2 to 31 (see Tables, pages 11 to 18), the Board is satisfied that the claimed subject-matter represents a solution to the technical problem defined under point 15.2.

15.5. It remains to be decided whether or not the proposed solution to the problem underlying the patent in suit is obvious in the light of the cited prior art.

15.6. The Board finds nothing relevant in the Appellant's submissions or in the cited documents to support the view that the fiber-reactive compounds according to the claims of the present request represent a solution to the stated problem which does not involve inventive step. It is not convinced by Appellant's argument that, in view of the close structural relationship between the compound in example No. 90 of document (1) and the claimed subject-matter, no inventive step could be acknowledged prima facie. This argumentation is inadequate as it does not explain how the person skilled in the art would have been directed, starting from this known compound, towards the claimed compounds, as none of the cited documents contains any relevant information in this respect.

15.7. The Respondent submitted convincing arguments in support of the view that the person skilled in the art would have noted that the compound in example No. 90 was not in line with the general teaching of document (1). The general teaching has as its essential feature an X-SO2 substituent attached to the dye moiety. As this feature is lacking in example no. 90 the skilled person can only treat it as an isolated example not leading to further possibilities. Nor could he have relied upon the compound in example No. 10 of document (2), as this latter teaches that a substituent methoxy must be present on the benzanilide moiety. Thus there is no teaching which points in the direction of the claimed compounds.

15.8. The Board's conclusion is that documents (1), (2) and (3) do not lead to the subject-matter of present claim 1.

15.9. It follows from the above that the subject-matter of claim 1 is not rendered obvious by documents (1), (2) and (3). The same applies to dependent claims 2-5 relating to specific embodiments of said independent claim. Independent claim 6, relating to a process for producing a compound according to any of claims 1 to 5, is based on the same inventive concept and derives its patentability on the same basis as does claim 1. The same applies to claims 7 and 8, respectively relating to a process for dyeing or printing fiber materials, which comprises using a compound according to any one of claims 1 to 5 and to fiber materials dyed or printed by the process of claim 7. This also applies to claims 1. to 6 for the contracting state ES.

16. Discretion under Article 111(1) EPC

Although the Board has come to the conclusion that the claimed subject-matter complies with the requirements of Article 52(1) EPC, the description has still to be brought into line with the claims of present auxiliary request IV. Therefore, the Board exercises its discretion under Art. 111(1) EPC to remit the case to the first instance in order for the description to be adapted to the allowable claims.