T 0035/87 (Hydroxy-pyrazoles) 27-04-1987
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Summary of Facts and Submissions
I. European patent application No. 83 101 128.3 filed on 7 February 1983 and published on 7 September 1983 (No. 87 615) claiming the priority of two prior applications dated 16 February 1982 was refused by decision of the Examining Division of the European Patent Office dated 14 November 1986. The decision was based on 9 claims, the first three of which read as follows:
1. 1-Pyrazolyl-phosphoric acid esters of the formula R2 R1 N R3 N 0-R4 (II), 0-P X-R5 Y where R1, R2, R3, are the same or different and represent hydrogen, chlorine, bromine or iodine, R4, R5 are the same or different C1-C6-alkyl radicals and X, Y are oxygen or sulphur.
2. 1-Pyrazolyl-phosphoric acid esters of formula II according to Claim 1, characterised in that R1, R2 and R3 are not simultaneously hydrogen.
3. Halogenated 1-hydroxy-pyrazoles of the formula R2 R1 N R3 N (i), OH where R1, R2, and R3 are independently hydrogen, chlorine, bromine or iodine, with the proviso that R1, R2 and R3 are not simultaneously hydrogen, in particular for the preparation of 1-pyrazolyl-phosphoric acid esters according to Claim 2. These are followed by a further product claim, process claims, composition claims and a use claim.
II. The stated grounds for the refusal were that the subject- matter of the application lacked unity in view of Article 82 EPC. The Examining Division relied primarily on Decisions T 65/82 and T110/82, which both relate to low-molecular intermediate- and end-product inventions. With reference to the Headnote of Decision T 110/82 it explained that end products and intermediates were to be regarded as having unity if the intermediates prepared and oriented towards the end products shared an essential structural element with the end products and were thereby technically closely interconnected with them. For a definition of the expression "essential structural element" it referred to Decision T 65/82 and concluded that by this was meant the structural feature which distinguished the end products according to the application from the products of the nearest prior art. To follow this line of argument meant that in the present case the grouping R2 R1 N R3 N O- would be the essential structural element, which had to be identical in both end product and intermediate. The requirement of congruence, i.e. fully corresponding scope in the essential structural part, was not satisfied in the application. Claim 2 would have to be left aside when assessing unity of invention, as it was not the broadest claim. In a statement received on 5 December 1986 the appellant lodged an appeal against the decision of the Examining Division, at the same time paying the prescribed fee and filing a Statement of Grounds. The appellant submitted, inter alia, that there were no provisions in the EPC that prevented end products being claimed together with intermediates where their scope was not congruent. According to EPO case law intermediate and end products and their use formed a general inventive concept and could be claimed in one application. The applicant must be at liberty to claim low- molecular end products together with a specific group of intermediates even if the area surrounding the invention was not fully covered thereby. In the present invention the general inventive concept consisted in the provision of pyrazole-substituted phosphoric acid esters with insecticidal activity and, to the extent necessary, requisite intermediates. Contrary to the Examining Division's view the structural element common to all the active substances and claimed intermediates was solely the radical: N O- It must be allowable to have a sub-claim directed to phosphoric acid esters which are substituted in the pyrazole part and also a claim directed to intermediates suitable only for the preparation of end products claimed in such a sub-claim. The appellant requests that the decision to refuse the application be set aside and that a patent be granted on the basis of the application documents submitted.
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 claims on formal grounds. Claims 1 and 3 to 9 go back to original Claims 2, 1 and 3 to 8; Claim 2 finds support in the original documents on page 10.
3. The invention according to the application in suit relates to low-molecular intermediate and end products. The Examining Division refused the application under Article 82 EPC because Claim 3 directed to the intermediates and Claim 1 directed to the end products were not of fully corresponding scope and the subject-matter of the application therefore lacked unity.
4. Another Board has already stated its position on the question of unity of inventions relating to intermediate and end products and has affirmed that in principle there is unity where several groups of low-molecular intermediates and a group of low- molecular end products are involved, if the groups of intermediates prepared and oriented towards the end products are technically closely interconnected with the latter by the incorporation of an essential structural element into them and if the regulatory function of Article 82 EPC is taken into due account (T 110/82, "Benzyl esters", OJ EPO 1983, 274). The foregoing case was concerned with providing insecticidally active benzyl esters (end products) which can be subsumed under the simplified formula B-CHR2-ester (R2 = hydrogen, cyano, C1-C4- alkyl, ethynyl) and with providing intermediates from the group of benzyl alcohols (B-CHR2-OH), benzyl chlorides (B-CHR2-Hal), benzaldehydes (B-CHO) and benzylamines (B-CH2-NH2). The various intermediates are characterised by the benzylidene grouping B-CH =, which is incorporated as an essential structural element into the end products.
5. In contrast, the present intermediate - end product invention just seeks protection for another group of intermediates, namely halogenated 1-hydroxy-pyrazoles which are straightforwardly summarised in formula I of Claim 3; the substituents R1, R2 and R3 stand for hydrogen, chlorine, bromine or iodine but not simultaneously hydrogen. There can be no objection to the disclaimer-type exclusion of 1- hydroxy-pyrazole, which is obviously already known; such a limitation could equally well have been made voluntarily from the outset for other, e.g. internal company, reasons. These intermediates give access to the desired pyrazolyl-1- phosphoric acid esters of formula II, which are of interest as active substances; in addition to their above meanings, substituents R1 to R3 can also stand for hydrogen in that formula. The transition from intermediates to end products takes place without problem in a single-stage reaction. There is no doubt that the intermediates according to the application are made available only with a view to obtaining the end products, and that there is a sufficiently close technical relation between the two subject-matters; this emerges from the fact that the pyrazolyl-1-oxy radicals (i) reappear unchanged in the corresponding end products. As all representatives of the group of intermediates are clearly traceable back to the 1-oxy- pyrazole nucleus there is no need specially to establish an essential structural element common to them. It does, however, become important to do this when, as shown in point 4 above, several groups of intermediates in the area close to the end products are claimed and in accordance with the regulatory purpose of Article 82 EPC what matters is that only those groups are combined which show at least a minimum degree of common structural identity and hence can be considered as structural elements for incorporation into the end products. The intention is to avoid an application containing excessively heterogeneous subject-matter.
