T 1665/11 (Polymer bound adsorbent / HONEYWELL) 24-01-2014

Procedural issues

1. Alleged substantial procedural violation

1.1 According to the Appellant, the finding concerning an alleged lack of inventive step contained in the decision under appeal had not been adequately reasoned.

1.2 The Board, however, notes that the Examining Division (see contested decision, point 2.2.2 of the reasons), explained why it considered document D3 instead of document D1 to represent the closest prior art, indicated the differences between the subject-matter disclosed in document D3 and claim 1 according to the main request, explained why these differences could not support the presence of inventive step and why the tests contained in the application, invoked as support for inventive step by the Applicant, could not be considered to be applicable across the whole scope of claim 1.

1.2.1 Therefore, in the Board's view, the decision under appeal contains an intelligible chain of arguments which makes it clear for which reasons the Examining Division decided to refuse the application. In any case the reasoning given is not so incomplete or deficient or erroneous as to be insufficient within the meaning of Rule 111(2) EPC, as for instance in the cases reported in the "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, III.K.4.2.3.

1.3 The Appellant did not raise any objection against the Examining Division's complementary reasoning with respect to the issue of inventive step with regard to to auxiliary requests 1 to 3, the lack of clarity identified in respect of the claims 1 according to auxiliary requests 2 and 3, or the non-compliance with the requirements of Article 123(2) EPC of claim 1 according to auxiliary requests 4 and 5 also contained in the decision under appeal (see point II above). The Board finds also that these other grounds for refusal were sufficiently reasoned in the decision under appeal.

1.4 Therefore, in the Board's judgement, the reasoning of the decision under appeal complies with the requirements of Rule 111(2) EPC.

1.5 Since the application was refused on the ground of lack of inventive step and on the other grounds mentioned above, there is no need to address the issue of whether or not the Examining Division committed a procedural violation in adding, as a ground for the refusal under Article 84 EPC, also the missing adaptation of the description to the amended claims.

1.6 As regards the further Appellant's objection submitted in the letter of 30 December 2013 that "The objection that the Decision was not adequately reasoned is not because the Decision did not incorporate the reasoning of the Summons, but that the reasoning of the summons incorporated by reference in the Decision is itself inadequate for the reasons previously provided.", the Board remarks that the decision partly repeated the reasoning contained in said communication attached to the summons but it did not actually "incorporate it by reference".

Moreover, the Applicant had explained in its letter of 6 November 2009 why the claimed subject-matter had to be considered inventive starting from any of the cited documents, including document D3.

In the following summons to attend oral proceedings of 10 November 2010 the Examining Division dealt with and rebutted the Applicant's arguments in favour of inventive step over D1 and D3.

Although the inventive step objection based on D3 as the closest prior art had not been explained in full detail before the issuance of the decision under appeal, the elements of the reasoning (D3 closest prior art, teaching of figure 4 not applicable to any polymer-bound zeolite) were already clearly indicated in the summons and concerned a document already discussed by the Applicant. That this objection, based on the mentioned elements, could be somewhat complemented in reaching the final decision at the oral proceedings that took place in the absence of the Applicant, is something that the latter could have reasonably expected.

1.7 Therefore, in the Board's judgement, the Examining division did not commit any substantial procedural violation justifying the requested remittal of the case to the Examining Division for further prosecution pursuant to Article 111(2) EPC, let alone a reimbursement of the appeal fee pursuant to Rule 103(1)a) EPC.

Main request and auxiliary requests 1 to 3

2. Lack of clarity (Article 84 EPC)

2.1 The respective claims 1 at issue all concern (emphasis added) a "method (10) for ion exchange in an adsorbent (20)" comprising a calcining step reading "calcining (42) an organic polymer-bound zeolite adsorbent by thermal treatment to yield a calcined adsorbent" (in claims 1 according to auxiliary requests 1 and 3 a zeolite is a zeolite 13X).

