T 0915/95 23-11-1999

1. The appeal is admissible.

2. Amendments (Article 123(2) EPC)

2.1. Main request and first auxiliary request

The definitions of the radicals Z, Z1 (including R8) and A (including R9) in Claim 1 of these requests do not comply with the provisions of Article 123(2) EPC.

Particularly, there is no basis in the application as filed for the definitions, that

(i) Z is a C2-C4 alkylene group,

(ii) R8 is a methylene group, and

(iii) "each individual group R9 in any structure may be the same or different from any other group R9 in that structure".

There is no general disclosure of any of these definitions in the application as filed; according to page 6, lines 29 to 34 Z is the residue of a polyol, preferably a di- or trivalent polyol and the radical A, which corresponds to the unit -(OR9)- in the claims under discussion, represents a polyether chain produced by polymerisation of, for example, ethylene, propylene or butylene oxides or tetrahydrofuran. Nor can the formulae IX to XIV (pages 15 and 20) justify the above definitions, since they merely correspond to the specific amine containing prepolymers used in the examples, as it appears from the experimental data in the various tables; the structural features of these prepolymers have thus each been disclosed in a specific context which cannot be extended to general requirements. This applies in particular to the difunctional radicals Z in formulae IX, XII and XIV, which comprise oxyethylene, oxy-i-propylene, oxy-n-butylene and/or oxy-sec-butylene units in particular combinations and proportions and the trifunctional radicals Z1 in formulae X, XI and XIII, which comprise oxy-i-propylene or oxy-n-butylene units in particular proportions. None of the latter formulae comprises a unit R8 = methylene.

Therefore, the features (i), (ii) and (iii) define subject-matter which extends beyond the content of the application as filed.

2.2. Main request and second auxiliary request

The proviso in the definition of the substituent R1 in Claims 1 of these requests, namely that when this radical is hydroxyalkyl it must be "other than hydroxymethyl", is not based on the disclosure in the application as filed. On the contrary, in the original version of Claim 1 the meaning R1 = methylol (= hydroxymethyl) is specifically foreseen.

Neither can this proviso be regarded as a disclaimer based on otherwise novelty destroying state of the art, because its content goes beyond the subject-matter which is disclosed in the relevant state of the art, here D1 and D4 (cf. T 0434/92 of 28 November 1995, T 0426/94 of 22 May 1996, T 0653/92 of 11 June 1996). This results from the fact that according to these citations the groups corresponding to the radical B of Claim 1, which may link the repeating units of the polyoxyalkyleneamine-based compounds, whose N-atoms may be substituted with hydroxymethyl groups ( R1), do not satisfy the definition of the radical B. According to D1 this linking group may only be methylene (from bifunctional reaction of formaldehyde) and according to D4 it may only be carbonyl (from bifunctional reaction of urea)(cf. points 4.1 and 4.4 below).

This proviso therefore goes beyond the disclosure of the respective state of the art.

2.3. Second and third auxiliary requests

The definition of the starter compound (Z) as "di- or trivalent active hydrogen containing" compound in the definition of the radical J in Claim 1 of these requests has no basis in the disclosure of the application as filed, because in the only relevant statement in the application (page 6, lines 29 to 30) the starter compound Z is more narrowly defined as "residue of a polyol, preferably a di- or trivalent polyol". Since the term "active hydrogen containing compound" encompasses compounds other than polyols, this statement goes beyond the scope of the original disclosure.

2.4. The main request and the first, second and third auxiliary requests are therefore not allowable as they do not comply with the requirements of Article 123(2) EPC.

2.5. Fourth auxiliary request

2.5.1. Claim 1

(i) The introductory statement of this claim "[U]se of a polymer ... for the purpose of imparting shrink resistance to wool by treating ... to be applied to the wool fibres" is based on page 12, lines 9 to 13 of the application as filed.

(ii) Formulae (i) and (ii) correspond to the formulae in Claim 5 of the application as filed.

(iii) The definition of the radical "J" is based on the disclosure in the application as filed on page 5, line 27 to page 6, line 30; page 8, lines 29 to 30; formulae (IX) to (XIV) on pages 15 and 20, from which it follows that the unit "Z" in formulae (I) and (III) on pages 5 and 6 depicts the residue of the starter compound used in the preparation of polyetherpolyols.

(iv) The definition of the radical R1 is based on page 9, lines 5 to 13 of the application as filed.

(v) The definition of the linking group B is based on the disclosure in original Claim 1 and on page 6, line 35 to page 8, line 2, according to which the residue B is a unit containing two or more amine-reactive functional groups. The latter feature is in agreement with formula ii), according to which the radical B is bonded to nitrogen.

(vi) The definitions of the parameters m, n, r, t and s as well as the final "general proviso" are based on original Claim 1.