5.1 The circumstance that Claim 3 is more narrowly drawn, as regards the material scope of its substituents, than Claim 1 was seen by the Examining Division as an obstacle standing in the way of the unity of the subject-matter of the application. It considered a general inventive concept, in the sense of Article 82 EPC, to be formed only if the essential structural element - i.e. the pyrazolyl-1-oxy radical of end product II - was identical in both end product and intermediate ("identical scope" principle; decision dated 14 November 1986 to refuse the application, pp. 4c and 7, line 15).
5.2 The Board is unable to concur with this view. The question of whether, in order to satisfy the requirement of unity, the scope of intermediate- and end-product claims must in principle be congruent has already been answered by the decision in the benzyl esters case. If the benzylamines specified as a group of intermediates in point 4 above are taken as the starting point and the formula for them (B-CH2-NH2) is compared with the formula for the benzyl ester end products (B-CHR2-ester) it can be seen that the only end products obtainable from the said starting compounds are those where R2 stands for hydrogen. End products substituted by R2 = cyano, C1-C4-alkyl or ethynyl cannot be obtained by this route. The fact that in the case of the selected pair of substances the scope of the claim to the intermediate was not congruent with, but - as in the case of the application in suit - narrower than that of the end-product claim, did not give rise to an objection of lack of unity when it came to final-instance examination of that application. From this it is clear that the "identical scope" principle on which the Examining Division relied is not in actual fact relevant for the purpose of clarifying whether the invention has unity. In its decision to refuse the application the Examining Division neither goes into this nor explains why, in contrast to the previous case, the appellant needed to be asked to submit intermediate- and end-product claims of exactly corresponding scope. The Board therefore sees no reason to differ in its judgement of the present case from the finding in the benzyl esters case.
5.3 In the final analysis, if the requirement of the Examining Division were to be complied with, either the salient pyrazolyl- 1-phosphoric acid esters of Claim 1 derived from (unsubstituted) 1-hydroxy-pyrazole and not covered by the intermediate-product claim would have to be surrendered, which would be unreasonable, or this part would have to be pursued further in a separate application, which would amount to needless sub-division of technically interconnected matter and be incompatible with the regulatory purpose of Article 82 EPC. There is, on the other hand, no risk that the procedure up to grant will be upset if Claim 1 is retained in full in addition to Claim 3, a fact moreover not denied by the Examining Division.
5.4 The finding therefore stands that an invention relating to a group of low-molecular intermediates and to a group of low- molecular end products where the claim to the intermediates is narrower in scope than the end-product claim, does indeed exhibit unity if - as here - the two subject-matters are technically closely related (single-stage transfer of a structural element) and are linked to form a single general inventive concept by the intermediates' being oriented towards the end products (further to the "Benzyl esters" decision, loc. cit.; T 57/82, "Copolycarbonates", OJ EPO 1982, 306). The Board has moreover no misgivings about the further processing, in the present application, of Claims 1 and 3 with the remaining claims in the same or another category relating back to Claim 1 (Rules 29(2) and 30 EPC).
5.5 This does not mean that there may not also be intermediate- and end-product claims of exactly corresponding scope, in other words where for every intermediate and end product there is a corresponding counterpart. Examples of this type are to be found in both the benzyl esters application (e.g. B-CHR2-OH) and the cyclopropane application that likewise relates to a low-molecular intermediate/end product invention (cf. T 65/82, "Cyclopropane", OJ EPO 1983, 327). To the extent that the Examining Division's views reflected in its interpretation of what constitutes an "essential structural element" can be traced back to the cyclopropane decision and have led it to interpret this as meaning the structural feature that distinguishes the end products claimed in the application from the products described in the closest prior art, they leave out of account the fact that the cyclopropane decision is concerned primarily with establishing criteria of relevance, insofar as intermediates are concerned, in deciding whether there has been inventive step, and not with the question of unity that alone is of interest here (cf. point 13). The facts established there are to be seen as the result of an examination under Article 56 EPC that took into account the prior art close to the intermediates and end products. They cannot therefore be used to interpret the above-mentioned concept, which was coined in another context, nor be construed to mean that the essential structural element had as ageneral rule to be oriented towards the end product or, in the present case, had to be identical to the pyrazolyl-1-oxy radical of ester II.
6. From the foregoing it follows that the decision under appeal is not adequately supported by the grounds it contains for refusal. The patent sought cannot be granted because the Examining Division has not so far examined whether the other patentability requirements are met. It cannot be ruled out that in the course of such examination the question of whether or not the subject- matter of the application has unity will again arise.
ORDER
For these reasons, it is decided that:
1. The decision of the Examining Division of the European Patent Office dated 14 November 1986 is set aside.
2. The case is remitted to the first instance for further substantive examination on the basis of the present claims.