2.2 In reply to the objection raised by the Board in its communication dated 5 August 2013 concerning the ambiguity of the term "calcining", and hence the lack of clarity of claim 1 (see point IV supra), the Appellant submitted that the following (quoting from Wikipedia) was common general knowledge:

"Calcination (also referred to as calcining) is a thermal treatment process in presence of air or oxygen applied to ores and other solid materials to bring about a thermal decomposition, phase transition, or removal of a volatile fraction. The calcination process normally takes place at temperatures below the melting point of the product materials. Calcination is not the same process as roasting. In roasting, more complex gas-solid reactions take place between the furnace atmosphere and the solids."

Therefore, in the Appellant's view, the combustion of organic components was "not an inevitable requirement of calcining" and that "the removal of a volatile fraction is sufficient". Considering that the claim "provides an organic polymer-bound zeolite", "interpretation that the polymer is not combusted during the calcining step" was in accord with the above definition of calcination. It would thus have been clear to the skilled person that the calcining process step according to claim 1 did not bring about a combustion of the polymer and did not lead to anything other then a calcined organic polymer-bound zeolite.

2.3 For the Board, it is however evident, on the one hand, from the definition of the term "calcining" submitted by the Appellant as well as, on the other hand, from the use of this term in document D1, relating to the preparation of a zeolite adsorbent comprising a calcining step, that "calcining" may or may not imply the combustion of organic matter present. Reference is made in particular to the following passages of D1: claims 17 and 20; column 3, lines 31 to 42; column 7, lines 31 to 37 and column 8, lines 41 to 44, the latter reading (emphasis added) "The beads were calcined to convert kaolin into metakaolin. In those samples containing fibers the fibers were combusted or burned out to create cylindrical channels within the beads").

2.3.1 The ambiguity addressed above is not lifted by the remaining wording of claims 1 at issue. More particularly, the Board notes that said claims 1 are directed to a method for ion-exchange in an adsorbent resulting from the calcination of a polymer-bound adsorbent and not to a method for producing a polymer-bound adsorbent, and the other process steps referred to are of no help in identifying whether or not the adsorbent product subjected to ion-exchange according to claim 1 is still polymer-bound.

2.3.2 The description of the present application contains no specific definition of the term "calcining" either and merely suggests in two instances that the polymer binder used should be stable up to temperatures of at least 340°C (page 2, lines 15 to 16) or stable at high temperature (page 5, lines 1 to 2), which feature is, however, not reflected in the wording of claim 1. In particular, the claims 1 at issue neither mention the calcining temperature nor the type of polymer to be used.

Since different calcining temperatures can lead to different calcined products depending on the combustibility of the organic polymers used and since, moreover, the purpose of the calcining step is not further specified in the claims 1 at issue, the extent and result of the calcining step required by said claims is ambiguous and hence unclear (Article 84 EPC).

2.3.3 The Appellant's understanding of the wording of said claims 1 (calcination mandatorily non-combusting) and its conclusion based thereon that said claims are clear cannot be accepted based on the following considerations:

It is established case law that a claim cannot be considered clear within the meaning of Article 84 EPC if it comprises an unclear technical feature for which no unequivocal generally accepted meaning existed in the relevant art (see e.g. T 728/98, OJ 2001, 319, point 3.1 of the reasons) and that a claim has to be clear in itself, without there being any need for the skilled person to refer to the description (see e.g. T 1129/97, OJ 2001, 273, point 2.1.2 of the reasons).

Moreover, any argument for a narrower scope of a claim (here: allegedly mandatory non-combusting calcination) must be based on the wording of the claim, and not on the basis of something appearing only in the description, considering the possibility available to an applicant to restrict the wording of the claims by suitable amendments to better reflect the intended meaning.

2.4 Therefore, the main request and the auxiliary requests 1 to 3 are not allowable.

Notional auxiliary requests 4 and 5

3. Admissibility of notional auxiliary requests 4 and 5 into the proceedings

3.1 In its statement of the grounds of appeal the Appellant stated explicitly that the auxiliary request 4 submitted before the Examining Division was not maintained and remained silent concerning the auxiliary request 5 submitted before the Examining Division.