(vii) Claims 2 to 10 of the fourth auxiliary request are based on Claims 2 to 4 and 6 to 11 of the application as filed.

(viii) The set of claims according to the fourth auxiliary request, thus, complies with the requirement of Article 123(2) EPC.

3. Clarity (Article 84 EPC); fourth auxiliary request

The decision under appeal (Reasons 2.3.1) held that the terms "fibre reactive grouping" and "polyfunctional reactive groups" in the Claim 1 then valid were unclear.

3.1. Following the restriction to the treatment of wool, the proviso "that at least one group R1 per polyoxyalkylene amine residue retains residual fibre reactivity" is in the Board's view clear, because it is within the general common knowledge of one skilled in the art to choose, among the alternatives set out in Claim 1, a substituent R1 which is "capable of causing a molecule [i.e. compounds i) and ii)] to be bound to the surface of a [wool] fibre in such a way as not to be readily removable therefrom" (cf. page 10, line 34 to page 11, line 4 of the application as filed). The broadness of this functional definition does not affect its clarity.

3.2. The same conclusion applies to the definition in Claim 1 of the radical B being "a bi- or polyfunctional bridging group or connecting group". As set out in point 2.5.1(v) supra this definition is limited to such radicals B whose functional groups are able to react with the amino groups of the polyoxyalkylene polyamine units of formula ii). Insofar the objection in the decision under appeal, namely that Claim 1 "does not indicate with what ... the group is reactive" does not apply. Again, the fact that the definition of B is broad does not impair its clarity, as long as the choice of appropriate functional groups is within the common general knowledge of a skilled person.

4. State of the art

4.1. Document D1

This document relates to a process for preparing polymers, comprising reacting a primary polyether polyamine of the formula A(EpNH2)m wherein A is the residue of a polyether initiator having m initiator groups, E is an ether moiety from an oxirane compound, p is 5-90 and m is 2-8, with an aqueous solution of monomeric formaldehyde or with paraformaldehyde in the absence of a diluent. When an initiator is used in which m is 3 or greater, a crosslinked network may result (Claim 1; column 4, lines 46 to 50). According to column 5, lines 16 to 23 tacky substances, which are useful as adhesives or resinous, rubbery products may be produced.

This disclosure encompasses polyether polyamine reaction products having hydroxymethyl substituted amino groups (corresponding to R1) and methylene linking groups (corresponding to B) between the nitrogen atoms of the repeating units.

4.2. Document D2

This document relates to a composition comprising a major amount of a hydrocarbon oil containing 0.0001% to about 1% of the reaction product of 1 molar proportion of a poly(oxyalkylene)amine with about 0.5 to about 2.0 molar proportion of an epihalohydrin (Claim 1). According to column 4, lines 34 to 40 the primary reaction product of epihalohydrin and amine may undergo further condensation.

This disclosure encompasses polyether polyamine reaction products having amino groups which are substituted with residues derived from the monofunctional reaction of epichlorohydrin (corresponding to R1) and -CH2CHOHCH2- residues derived from the bifunctional reaction of epichlorohydrin (corresponding to B) between the nitrogen atoms of possibly resulting repeating units.

4.3. Document D3

Claim 1 of this document, which is to be considered under Article 54(3) EPC only, relates to a resinous composition comprising an ungelled reaction product of a polyepoxide and a polyoxyalkylene polyamine, whose amino groups have been, partly or completely reacted with glycidol (page 4, lines 29 to 31). By that reaction radicals -CH2CHOHCH2OH are formed.

The modified adducts are at least partially neutralized with acid and used in cationic electrodeposition (page 4, lines 41 to 57; Claims 15, 16).

4.4. Document D4

This document relates to compounds, which comprise units -CO-NR-(-R'O-)m-(CH2CHR"O-)n- wherein R and R" are hydrogen or methyl and R' is C3 to C5 alkylene. After introduction of methylol groups by reaction with formaldehyde these compounds are used for the treatment of textiles comprising cellulose or modified cellulose in order to provide them with durable press (i.e. crease proofing) and abrasion resistance properties (Claim 1; page 4, lines 8 to 17; page 17, lines 2 to 9).

In the case that these compounds are formaldehyde modified urea polymers (page 3, lines 9 to 18), they comprise hydroxymethyl radicals (corresponding to R1) and amino group connecting -CO- units (corresponding to B).

4.5. Document D5

This document relates to a process for the provision of antistatic properties to shaped bodies, including fabrics, by their treatment with aqueous solutions of reaction products of polyoxalkylene substituted polyamines with compounds comprising more than one epoxy or halogenhydrin group. The polyoxalkylene substituted polyamines used as starting compounds may be prepared by reaction of a polyalkyleneoxide comprising reactive substitutents like chlorohydrin or glycidyl with polyalkylene polyamines (Claim 1; manuscript page 2, last paragraph to manuscript page 4, first paragraph).

