1112 the GRAND Mother of All b10 123,84 WITH 248 of Epo Case Law

7/29/2019 1112 the GRAND Mother of All b10 123,84 WITH 248 of Epo Case Law

1/7

1. The examination of the present case has been carried out on the set of 11 claims

filed with a letter dated 19.02.2007 and the rest of documents originally filed.

2. ARTICLE 123(2) EPC

The introduction of the terms "wherein the sulfonic acid group-containing

carbonaceous material does not show a G-peak which appears near 1580

cm-1 and a D-peak which appears near 1400 cm-1 in Raman

spectroscopy" into the wording of independent claim 1 renders the

claimed subject-matter in breach with the requirements of Article 123(2)

EPC since the cited terms are not supported anywhere in the application

documents originally filed. In fact, the purported support place at

paragraph [0037] of the application documents originally filed referred to

by the applicants (see letter dated 15.12.2011, page 1 , lines 1-10) merely

refers to the fact that "a clear Raman spectrum is not obtained, and the

degree of carbonization cannot be confirmed by this index" (paragraph[0037], lines 13-15 rather than to the fact that the above peaks are not

present as a technical feature of the claimed product.

The wording of independent claim 8 therefore contains technical

features not disclosed in the documents originally filed and is in breach

with the requirements of support of Article 123(2) EPC. For this reason

the application in its entirety must be rejected according to the

dispositions of Article 97(2) EPC.

1. The examination of the present application has been carried out on the set of 8

claims electronically filed with a letter dated 07.07.2012 .

2. ARTICLE 123(2) EPC

2.1 The attention of the Applicants is drawn to the fact that the originally filed

subject-matter of independent claim 1 concerned two options:

2.1.1) (a) providing MMO ; (b) mixing MMO with water heating mixture to

T>=60C to modifiedMMO; (c) calcining modifiedMMO.

2.1.2) (a) providing MMO;(b) mixing MMO with 3% Metal aq.sol. to modified

MMO; (c) calcining modifiedMMO.

The above subject-matter was a truly copy of the statement of the invention present at

originally filed page 1, line 16 to page 2, line 2 and respectively at page 2, line 8 to

page 3, line 5 of the originally filed description.


2/7

The description originally filed contains starting from page 3, line 6 onwards until

page 6, line 29, various aspects of the calcination step of the modified MMO.

At page 6, lines 30-32 the originally filed description contains a reference to an

optional process step of treating the calcined modified MMO or the original MMO

with a solution of an acid, the details of which are explicitly cited at page 6, line 32 topage 7, line 15. Treatments concerning treatment with water + grinding+acid

treatment are disclosed at page 7, lines 16-20. Taking into account that step (b) of

both options (2.1.1 and 2.1.2) provides a modified MMO and that step (c) gives as a

result a calcined modified MMO, the only possible original MMO must be inevitably

the one provided under step (a) of claim 1. Consequently, page 6, lines 30-32 only

supports the step of mixing an acid solution with the original MMO of step a into a

slurry or the step of mixing an acid solution with the calcined modified MMO of step

(c) into a slurry but not the modified MMO of step (b) presently claimed at lines 18-

19 of independent claim 1 (="and (ii) forming a slurry containing an acid solution and

mixed metal oxide or the modified mixed metal oxide") which therefore renders the

claimed subject-matter in breach with the requirements of support of Article 123(2)EPC.

2.2 Were the Applicants not in a position to overcome the above objection the

application in its entirety must be rejected on grounds of lack of compliance with

the requirements of Article 123(2) EPC according to the dispositions of Article

97(2) EPC.

2.3 The attention of the Applicants is drawn to the fact that only once the above

objection of lack of support 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.

3. CLARITY (ARTICLE 84 EPC)

3.1 The attention of the Applicants is drawn to the fact that any further discussion

concerning novelty and inventive step, needs beforehand precise definition of the

extent of the claimed subject-matter presently in the wording of independent claim 1.

