T 2019/09 – Not Suitable

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse its application.

Claims 4 and 5 of the main request before the Board read (in English translation):

4. A radiation-curable 1,3,5-triazine carbamate or 1,3,5-triazine urea obtainable by reacting a compound of formula (IV)

in which R4, R5 and R6 each independently of one another can be C1-C4 alkyl

or by reacting 2,4,6-triisocyanato-1,3,5-triazine with a compound containing a hydroxyl or amino group and at least one vinyl, methacryloyl or acryloyl group.

5. A radiation-curable 1,3,5-triazine carbamate or urea according to claim 4, characterised in that the compound containing a hydroxyl or amino group and at least one vinyl, methacryloyl or acryloyl group is selected from the group consisting of polyether (meth)acrylates, polyesterol (meth)acrylates, urethane (meth)acrylates and epoxy (meth)acrylates.

The Board found the request to comply with A 123(2) and then examined its clarity.

The applicant pointed out that it was not possible to draft the subject-matter of claims 4 and 5 more clearly because it generally referred to the reaction products (Umsetzungsprodukte). The disclosure comprised a great number of products which could not be summarised in one generic formula.

*** Translation of the German original ***

[2] The compounds claimed in claims 4 and 5 are not defined by reproducible physical or chemical parameters – such as for example their chemical structure – but by the process for their preparation.

[2.1] According to the case law of the Boards of appeal (see T 150/82 [10]), such a definition is admissible only if the compounds themselves fulfil the requirements for patentability and there is no other reproducible parameter available in the application which would allow to characterise those compounds.

The description of the present application discloses that the compounds of formula (VI) and/or (V) as wells as the compounds of formula (I) to (III) are obtainable via the process described in claim 4 […]. Therefore, the claimed compounds of claims 4 and 5 can be defined by their structure. The formulation of claims 4 and 5, i.e. compounds which are characterised by the process for their preparation, is not appropriate in the present case.

[2.1.1] The Board does not find the [applicant’s] argument persuasive. The reaction of a 1,3,5-triazine carbamate with compounds containing a hydroxyl or amino group either results in low-molecular reaction products or possibly in polymers. In both cases the compounds that are obtained can be characterised by reproducible parameters such as structure or glass transition temperature. As a consequence, the definition of the compounds that are obtained by the process for their preparation is not appropriate in the present case.

[2.2] In view of this the Board assumes that the claims violate A 84.

The Board finally remitted the case to the ED for further prosecution, based on the auxiliary request in which the product-by-process claims were replaced by process claims.

To read the whole decision (in German), click here.

The file wrapper can be found here.