T 1251/07 (Photoinitiators/CIBA) of 21.9.2010

Summary of Facts and Submissions

I. The applicant filed an appeal against the decision of the Examining Division to refuse European patent application No. 01 962 915.3.

II. The documents cited during the examination proceedings included the following:

(D1) EP-A-0 161 830

(D3) WO-A-98/33 761

(D9) US-A-4 507 187.

III. The refusal was based on claims 1 to 12, filed with the letter dated 19 February 2007, claim 1 reading as follows:

"1. A compound of the formula Ia

FORMULA/TABLE/GRAPHIC

in which

R is radical of the formula II

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R is naphthyl, anthracyl, phenanthryl or a

heterocyclic radical, the radicals naphthyl, anthracyl, phenanthryl and the heterocyclic radical being unsubstituted or substituted by A-X- C1-C8alkyl, phenyl, OR8, SR9 and/or NR10R11, where the substituents OR8, SR9 and NR10R11 may form 5- or 6-membered rings via the radicals R8, R9, R10 and/or R11 with further substituents on the naphthyl, anthracyl or phenanthryl ring or on the heterocycle or with one of the carbon atoms of the naphthyl, anthracyl or phenanthryl ring or with one of the carbon atoms of the heterocycle; with the proviso that at least one substituent A-X- is present in the radical R;

R3,R4, R5, R6 and R7 independently of one another are

hydrogen; A-X- unsubstituted C1-Cl2alkyl or C1-Cl2alkyl substituted by OH, C1-C4alkoxy, phenyl, naphthyl, halogen, CN and/or -O(CO)R12; or are C2-Cl2alkyl interrupted by one or more non-successive oxygen atoms; or

R3, R4, R5, R6 and R7 are halogen, OR8, SR9, NR10R11,

unsubstituted or C1-C4alkyl- and/or C1-C4alkoxy-substituted phenyl, where the substituents OR8, SR9, NR10R11 may form 5- or 6-membered rings via the radicals R8, R9, R10 and/or R11 with further substituents on the phenyl ring or one of the carbon atoms of the phenyl ring; with the proviso that at least one radical R3, R4, R5, R6 or R7 is

A-X-;

R8 and R9 independently of one another are hydrogen;

unsubstituted C1-Cl2alkyl or C1-C12alkyl substituted by OH, C1-C4alkoxy, phenyl, phenoxy and/or -O(CO)R12; or are C2-Cl2alkyl interrupted by one or more non-successive oxygen atoms; or are unsubstituted phenyl, C3-C6alkenyl, cyclopentyl, cyclohexyl or naphthyl; or are C1-C4alkoxy-, phenyl- and/or C1-C4alkyl substituted phenyl, C3-C6alkenyl, cyclopentyl, cyclohexyl or naphthyl;

R10 and R11 independently of one another are hydrogen;

unsubstituted C1-Cl2alkyl or C1-Cl2alkyl substituted by OH, C1-C4alkoxy and/or phenyl; or are C2-C12alkyl interrupted by one or more non-successive oxygen atoms; or are phenyl, -(CO)R12 or SO2R13; or R10 and R11, together with the nitrogen atom to which they are attached, form a 5-, 6-or 7-membered ring which is uninterrupted or interrupted by -O- or -NR14-;

R12 is C1-C8alkyl; unsubstituted phenyl or phenyl

substituted by C1-C4alkyl and/or C1-C4alkoxy;

R13 is C1-C12alkyl, unsubstituted phenyl or phenyl

substituted by C1-C4alkyl;

R14 is hydrogen; unsubstituted C1-C8alkyl; C1-C8alkyl

substituted by OH or C1-C4alkoxy ; unsubstituted phenyl; or phenyl substituted by OH, C1-C4alkyl or

C1-C4alkoxy;

A is a surface-active radical of the formula III

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in which the units IIIa1, IIIb and/or IIIc

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are distributed randomly or in blocks and in which the circle is intended to show that an aromatic radical R as defined above is a divalent radical and is substituted via the bridges X with the corresponding silyl radical; or

A is a surface-active radical Ao ; where Ao is

C6-C30alkyl, C6-C30alkenyl, C6-C30alkynyl, C6-C30aralkyl, C6-C30alkyl-(CO)-, C6-C30alkenyl-(CO)-, C6-C30alkynyl-(CO)-, C6-C30aralkyl-(CO)-, C6-C30alkyl-Si(R15)(R16)-, C6-C30alkenyl-Si(R15)(R16)-, C6-C30alkynyl-Si(R15)(R16)-, these radicals being unsubstituted or substituted by OH, C1-C4alkoxy, phenyl, naphthyl, halogen, CN, SR9, NR10R11 and/or -O(CO)R12 and these radicals being uninterrupted or interrupted by one or more

-O-, -S- or -NR14-;

n is a number from 1 to 1000 or, if the siloxane

starting material is a mixture of oligomeric siloxanes, n may alternatively be less than 1 but greater than 0;

m is a number from 0 to 100;

p is a number 0-10 000;