Only fully supported subject-matter is considered for the analysis of clarity of the

claimed subject-matter. The introduction of the fully supported terms referred to

above under point 2.1 makes that the valid subject-matter on file contains two options

obtained adding the steps of acid treating + heating + cooling + filtering to theoriginally present in the wording of claim 1 referred to under points 2.1.1 and 2.1.2

above resulting as follows:

3.1.1) (a) providing MMO ;a1 mixing with acid, a2 heating, a3 cooling, a4 filtering;

(b) mixing MMO with water heating mixture to T>=60C to modified MMO; (c)

calcining modifiedMMO.

3.1.2) (a) providing MMO; a1 mixing with acid, a2 heating, a3 cooling, a4 filtering;

(b) mixing MMO with aq. sol. containing up to 3% (??? w is not in the wording of

claim 1) Metal already present in MMO to modifiedMMO; (c) calcining modified

MMO.


3/7

3.2 The attention of the Applicants is drawn to the fact that the claimed subject-matter

above does not meet the requirements of Rule 43(2) EPC and respectively these of

Article 84 EPC since it does not contain all technical features essential for the claimed

subject-matter to be carried out. In fact, neither the name of the acid to be used

under step a1, nor its amount, nor its concentration are present in the wording of the

claim. In the same way, neither the temperature nor the time of the heating andcooling steps a2 and a3 nor the calcination temperature, time, atmosphere of step

(c) presently in the wording of independent claim 1 are disclosed therein.

3.3 The attention of the Applicants is hereby drawn to the fact that nowhere an

example containing any of the steps a1 mixing with acid, a2 heating a3 cooling a4

filtering before the step (b) mixing MMO with up to 3%w(??? term w. not in claim

1)metal aq.sol. is disclosed anywhere in the examples (see examples 1-9 all

concerning merely step b addition of Nb between step (a) and step (c)).

At best, example 10; examples 11,12 concerning the addition of Nb and Te; examples

14, 15 concerning the addition of Nb; example 16 the addition of Mo; example 17 theaddition of V; and any of examples 18-20, 22-28, 30 and 31 concerning the addition

of other metals according to step b) i.e. before step c, whereas they contain a

reference to the above steps a1 acid treating, a2 heating, a3 cooling and a4 filtering

after calcination step (c) of independent claim 1.

3.4 The skilled person is confronted with the problem to know which technical

features are encompassed by the claimed subject-matter and which other are excluded

there from and the wordings of the claims need to contain the required technical

features according to the case law of the EPO (see case Law Edition 2009; page

248,last paragraph) them to meet the requirements of clarity of Article 84 EPC.

3.5 The process independent claim 1 not containing all technical features essential

for the claimed subject-matter to be carried out, the application in its entirety must be

refused according to the dispositions of Article 97(2) since it is in breach with the

requirements of Rule 43(2) and Article 84 EPC.

3.6 The attention of the Applicants is drawn to the fact that only once the above

objections of lack of clarity 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. NOVELTY (ARTICLE 54 EPC)

4.1 Comparative example 2 of D1 discloses a process wherein:

(a) calcined MMO of comparative example 1 is in comparative example 2:

(a1) mixed with oxalic acid and water, and

(a2) heated at 75C for six hours,

(a3) cooled at 25C,


4/7

(a4) solids collected vacuum filtration and dried in vacuum overnight,

(b) not disclosed therein.

(c) heated in argon 600C for two hours which is a calcination step according to page

5, lines 18-32 of the applications description.

4.1.1 The novelty of the claimed option (1) of the wording of independent claim 1

referred to under 3.1.1 above) (a) providing MMO ;a1 mixing with acid, a2

heating, a3 cooling, a4 filtering; (b) mixing MMO with water heating mixture to

T>=60C to modifiedMMO; (c) calcining modifiedMMO, has been established by

the introduction of the steps a1 to a4 which gives as a result:

a differentiating technical feature option 1: (step b) consisting in a water treatment

at temperatures of >=60C, reason on which the novelty(Article 54 EPC) of the

claimed subject-matter (option 1 of claim 1) must be at least formally acknowledged

in view of D1.