The Appellant did not subsequently submit written-out sets of claims to be considered as auxiliary requests 4 or 5. Neither do the Appellant's written submissions contain an indication concerning the written-out form such requests should or could have. It merely noted (letter of 30 December 2013, page 2, last paragraph) that "Article 123 objections were not provided ... in the Decision (with the exception of the Fifth Auxiliary Request").

3.2 Nevertheless, the Appellant submitted with letter of 30 December 2013, i.e. after having been summoned to oral proceedings, some amended description pages labelled (emphasis added) "ALL REQUESTS", "REQUESTS AUX 1,3,4", "REQUESTS AUX 5" "REQUEST AUX 4,5,6" (see point VI above).

3.3 In view of the Appellant's course of action, the Board was thus left to speculate

- concerning the question of whether or not auxiliary request/s 4 and/or 5 were implicitly submitted by virtue of said letter of 30 December 2013, and if yes

- concerning the respective complete set/s of claims on the basis of which the application should be granted.

3.4 Assuming, purely for the sake of argument, that the Appellant indeed submitted two requests to be considered as auxiliary request/s 4 and/or 5, the Board notes

- that these requests were filed surprisingly and at a very late stage of the proceedings, and

- that these requests are prima facie not clearly allowable since the Appellant did not unambiguously indicate the complete text (within the meaning of Article 113(2) EPC) including fully written out claims on which it requests that a patent be granted.

3.5 Consequently, even if deemed filed, the notional auxiliary requests 4 and 5 would not be admissible (Article 114(2) EPC and Articles 13(1),(3) RPBA).

Auxiliary request 6

4. Admissibility of the request into the proceedings

4.1 Auxiliary request 6 consists of amended claims and description pages and was submitted by the Appellant with letter of 30 December 2013, i.e. after having received the summons to oral proceedings but more than three weeks before the date of oral proceedings.

4.2 Article 13(1) RPBA stipulates that any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Furthermore, Article 13(3) RPBA stipulates that amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board cannot reasonably be expected to deal with without adjournment of the oral proceedings.

4.3 In the present case the Board, in its communication dated 5 August 2013, informed the Appellant

- that any amended claims filed in order to overcome the objections raised under Articles 123(2) and 84 EPC had to reach the Board at least two weeks before the date of oral proceedings, but

- that new requests in the form of amended claims and/or description pages might be disregarded by the Board, even when filed within the deadline set, in view of the provisions of Articles 12(4) and 13(1),(3) RPBA .

4.4 Claim 1 at issue relates to (emphasis added) a "method (10) of producing a polymer-bound immobilized zeolite 13X adsorbent for nitrogen adsorption from air" comprising the step of "calcining (42) the adsorbent by thermal treatment at a temperature from 150°C to 400°C to yield a calcined adsorbent" (see point VIII above).

4.5 The Board acknowledges that this wording requires that a polymer-bound immobilized zeolite 13X adsorbent is produced by the claimed method. However, given the possible meaning of the term "calcining" (see points 2.2 to 2.3.2 supra), claim 1 at issue is ambiguous in that it does not specify whether said "calcining" step is to be applied to an already formed organic polymer-bound zeolite 13X or, for example, to a zeolite 13X adsorbent before its incorporation into a composite of organic polymer binder and zeolite. The remaining wording of claim 1 defining the other steps of the method does not clarify this issue.

4.5.1 Therefore, in the Board's judgement, claim 1 at issue is prima facie not clearly allowable under Article 84 EPC. Moreover, it raises a further issue not previously addressed regarding the compliance with the requirements of clarity, said issue arising from the amendments made.

4.6 Taking this into account, the Board decided not to admit auxiliary request 6 into the proceedings (Article 114(2) EPC and Articles 13(1),(3) RPBA.

Conclusion

5. None of the Appellant's requests is found to be admissible and allowable.