According to Example 2 (manuscript page 9) the starting compound, prepared by reaction of ethylene chlorohydrin, ethylene oxide and diethylene triamine, is further reacted with epichlorohydrin.

Reaction products, wherein the polyalkylene oxide units are bonded to the amino group via an alkylene group (not via a 2-hydroxy-n-propylene group resulting from the bifunctional reaction of epichlorohydrin), wherein the amino groups are linked by a bridging group and wherein the amino groups are also substituted with groups having fibre reactivity, are not within the disclosure of D5.

According to Example 7 a woollen fabric is treated with a reaction product of polyethylene glycol, epichlorohydrin and dipropylene triamine. After several "household washing operations" the fabric exhibits a good antistatic effect and an improved "shape stability" ("Formstabilität")( manuscript page 14).

5. Novelty (Article 54 EPC), fourth auxiliary request

Novelty of the claimed subject-matter has been established by the formulation as use claim for the purpose of imparting shrink resistance to wool.

From the citations only documents D4 and D5 are concerned with the treatment of textiles, but none of them relates to the specified wool treatment.

5.1. Document D4 concentrates on the provision of the very different property of crease proofing of different textiles, i.e. cellulose based materials, which can hardly be compared to woollen materials.

5.2. Document D5, although mentioning the treatment of woollen fabrics (cf. Example 7 of D5 referred to in the last paragraph of point 4.5 supra), does it for purposes which are unrelated to the claimed use of imparting shrink resistance. This conclusion is valid not only for the quite different main purpose of this document of providing antistatic properties, but also for the second advantage referred to in Example 7 of D5, i.e. the "shape retention". In the Board's judgment the Appellant is correct in stating that this property is different from the property of "shrink resistance", because the latter term does not translate into "Formstabilität", the term employed in D5, but into "Schrumpfresistenz" or "Filzfreiheit". As compared with "shrink resistance", i.e. the reduction of the propensity of woollen materials to felting, "Formstabilität" only means that after washing the fabric retains its form and/or appearance, i.e. its width, length, etc.

Since Claims 2 to 10 of the fourth auxiliary request are also directed to the same use, their subject-matter is likewise novel of the cited prior art.

6. Inventive step (Article 56 EPC), fourth auxiliary request

Document D5 represents the closest prior art, because it is the only citation disclosing the treatment of wool. However, the teaching of this document cannot suggest the claimed solution of the existing technical problem, i.e. the provision of shrink resistance to wool. As argued in point 5.2 supra the property "shape retention" ("Formstabilität") is unrelated to the property "shrink resistance" and the achievement of a good "shape retention" does not allow, therefore, the assumption that by the treatment of a woollen fabric with the same or a similar composition an improvement of the shrink resistance will result.

Thus, if only for that reason, the subject-matter of Claim 1 of the fourth auxiliary request involves an inventive step.

The same conclusion applies a fortiori to the subject-matter of the dependent claims 2 to 10.

7. The set of claims of the fourth auxiliary request, thus, complies with the requirements of the EPC, in particular those of Articles 54, 56, 84 and 123 (2).

8. Request for reimbursement of the appeal fee

According to Rule 67 EPC "reimbursement of appeal fees shall be ordered ... where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation."

8.1. The Appellant argued that in the present case its right to be heard as stipulated in Article 113(1) EPC had not been respected, in that the Examining Division had not, as requested by the Appellant, granted it an opportunity to amend the claims on which the interlocutory revision was based (cf. point V, third paragraph).

This argument of the Appellant is based on a misinterpretation of Article 113(1) EPC, which clearly states that "[t]he decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

Since, however, the grounds for the refusal of the application as rectified had already been communicated to the Appellant in detail by the Examining Division's communication of 19 February 1993, this decision of refusal did not contravene the provisions of Article 113 EPC.

8.2. To support its allegation of substantial procedural violation, the Appellant relied in effect on the general procedural principles referred to in Article 125 EPC, according to which "the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States", and argued that a final decision against a party should under no circumstance be issued when that party had the legitimate expectation that the examination proceedings would be reopened.

In the present case this principle was not violated, because the decision to satisfy or not the Appellant's wish of being given a further opportunity to submit amended claims was clearly within the discretionary power vested in the Examining Division by virtue of Rule 86 (3) EPC. According to that rule an applicant may, after receipt of the first communication, amend the application of its own volition only once in reply to that communication. No further amendment may be made without the consent of the Examining Division.

The immediate (second) refusal of the application after having rectified the (first) decision of refusal, thus, does not amount to a procedural violation, let alone a substantial one.

8.3. Consequently, there is no equitable reason justifying a reimbursement of the appeal fee.