4.1.2 The novelty of the claimed option (2) of the wording of independent claim 1

referred to under 3.1.2 above) (a) providing MMO ;a1 mixing with acid, a2

heating, a3 cooling, a4 filtering; (b) mixing MMO with aq. sol. of containing up to

3%(???? w is not in the wording of independent claim 1) metal already present in

MMO to modifiedMMO; (c) calcining modifiedMMO, has been established by theintroduction of the steps a1 to a4 which gives as a result:

a differentiating technical feature option 2: (step b) consisting in the addition step

of up to 3% (??? w is not in the wording of claim 1) metal already present in MMO,

reason on which the novelty(Article 54 EPC) of the claimed subject-matter (option 2

of claim 1) must be at least formally acknowledged in view of D1.

4.2 The introduction of the steps a1-a4 into the wording of independent claim 1

establishes novelty of the claimed subject-matter in view of each of D2 and D3 (see

point 2.1 wherein no acid washing is present): The novelty of claim 1 is also

acknowledged (Article 54 EPC ) in view of each of D2 and D3.

5. INVENTIVE STEP (ARTICLE 56 EPC)

5.1.1 OPTION 1:

The application documents does not contain any(truly comparative examples

concerning only the differentiating technical feature are missing) and the

Applicants failed to provide (see letter dated 07.07.2011; page 2, Inventive step, lines

1-7) any evidence showing that the differentiating technical feature presently in thewording of independent claim 1 (option 1) in view of D1 referred to under point 4.1


5/7

above, would be of any help for solving a technical problem in view of D1 in a non

obvious way.

5.1.2 OPTION 2:

The application documents does not contain any evidence showing a process forproduction a catalyst wherein the total content of a metal X forming part of the MMO

is added in two steps X1 at step a) and X2 at step b) which would be able to solve a

technical problem not previously solved by a process wherein the addition of the

metal X=X1+X2 is provided in the first step a).

It is evident that catalyst containing different amounts of metals X(see example 1

compared to comparative example 1 WHICH OBVIOUSLY must show different

results), this is nevertheless any surprising effect and it cannot be based on the only

differentiating technical feature of the claimed subject-matter (TWO STEPS FOR

ADDING ONE FIXED AMOUNT OF A METAL COMPARED TO ONLY ONE

STEP FOR ADDING IT) in view of D1. This argument can by no means constitutethe basis for any argument concerning inventive step following the approach problem

solution of the guidelines C-IV, 11.5ff and Article 56 EPC.

5.2 The Applicants arguments (SEE LETTER DATED 07.07.2011; PAGE 2,

INVENTIVE STEP, LINES 1-10) are by no means based on any technical feature

present in the wording of the independent claim and do not follow therefore the

problem solution approach of the guidelines C-IV, 11.5ff contrary to the requirements

of the examining division expressed under point 3. of the second official

communication dated 10.03.2011.

5.3 In the absence of at least the evidence that one differentiating technical

feature present in the wording of the independent claim (for each one of the two

options if still to be present as subject-matter in the wording of independent

claim 1 on file) in view of D1 which have been effectively shown to be responsible

for the solution of a technical problem in a non obvious way over the closest

prior art document D1, the inventive step of the claimed subject-matter cannot

be acknowledged (problem solution approach of the Guidelines C-IV, 11.5 and

following) and the application in its entirety must be refused on grounds of lack

of inventive step (Article 56 EPC) according to the dispositions of Article 97(2)

EPC.

3. NOVELTY (ARTICLE 54 EPC)

The attention of the Applicants is drawn to the fact the in the absence of any

operational feature (P,T, C/feedstock, Hydrogen/feedstock, WHSV, etc.) in the

wording of step c) of claim 1 presently on file, the terms catalytic dewaxing cannot

constitute per se a differentiating technical feature in view of any catalytic process

converting only one molecule of the feedstock (wax), such as D1 and D2.

3.1.1 The novelty objection in view of D1 raised under point 2.2 of the second

official communication dated 06.10.2010 is hereby maintained since D1 (see

examples 1-3; claims 1-10) contains all technical features (in particular contacting


6/7

different FT feedstock with catalysts produce wax reactions) presently in the wording

of independent claim1 .

The attention of the Applicants is drawn to the fact that example 3 of D1 explicitly

refers to catalytic dewaxing on Pt-ZSM-23 and that inevitably different base oils are

obtained therein (see claim 10 in combination with claim 1 concerning base oilsproduction). The Applicants arguments concerning the purported not disclosure of

production of (different) base oils in D1 (see letter dated 15.06.2011; page 2,lines 24-

27) cannot be therefore the base on which the objection of lack of novelty could be

overcome.