G1 is C1-C18alkyl or a radical of the formula

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G2 is C1-C18alkyl or a radical of the formula

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with the proviso that, if G2 = alkyl, the radical G2 is attached directly to the silicon atom without an oxygen bridge; or

G1 and G2 together are a single bond;

R15, R16, R17, R19, R20, R21, R22, R23 and R24 independently

of one another are C1-C18alkyl, phenyl, C2-C6-hydroxyalkyl, C2-C6-aminoalkyl or C5-C8cycloalkyl;

R18 is unsubstituted C1-C18alkyl, C5-C8cycloalkyl; or is

C1-C18alkyl substituted by hydroxyl, C1-Cl2alkoxy, halogen, C3-C8cycloalkyl and/or N(R10)(R11); or is unsubstituted phenyl or phenyl substituted by C1-C12alkyl, C1-C12alkoxy, halogen, hydroxyl and/or

N(R10)(R11);

X if A is a radical of the formula III, X is a single

bond, C1-C10alkylene, C2-C10alkenylene, C2-C10alkynylene, -(CH2)a-O-,

-O-(CH2)a-, -O-(CH2)a-O-, -(CH2)a-O-(CH2)b-, -(CH2)a-O-(CH2)b-O-, -(CH2)a-NR14-(CH2)b-, -(CH2)a-NR14-, -(CH2)a-O-(CH2)b-NR14-(CH2)c-, -(CH2)a-O-(CH2)b-NR14-, -(C2-C10alkenylene)-O-(CH2)a-, -(C2-C10alkyenylene)-O-, -(C2-C10alkynylene)-O-(CH2)a-, -(C2-C10alkynylene)-O-, -(C2-C10alkenylene)-O-(CH2)a-O-, -(C2-C10alkynylene)-O-(CH2)a-O-, -(C2-C10alkenylene)-NR14-(CH2)a-, -(C2-C10alkenylene)-NR14-, -(C2-C10alkynylene)-NR14-(CH2)a-,- (C2-C10alkynylene)-NR14-, -(C2-C10alkenylene)-O-(CH2)a-NR14- or-

(C2-C10alkynylene)-O-(CH2)a-NR14- ; and

X if A has the definition of Ao, X is a single bond,

-O-, -S- or -NR14-;

a, b and c independently of one another are a number

from 0 to 10; but with the proviso that they are at least 1 if the methylene group in question is between two oxygen atoms or between one oxygen atom and one nitrogen atom;

Y is hydrogen; unsubstituted C1-C20alkyl or C1-C20alkyl

substituted by a group A-X-; unsubstituted C2-C18alkenyl or C2-C18alkenyl substituted by a group A-X- ; unsubstituted C2-C18alkynyl or C2-Cl8alkynyl substituted by a group A-X-; or Y is phenyl, naphthyl, anthracyl or phenanthryl, these radicals being unsubstituted or substituted by one or more groups A-X-and/or C1-Cl2alkyl; or Y is C1-C4alkyl which is substituted by phenyl, naphthyl, anthracyl, phenanthryl and if desired additionally by a group A-X-; or Y is the salt radical of the respective glyoxalic acid;"

IV. The Examining Division decided that these claims did not meet the requirements of Article 123(2) EPC so that the objections under Article 82 as to unity of invention were maintained.

The Examining Division considered that

- the proviso "that at least one substituent A-X-

is present in the radical R;" in the definition of the radical R, and

- the proviso "that at least one radical R3, R4, R5,

R6 or R7 is A-X-;" in the definition of the radicals R3, R4, R5, R6 or R7

had no basis in the application as originally filed.

Therefore the objection as to unity was maintained. This objection was raised in the communication dated 23 August 2006. It was based on the fact that the common structural element of the formulae (Ia) to (Ic) in claim 1 then on file, namely the one of the formula -C-C(o)-C(o)-O-, was also present in the compounds disclosed in Document (D1) which had the same properties as the ones presently claimed. The Examining Division considered that similar objections could based on document (D3) or (D9).

V. The present claims are those filed with the letter dated 28 June 2007 setting out the grounds for appeal. These are

- claims 1 to 12 of the main request,

- claims 1 to 12 of the first auxiliary request, and

- claims 1 to 10 of the second auxiliary request.

The claims of the main request are identical to those on which the decision under appeal was based (see under point III above).

VI. The applicant argued that the provisos objected to formed part of claim 1 as originally filed. Furthermore, the claims met the requirement of unity of invention as the claimed compounds shared the arylglyoxalate structure having a substituent -AX at the aryl group as the new structural element.

VII. The applicant requested that the decision under appeal be set aside and that the present application be reconsidered on the basis of the claims of the main request or on the basis of the claims of the first or second auxiliary requests, all these requests being submitted with the letter dated 28 June 2007. The applicant did not request oral proceedings.

