T 0084/82 (Chloral Derivatives) 18-03-1983

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.

2. The presently effective claims are further amended versions of those, which had been submitted on 13 February 1983 and were considered by the Board before the oral proceedings. They derive support from claims 8 to 11 as well as from other passages of the application, as originally filed (e.g. page 2, line 32 to page 3, line 34; page 9, lines 17 to 22; page 10, lines 3 to 18, and lines 24 to 29).

3. The substitution of sugars, dextran or high molecular weight polysaccharides with chloral is known in the state of the art. However, the direct reaction of chloral- with dextran, starch or cellulose products appears to be less effective than alleged in the literature (GB-A-1 046 612 (1) or US-A-3 615 649 (2)). The applicants demonstrated this in a comparative example in the specification by using dextran according to the method of document (1), and as appellants submitted evidence suggesting that the actual incorporation of chloral in starch or cellulose according to document (2) had been substantially lower than expected. The reaction described in US-A-3 753 976 (3) uses an aqueous medium in order to obtain a high chloral content, but the product cannot be directly isolated from the reaction medium and requires a complete evaporation of the water and the unreacted chloral. Although all these techniques are stated to be applicable to various polysaccharide derivatives, there is no specific disclosure of the chloral substitution of the polysaccharide derivatives which are provided by the method of the application presently under appeal. These products can, therefore, be taken to be novel and so must be the claimed method of their prepararation.

4. Whilst it was a known desideratum to obtain a high chloral substitution of a polysaccharide or of a derivative thereof, such products seem to possess no unexpected property with regard to their use in veterinary practice or human medicine, as carriers of chloral for the release of this known agent in the stomach. It was, however, by no means clear at the priority date of the present application how this could be directly and efficiently achieved. Although it was known that cellulose acetals reacted with chloral in the presence of chlorinated solvents, these products had, in consequence, only about 12% chlorine content, an equivalent of 18% chloral incorporation (Chem. Abstr. 1970, 72, 56858q and 1973, 78, 73823r). It is, however, also relevant that the same technique yielded only a 4.58% chloral hydrate content with cellulose in carbon tetrachloride (cf. page 13, (comparative) Example 4, present specification as originally filed). It is the Board's view that the improved results under similar conditions, i.e. in inert non- aqueous solvents, with derivatives having a terminal hydroxy group on an alkyl substituent or with alginic acid esters were not predictable on the basis of the disclosure in the documents cited in the search report. Since the claims are now restricted to such reactants, the methods defined therein must be regarded as involving an inventive step.

5. Regarding the plea that the applicants were, in contravention of the provisions of the Convention, unfairly treated by the Examining Division, the Board cannot agree to this allegation. The Examining Division made it clear in the first communication of 17 July 1981 that even those chloral substituted derivatives in the application, which were not specifically disclosed in the prior art, were obvious in view of their known and predictable properties with regard to the problem to be solved by the invention. The same applied to therapeutic compositions thereof. In the amendments submitted with the reply of 30 July 1981 on behalf of the applicants, the directly anticipated varieties were removed from the definition of the chloral derivatives without any explanation as to how this would meet the objection of obviousness. In essence, it was argued that the limitation to therapeutic usage according to the provisions of Article 54(5) EPC should itself imply an inventive step for the compositions. The further argument that a cited statement from US-A-3 878 298 (4), i.e. the amount of (chloral substituted polysaccharide) feed additive should be kept below a pharmacodynamically effective quantity, is pointing away from the claimed invention, could not have carried weight with the Examining Division, since the disclosure implies that above such levels the effect would, as expected, be provided. No grant could have been seriously contemplated on the basis of the arguments and amendments.

6. Not only was the interpretation of the Convention by the reply submitted on behalf of the applicants fundamentally erroneous and the arguments unconvincing, but there was also no hint whatsoever as to submissions or further evidence, which would have been indicative of the possible inventive character of the method of preparation. Because the reply failed to overcome the objections and there was no reason to believe that a further amendment might resolve the problem, the Examination Division was justified in its conclusion that the deficiency was incurable and a rejection was proper. Since the relevant facts, which were in support of the patentability of certain method claims, only emerged later on in the appeal procedure, the applicants must bear the responsibility for the consequences of the delay. The Examining Division was in no position to envisage the possibility of a radical re-interpretation of the nature of the invention, without the assistance of the applicants.

7. If the applicant fails to make any real progress towards the refutation of the presumption of invalidity properly established in the first communication by the Examining Division, or no such progress appears to be possible even with amendments on the face of information available, it is within the discretion of the Examining Division according to Article 96(2) EPC, to interpret the submissions on behalf of the applicant as complete and final, and to assume, in consequence, that no useful purpose would be served by the provision of further opportunities for filing observations, and to reject the application in the second communication, when this is justified by the above circumstances. It is the declared aim of the European Patent Office to carry out the substantive examination thoroughly, efficiently and expeditiously, but this requires also a proper collaboration from the applicants, and good faith. The necessity for filing further observations prevails as long as progress towards grant can be envisaged in the light of submissions made.

8. Finally, as far as the decision of the Examining Division is concerned, the Board has noted that in the last paragraph on page 2 of the decision the Division has suggested, for the first time in the examination proceedings, that had it made an objection against the original claim to a therapeutic composition on the ground of lack of novelty, which in fact it did not, an attempt by the applicant to overcome the objection by invoking the special provision of Article 54(5) relating to the novelty of compositions having therapeutical application would not have succeeded, having regard to the art cited in the proceedings. On this, and notwithstanding the outcome of the appeal, the Board points out that if an Examining Division speculates in a decision on the likely outcome of an objection which was never made, the applicant is denied the opportunity of rebutting here, if he can, a suggestion of invalidity of a claim which could be the subject of proceedings in other jurisdictions.

9. An application was made for the reimbursement of the appeal fee in accordance with Rule 67 EPC. For an appeal fee to be reimbursed pursuant to this Rule, there has to have been a substantial procedural violation. It is the opinion of the Board that the facts of the case would not justify such a measure.