The Applicants arguments (see letter dated 15.06.2011; page 1, Novelty to page 2,

line 27) concerning the obtained (desired product) which does not constitute

operational technical features of the claimed process, cannot help to overcome the

objection of lack of novelty in view of D1.

3.1.2 In any case, even though it does not affect the question of novelty since it doesnot concern operational features but merely results to be achieved, the attention of

the Applicants is drawn to the fact that also D1 discloses that working under different

dewaxing operational conditions different base oils with different kinematic viscosity

(see example 1, V= 4.95 cSt @100C; example 2, V=4.86 cSt@ 100C; example 3,

V=4.96C) can be produced. This fact confirms the relevance of D1 for the novelty of

the desired results included within the wording of claim 1 presently on file.

3.2 Novelty in view of D2

D2 discloses (see col. 3, line 37 to col. 4, line 14 and col. 9, lines 39-45) a process

wherein three different distilled sidecuts streams having HVI 80-100 (or 80-150), HVI

250-300 and HVI 500-600 base oil precursors are treated under undefined catalytic

hydrodewaxing conditions in order to obtain under undefined operational conditions

(see claim 1) and at least two parallel effluent streams of refinery dewaxed base oils

from said reaction zones.

The claimed subject-matter (present claim 1) does formally meet the requirements of

novelty of Article 53 EPC in view of D1 since it (D1) does not explicitly disclose a

distilled FT feedstock containing >70% wt of paraffins rather refinery derivated

raffinate lubricating base oil precursor as feedstock of the catalytic hydrodewaxing

process.

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

independent claim 1 in view of D1 the application in its entirety must be refused

(Article 97(2) EPC) on grounds of lack novelty (Article 54 EPC).

The attention of the Applicants is drawn again to the fact that only once the above

objections of lack of novelty 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)


7/7

4.1 The objection of lack of inventive step raised in view of D1 taken alone under

points 3.1 and 3.2 of the second official communication dated 06.12.2010 is hereby

maintained since the above objection of lack of novelty is an obstacle to the

inventive step of the claimed subject-matter which cannot be sustained due to the

absence of a differentiating technical feature in the wording of independent claim 1

presently on file.

4.2 The applicants arguments (see letter dated 15.06.2012; page 2, inventive step to

page 3, last line) do not provide the evidence that a differentiating technical feature

present in the wording of the independent claim (not possible since lack of novelty in

view of D1) is responsible for the solution of technical problem posed (D1 contains

the same technical features and solve INEVITABLY the same problem) indicated at

page 3, lines 1-3 of the letter dated 15.06.2011 ="formation of two or more high

quality base oils having different viscosities; "in step c) no higher boiling compounds

need to be removed." energy consuming distillation step can be omitted") in a non

obvious way in view of D1, contrary to the requirements of problem solution

approach of the guidelines C-IV,11.5 ff, and cannot therefore be of any use in order toovercome the objection of lack of inventive step originally raised.

4.3 D2 can be eventually of help as representative of the normal knowledge of the

skilled person indicating that different base oils can be obtained from different

feedstock fractions by using different catalytic cracking processes, for the analysis of

inventive step of the claimed subject-matter in view of D1 or even taken alone as

closest prior art.

4.4 For the reason explicitly cited above (IN THE ABSENCE OF AT LEAST A

DIFFERENTIATING TECHNICAL FEATURE WHICH SOLVES A

TECHNICAL PROBLEM IN VIEW OF D1 OR D2 AS CLOSEST PRIOR ART

IN A NON OBVIOUS WAY ACCORDING TO THE GUIDELINES C-

IV,11.5ff), the examining division is of the opinion the claimed subject-matter

(independent claim 1) cannot constitute the basis for any kind of inventive step

argument, since the desired results to be achieved are known by the skilled

person having knowledge of D1 and D2. Consequently, the application in its

entirety must be refused on grounds of lack of inventive step (Article 56 EPC)

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

Documents

1112 the GRAND Mother of All b10 123,84 WITH 248 of Epo Case Law