Reasons for the Decision

1. The appeal is admissible.

Main request

2. Article 123(2) EPC

2.1 The objections of the Examining Division concerned the following provisos:

- "that at least one substituent A-X- is present in

the radical R;" in the definition of the radical R (PROVISO 1), and

- "that at least one radical R3, R4, R5, R6 or R7 is

A-X-;" in the definition of the radicals R3, R4, R5, R6 or R7 (PROVISO 2).

PROVISO 1 appears in claims 1 and 2, PROVISO 2 in claims 1 to 3 of the main request.

2.1.1 Present claim 1 differs from claim 1 as originally filed inter alia in that the compounds are now limited to formula (Ia) by deleting the alternative formulae (Ib) and (Ic).

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This limitation meets the requirements of Article 123(2) EPC as formula (Ia) is explicitly disclosed in claim 1 as originally filed.

2.1.2 PROVISO 1

This proviso in claim 1 as originally filed appears in the definition of the radicals R, R1 and R2 on page 72 and reads as follows:

"with the proviso that at least one substituent A-X-, A1-X1- or A2-X2- is present in the radical R or in at least one of the radicals R1 or R2;".

The deletion of formula (Ib) in present claim 1 required that the definitions of the radicals R1 and R2 defined only for this formula be deleted.

The definitions of the radicals A, A1 and A2 in claim 1 as originally filed are identical, as are the definitions of X, X1 and X2 (see the reference to "A, A1 and A2" in the left margins on pages 73 and 74 as originally filed; see the reference to "X, X1 and X2" in the left margins on pages 75 and 76 as originally filed).

The deletion of the definitions of the radicals R1 and R2 renders the separate definitions of A-X-, A1-X1- and A2-X2- superfluous. Consequently, said proviso in the application as filed could be properly adapted as follows:

"with the proviso that at least one substituent A-X- is present in the radical R;", i.e. to PROVISO 1.

Hence, the amended PROVISO 1 in present claims 1 and 2 does not contravene the requirements of Article 123(2) EPC.

2.1.3 PROVISO 2

This proviso in claim 1 as originally filed appears on page 72, line 1 and 2 and reads as follows:

"with the proviso that at least one radical R3, R4, R5, R6 or R7 is A-X-, A1-X1- or A2-X2-;".

For the reason set out under point 2.1.2 above, the separate definitions of A-X-, A1-X1- and A2-X2- became superfluous in present claim 1.

Consequently, said proviso in the application as filed could be properly adapted as follows:

"with the proviso that at least one radical R3, R4, R5, R6 or R7 is A-X-;", i.e. to PROVISO 2.

Hence, also the amended PROVISO 2 in present claims 1 to 3 does not contravene the requirements of Article 123(2) EPC.

2.2 In general, present claims 1 to 3, 4 and 5 to 12 are based on claims 1 to 3, 4 and 5, and 6-13 as originally filed.

2.3 Consequently, the amended claims of the main request meet the requirements of Article 123(2) EPC.

3. Unity of invention

3.1 Under point 2 of the reasons for the decision under appeal, the Examining Division remarked that due to the fact that the claims on file did not meet the requirements of Article 123(2) EPC, the objection as to lack of unity had not been overcome.

3.2 Only in the communication dated 23 August 2006 did the Examining Division give detailed reasons why it considered that the claims did not to meet the requirements of unity.

In this communication it argued that the compounds of formula (Ia) to (Ic) only shared a structural element of the formula -C-C(o)-C(o)O- which was already disclosed in documents (D1), (D3) and (D9).

This argument does not apply to the claims of the present main request where the compounds claimed are limited to those of formula (Ia).

4. In summary, the claims of the Main Request meet the requirements of Article 123(2) EPC and the arguments raised by the Examining Division do not support its conclusion that the subject-matter of these claims lacked unity of invention. Therefore, the grounds for refusing the present application as set out in the decision under appeal do not prejudice the grant of a patent.

Hence, the decision under appeal is set aside.

5. Remittal

Appeal proceedings "are not and were never intended to be the mere continuation of first instance proceedings. Rather, their function is to give a judicial decision on the correctness of a separate earlier decision given by the first instance department." (T 34/90, point 2 of the reasons as published in OJ EPO 8/1992, 454).

The Examining Division has not yet assessed whether or not the subject-matter of the claims of the main request meets the requirements of novelty and inventive step. Therefore, the Board exercises its discretion under Article 111(2) EPC and remits the case to the department of first instance for further examination on the basis of these claims.

6. In view of the outcome of this decision, the Board sees no reason to deal with the auxiliary requests.

7. The Board observes that semicolons are missing in claim 1 of the main request on page 72 after the expression "A-X-" in the third line below formula (II) and in the first line of the definition of R3 to R7.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first

instance for further examination on the basis of claims 1 to 12 of the main request filed with the letter dated 28 June 2007.