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In Re Item VIII
1. The wordings of independent claims 1, 7 do not meet the
requirements of clarity of
article 6 PCT for the following reasons:
1.1 The wording of independent claim 1 does not contain all
technical features essentialfor the invention to be carried out
since it does not includes a reference to the high
pressure of 6-8 atm referred to in the description (see page 3,
lines 6-9; see page 4, lines
10-12) as being essential for carrying out the claimed
hydrolysis process at 150-175C.
The explicit pressure values 6 to 8 atm (equivalent MPa units
should be added) must be
introduced into the wording of independent claim 1 for the sake
of clarity or Article 6
PCT.
1.2. The presence of two independent claims (see claims 1, 7)
each of them containing
technical features completely different from each other does not
allow third parties to
know which of the features are essential for the invention to be
carried out and which
other are merely optional features of the claimed
subject-matter.
In fact, the presence of only two exchangers under steps (a) and
(b) concerning
temperature limits (
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D1 (see figures 1 and 2, items WA-1, WA-3; 10; B1; WA-2 )
discloses an installation
comprising two heat exchangers followed by a hydrolysis device
connected to a cooling
heat exchanger.
The wording of independent claim 7 presently on file differs
from the system disclosed
in D1 merely due to the presence of the formal technical feature
that the exchangers (ii)and (iv) in the wording of independent
claim 7 are named as being scraped surface
heat exchangers (DIFFERENTIATING TECHNICAL FEATURE OF THE
CLAIMED
SYSTEM) whereas the equivalent heat exchangers WA-2, WA-3 have
not such a
definition (not explicitly cited as being scraped surface heat
exchangers) in D1.
2.2 PROCESS CLAIMS 1 TO 6
D1 discloses a process wherein a biomass stream (see col. 3,
line 43=una proporcion
de biomasa de 1700 kg de SSO/h) is preheated to a temperature of
80C (see col. 3,lines 58 to 64) and thereafter brought to a
temperature of 180C (see col. 4, lines 24-
28) and a degree of hydrolysis of 65% is obtained (see col. 4,
lines 33-40). A cooling
step followed by an expansion follows the above reaction process
(see col. 4, lines 51-
58). The claimed subject-matter (process) differs from the
disclosure of D1 due to the
hydrolysing temperature being claimed in the range of
150-175C
(DIFFERENTIATING TECHNICAL FEATURE OF THE CLAIMED PROCESS)
instead of being 180C-250C (see col. 3, lines 10-11) as
explicitly cited in D1.
3. INVENTIVE STEP (ARTICLE 33(3) PCT)
The claimed subject-matters do not meet the requirements of
inventive step of Article
33(3) for the following reasons:
3.1 INSTALLATION CLAIMS 7-15
The above differentiating technical feature (see point 2.1) i.e.
the presence of a heat
exchanger being a scraped surface (heat exchanger) instead of
being merely a heatexchanger explicitly disclosed in D1 does not
solve any technical problem which could
not have been previously solved by the normal heat exchangers of
D1. In fact, the
application documents originally filed does not contain any
comparative example
showing that a scraped surface heat exchanger could have solved
any problem not
being solved by a non scrapped surface heat exchanger. None of
the additional
technical features of dependent claims 8-15 have been shown as
being responsible for
the solution of any technical problem not solved by the
equivalent technical features of
D1.
3.2 PROCESS CLAIMS 1-6
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3.2.1 The above differentiating technical feature (see point
2.2) i.e. the presence of a
hydrolysis step at 150-175C instead of being performed at
180C-250C explicitly
disclosed in D1 does not solve any technical problem which could
not have been
previously solved by the features explicitly cited in D1. In
fact, the application
documents originally filed does not contain any comparative
example showing that
hydrolysis at 150-175C could have solved any problem not being
solved by ahydrolysis process at 180C-250C explicitly disclosed in
D1.
3.2.2 The skilled person is able to reduce the exchangers duty
of D1 producing
temperatures of for instance 180Cand arrive to the claimed
subject-matter requiring
temperatures offor instance 175C as an exercise of normal
technical knowledge
which does not imply any kind of inventive step rather an
obvious amendment of the
state of the art.
In fact, hydrolysis and their results at temperatures other
(130-180C) than thesedisclosed in D1 (180-250C) are well known by
the skilled person, for instance from
D2=ES-A-2 228 530 (see col. 3, lines 40-41= La temperatura del
reactor 7 se puede
variar entre 130 y 180C) and these very particular hydrolysis
temperature ranges
(130-180C) of D2 as well as that of D1 (180-250C) can be used
without implying
inventive skill whatsoever.
3.2.3 None of the additional technical features of dependent
claims 2-6 have been
shown as being responsible for the solution of any technical
problem not solved by the
equivalent technical features of D1 (eventually D2).
3.3 In the absence of at least one differentiating technical
feature present in the wording
of both independent claims on file which could have been shown
as being responsible
for the effective solution of a technical problem (comparative
examples are missing) in
a non obvious way in view of D1, D2 (any other of the documents
of the prior art cited
in the search report and the normal knowledge of the skilled
person can be used as
auxiliary documents for the analysis of the inventive step), the
claimed subject-matter is
considered an obvious modification therefrom and cannot be
considered inventive
(Article 33(3) PCT).
