1 Warning for Dealing With First First

7/28/2019 1 Warning for Dealing With First First

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1. The examination of the present case has been carried out on the set of 20 claims andpages 1,7,8 of the description filed with a letter dated 02.07.2012 and the rest ofdocuments originally filed.

2. CLARITY (ARTICLE 84 EPC)

2.1 The wording of independent claim 1 is drafted in terms of desired results to beachieved (see the terms "process for producing a gasoline boiling range product from amixed light olefin feed"; the terms "in the vapor phase" and respectively the terms "toform a gasoline boiling range product containing alkylaromatics") without including allprocess features allowing the skilled person to obtain it. In fact, the name of the feedstock,the name of both catalysts, the operational technical features (temperature, pressure,WHSV, Catalyst/feedstock ratio, etc. ) of the claimed process must be introduced into thewording of the independent claim 1 for the sake of clarity of Rule 43(2) and Article 84 EPC.

The subject-matter of claim 1 having no reference whatsoever to operational features (T, P)

allowing to perform the claimed process in the vapor phase, this feature is merely a desired resultto be achieved. The wording of the claim 1 encompasses also T and P conditions (see dependent

claim 13 T=90C; P=7000 kPag) at which benzene is inevitably in liquid phase.

2.2 The skilled person is confronted with the doubt to know which technical features areencompassed by the claimed subject-matter and which other are excluded there from andthe wordings of the claims need to contain the required technical features according to thecase law of the EPO (see case Law Edition 2009; page 248,last paragraph) them to meetthe requirements of clarity of Article 84 EPC.

2.3 Were the applicants not in a position to file a set of claims based only on the general part of

the description (or containing all technical features in a particular embodiment) and the claims

originally filed which meets the requirements of Article 84 EPC the application in its entirety

must be rejected according to the dispositions of Article 97(2) EPC.

2.4 The attention of the applicant is drawn to the fact that only once the aboveobjection of lack of clarity would have been satisfactorily overcome, the analysis ofthe next point is to be started with. Failure to do as requested above will result in arefusal of the application in its entirety and the process will not continue.

3. NOVELTY(ARTICLE 54 EPC)

3.1 The attention of the Applicant is drawn to the fact that only technical featuresexplicitly present in the wording of the broadest independent claim 1 areconsidered for the analysis of novelty and inventive step of the claimed subject-matter.

D1 (see claims 8 and 10; examples 7 and 8; see [0025],[0026] and [0036]) discloses a process

wherein low molecular weight alkene (ethylene propylene are explicitly used) are used for

alkylation of aromatic feedstocks (benzene explicitly cited ) on MCM-22 and ZSM-5 catalyst at

operational conditions (see claim 11) which are prejudicial for at least the novelty of claims 1-20presently on file.


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D2 (see [0009] , [0011], [0015], [0033], [0038], [0040] and claim 7 ) discloses an ethylene

alkylation of benzene on a mixture of delayered MMW catalyst in combination with MCM-22 and

ZSM-5 at operational conditions (see claim 7) , which is prejudicial for at least the novelty of

present claims 1-20.

3.2 The applicants arguments are based on a desired result to be achieved (see page 2 novelty topage 3, line 23 of letter dated 02.07.2012) for which no corresponding operational technical

features are present in the wordings of the independent claim 1.

3.3 In the absence of at least one differentiating technical feature present in the wording of

independent claim 1 as well as in the wording of each of claims 1-20, the above disclosure of D1-

D2, the novelty of the claimed subject-matter (claims 1-20) cannot be acknowledged (Article 54

EPC).

In the absence of at least one differentiating technical feature in the wording of theindependent claim 1 in view of D1, the application in its entirety must be refused on

grounds of compliance with the requirements of novelty of Article 54 EPCaccording to the dispositions of Article 97(2) EPC.

3.4 The attention of the applicant is drawn again to the fact that only once the above objection of

lack of novelty in view of D1, D2 would have been satisfactorily overcome, the analysis of the

next point is to be started with. Failure to do as requested above will result in a refusal of the

application in its entirety and the process will not continue.

4. INVENTIVE STEP (ARTICLE 56 EPC)

4.1 The analysis of inventive step before the EPO must follow the problem solutionapproach of the guidelines (C-IV,11.5 and ff) which requires that the evidence be providedthat a technical problem has effectively been solved in a non obvious way as theconsequence of a differentiating technical feature present in the wording of all independentclaims.

In particular, the attention of the applicants is drawn to the fact that "Features whichcannot be seen to make any contribution, either independently or in combination with otherfeatures, to the technical character of an invention are not relevant for assessing inventive

step" (see C-IV, 11.5.2 second paragraph) and respectively to the fact that "A technicalproblem may be regarded as being solved only if it is credible that substantially all claimedembodiments exhibit the technical effects upon which the invention is based" (see C-IV,11.5.2, 7th paragraph).

4.2 Due to the above objection of lack of novelty no analysis of inventive step can beperformed.

4.3 It seems that neither the technical features of the dependent claims nor any additional

feature present in the application documents originally filed would be of interest onceincorporated into the wording of independent claim 1, for solving a technical problem


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(truly comparative examples wherein only differentiating technical features of theclaimed subject-matter are present are missing) in a non obvious way in view of D1,D2 the rest of documents of the search report and the normal knowledge of the skilledperson.

4.4 The Applicants arguments (see letter dated 02.07.2012; page 3, inventive step to page5, line 12) cannot help to overcome the above objection of lack of inventive step since theyare based on technical features which do not form part of the claimed subject-matterallowing T=90C or even less since no present in the wording of claim 1 which incombination with P=7000kPa or higher since no present in the wording of independentclaim 1, rather on desired results to be achieved (vapor phase).

In any case none of the purportedly obtained effects indicated at page 3, inventive step topage 5, line 12 of the letter dated 02.07.2012 are directly derivable from any vapor phasereaction (comparative examples showing it are missing) and would be not obtainable bythe liquid phase process. On the contrary liquid and vapor phase processes obtain similar

results and the skilled person can use one or the other at is convenience without implyingfor that any kind of inventive step rather an obvious modification of the prior art devoid ofinventive height.

4.5 In the absence of at least one differentiating technical feature present in the wording ofthe independent process claim, which could be considered responsible for the solution in anon obvious way of technical problem posed in the application documents originally filed,in view of D1,D2 (eventually the rest of documents cited in the search report and thenormal knowledge of the skilled person) the inventive step of the claimed subject-matter(process of claim 1) cannot be acknowledged (Guidelines C-IV, 11.5ff and Article 56 EPC)and the application in its entirety must be rejected according to the dispositions of Article97(2) EPC.

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1 Warning for Dealing With First First