|European Case Law Identifier:||ECLI:EP:BA:1982:T005782.19820429|
|Date of decision:||29 April 1982|
|Case number:||T 0057/82|
|Language of proceedings:||DE|
|Download and more information:||
|Title of application:||-|
|Headnote:||The subject-matter of an application relating to new chemical end products, processes for their preparation, and to new intermediates for these end products at all events has unity within the meaning of Article 82 EPC if all these subject-matters are technically interconnected and are integrated into a single overall concept by being oriented towards the end products. In this context, starting materials which are used in a process for preparing end products and which are themselves products of a disclosed, albeit unclaimed production process are also considered to be intermediates.|
|Relevant legal provisions:||
|Keywords:||Intermediate end product
Unity of invention
Summary of Facts and Submissions
I. European patent application No. 80 105 385.1, filed on 9 September 1980 and published on 1 April 1981 under publication No. 0025937, claiming the priority of the German prior application of 22 September 1979, was refused by decision of the Examining Division of the European Patent Office dated 28 January 1982 on the basis of the original six claims.
II. The stated grounds for the refusal were that the invention lacked unity. The Examining Division considered that the claims concerning copolycarbonates (Claim 1), their preparation (Claims 2 and 3), and mixture containing such copolycarbonates (Claims 5 and 6) did indeed relate to a single inventive concept, but that Claim 4 concerning dihalogenated carboxylic acid esters were based on a second inventive concept. Even though a single inventive concept can alternatively be seen in the dihalogenated carboxylic acid esters according to Claim 4 and their use in the polycondensation processes according to Claims 2 and 3, the subject-matters of Claims 1, 5 and 6 are nevertheless linked by a second inventive concept, so that the application as a whole has to be opposed on the grounds that it lacks unity under Article 82 EPC. The applicant's argument that the invention cannot be reproduced unless the dihalogenated carboxylic acid ester are disclosed applies to the disclosure of the invention but not to the question of unity.
III. On 1 March 1982 the appellant lodged an appeal by letter of 24 February 1982, at the same time filing a Statement of Grounds, the substance of which was that neither search and examination practice nor the Convention and the relevant Guidelines opposed the unity of an invention which related, on the one hand, to new products whose applications constituted valuable properties and to processes for their preparation and, on the other, to new intermediates used in their preparation. It is an accepted legal view that a chemical process is characterised by starting materials, method and end products. Accordingly, the starting materials necessarily belong to the invention irrespective of whether these are new or known. If the starting materials are new, an additional claim may be made in respect of them, since they are linked within the meaning of Article 82 EPC to form a single invention by being further processed into the end products. On 29 April 1982 the appellant filed new claims and requested that the decision under appeal be set aside and that the patent sought be granted. The present claims are as follows:
"1. High-molecular, thermoplastic, heterocyclic aromatic copolycarbonates containing: (a) 95 - 50 mol%, based on the total quantity of carbonate structural units in the polycarbonate molecule, of carbonate structural units of formula IV (FORMULA) where -O-A-O- is the residue of the diphenols used, and (b) 5 - 50 mol%, based on the total quantity of carbonate structural units in the polycarbonate molecule, of carbonate structural units of hexahydrofuro-(3,2-b)-furane-3,6-diols of the formula I (FORMULA)
2. Process for the preparation of copolycarbonates according to Claim 1, characterised in that 5 to 50 mol%, based on the total molar quantity of diphenols and dihalogenated carboxylic acid esters of the diols II, (FORMULA) of diols of formula II in the form of their dihalogenated carboxylic acid esters with 50 - 90 mol% based on the total molar quantity of diphenols and dihalogented carboxyilic esters of the diols II, of diphenols are reacted, in a boundary phase process, optionally in the presence of chain breakers and optionally with the use of phosgene or COBr2 at temperatures between approximately 0°C and 80°C.
