|European Case Law Identifier:||ECLI:EP:BA:1985:T000684.19850221|
|Date of decision:||21 February 1985|
|Case number:||T 0006/84|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||-|
|Headnote:||Structural features of a means for performing a chemical process (here: the catalyst "offretite") which are not mentioned in the application documents themselves but in a document (here: a Canadian Patent specification) to which they refer may be incorporated into a patent claim if they unequivocally form part of the invention for which protection is sought. However, all the essential structural features thus disclosed which belong together must be incorporated into the claim; it is not permissible to single out a particular one of their number (here: a silica/ aluminia ratio).|
|Relevant legal provisions:||
|Keywords:||Amendment of claims
Disclosure by way of reference
Summary of Facts and Submissions
I. European patent application 80 300 440.7, filed on 15 February 1980, published on 1 October 1980 with publication number 16 530 and claiming the priority of an earlier application of 19 March 1979 (US-21 735), was refused by decision of the Examining Division of the European Patent Office dated 27 July 1983. The decision was based on Claims 1 to 12 submitted on 28 August 1982. The main claim was worded as follows:
"1. A process for catalytic dewaxing a waxy hydrocarbon oil which comprises contacting said oil with a catalyst at dewaxing conditions characterised in that the catalyst is synthetic offretite having a silica/ alumina mole ratio of 5 to 10."
II. The stated ground for refusal was that the subject- matter of claims 1 to 12 did not involve an inventive step. ...
III. On 28 September 1983 the applicants filed an appeal against the decision of 27 July 1983, paying the fee at the same time. They submitted a Statement of Grounds on 25 November 1983.
IV. Invited by the Technical Board to provide further explanations, the appellants responded in due time, and submitted at the oral hearing held on 21 March 1985 a set of claims with the main claim limited as follows: "1. A process for the catalytic dewaxing of a waxy hydrocarbon oil which comprises contacting the oil in the presence of hydrogen with a catalyst under dewaxing conditions, characterised in that the catalyst comprises a) synthetic offretite having a compositional formula in terms of mole ratio of oxides of
in which M is a mixture of hydrogen and a hydrogenating metal and n is the valence of M, and having an X-ray powder diffraction pattern substantially as follows:
file where theta (=) is the Bragg angle, I is the observed peakheight, I° is the intensity of the strongest line or peak, and d is the interplanar spacing in Angstrom units; or (b) synthetic offretite as defined in (a) above but in which M is hydrogen, associated with a hydrogenation metal." ...
VI. The appellants requested that the decision under appeal be set aside and a European patent granted.
Reasons for the Decision
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. There is no formal objection to the current version of the claims. The main claim relies for the definition of the synthetic offretite on p. 8, lines 25 to 27 of the specification. The relevant passage refers to CA-A-934 130 (2) which, in turn, specifies (cf. Claims l, 2 and 4 on pages 19 and 20 of that document) the offretites used for the present invention as aluminosilicates having the given mole ratios for the oxides and a characteristic X-ray powder diffraction pattern. It is the view of the Technical Board that structural features of a means for performing a chemical process which are not mentioned in the application documents themselves but in a document to which they refer may be incorporated into a patent claim if they unequivocally form part of the invention for which protection is sought. However, all the essential structural features thus disclosed which belong together must be incorporated into the claim; it is not permissible to single out a particular one of their number.
3. As to the amendment of the main claim by incorporating certain characteristics from document (2) in order to define the offretites used for the purposes of the invention claimed in the present application, the Board is therefore of the opinion that the mere limitation to a silica/ alumina mole ratio of 5 to 10, as claimed before the Examining Division, is insufficient. In the absence of evidence that this feature alone, together with the general term "offretite", is a sufficient characterisation, it is necessary to recite fully the other components of the structure and the diffraction pattern figures, as they were originally disclosed and defined in document (2). Nevertheless, the further criterion also mentioned is the same document , i.e. the capability of absorbing cyclohexane at least to a specified degree, is considered unnecessary in the circumstances since this condition is assumed to be fulfilled in consequence of the essential features of the claim. ...
5. The problem with which the invention was concerned was...
For these reasons, It is decided that:
1. The decision of the Examining Division of 27 July 1983 is set aside.
2. The case is remitted to the Examining Division with the order to grant a European patent on the basis of Claims 1 to 10 submitted at the oral proceedings.