3. Process for the preparation of copolycarbonates according to Claim 1, characterised in that 5 to 50 mol%, based on the total quantity of diphenols and dihalogenated carboxylic acid esters of the diols II, (FORMULA) of diols of formula II in the form of their dihalogenated carboxylic acid esters with 50 - 90 mol% based on the total molar quantity of diphenols and dihalogenated carboxylic esters of the diols II, of diphenols are reacted, optionally in the presence of chain breakers and optionally with the use of phosgene or COBr2 at temperatures between approximately -10° and -120° in homogeneous solution with the addition of at least equivalent amounts of tertiary organic bases.
4. Dihalogenated carboxylic acid esters of hexahydro-furo-(3.2-b)-furane-3.6-diols of the formula V, (FORMULA) where R is Cl or Br.
5. Mixtures of copolycarbonates according to Claim 1 with other thermoplastics.
6. Mixtures of copolycarbonates according to Claim 1 with other polycarbonates."
Reasons for the Decision
1. The appeal complies with articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. There can be no objection to the present version of the claims on formal grounds, since it is adequately supported by the original documents (cf. Claims 1 to 6 in conjunction with page 1 paragraph 1, page 3 paragraph 2, page 5 paragraph 2, page 8 paragraph 3 and page 12 line 23 to page 13 line 1).
3. In its decision the Examining Division recognised the connection between the intermediates and their use in polycondensation processes (Claims 2 to 4). Therefore it obviously construed Rule 30(a), which serves to interpret Article 82 EPC, as meaning that by "use of a product" is to be understood its further processing by chemical means as well. There can be no objection to this interpretation. It alternatively correctly judged the end products, including their mixtures, and the chemical production processes resulting in these end products to be uniform as well (Claims 1 to 3, 5 and 6). However, it saw these two groups of subject-matters as separate inventions, an assessment which the Board in unable to share.
4. Article 82 EPC, which the Examining Division cites in its decision to refuse the application, stipulates that a European patent application may relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. In the present case the last-named requirement is met. The intermediates according to Claim 4 are not prepared for their own sake but for their property of yielding valuable new end products according to Claim 1 and mixtures of the same according to Claims 5 and 6 by means of the processes according to Claims 2 and 3. The fact that the intermediates represent reaction components necessary for the preparation of the end products affects not just the reproducibility of the invention - as the Examining Division supposes - but in fact also provides the basis for assessing the unity of the complex intermediate/end product invention. The Board is of the view that the specific function of the new intermediates as elements of the polycarbonates should not be disregarded when assessing the unity criterion. The intermediates and their further processing by by chemical means to end products as well as the endproducts themselves and their mixtures are not heterogeneous subject-matters but are technically interconnected and integrated into a single overall concept by being oriented towards the end products. This justifies the combined treatment of the constituent parts of the concept within a single European patent application.
5. The fact that in the present case the compounds according to Claim 4 are in fact starting materials for the processes according to Claims 2 and 3 does not affect the assessment of whether they are patentable as "intermediates". They are themselves products of a production process disclosed in the patent application (cf. the description from line 9 of page 13 to line 7 of page 14 and examples 1 and 2). Whether this preliminary stage is expressly claimed or - as here - is not claimed is irrelevant.
6. The possibility of claimin intermediates and end products as well as the preparation of the end products within a single European patent application is not in fact expressly provided for in Rule 30, which serves to interpret Article 82 EPC; however, the cases covered by (a), (b) and (c) do not constitute an exhaustive list of examples of unitary inventions, as shown by the word "in particular" (insbesondere, notamment).
7. From the foregoing it follows that the decision under appeal is not supported by the grounds for refusal. However, the patent sought cannot be granted at present, because a full search has not so far been carried out (cf. the search report) and the first instance has not yet assessed whether the intermediates conform with the patentability requirements.
For these reasons, it is decided that:
1. The decision of the Examining Division of the European Patent Office dated 28 January 1982 is set aside.
2. The case is remitted to the first instance for further substantive examination on the basis of the claims cited under III.