[…] Product-by-process features (“obtainable by a process comprising heating a mixture of transition alumina and an aqueous solution of cobalt ammine carbonate to a temperature of 60°C to 110°C in order to allow cobalt hydroxycarbonate to precipitate, drying and calcining the resulting product”) have been introduced in claim 1. [2]
[…] Since the "obtainable-by" features were introduced by an amendment to claim 1 in opposition procedure, the requirement of clarity must be met [3.1]
According to the established case law, claims for products defined in terms of processes for their preparation (known as product-by-process claims) are admissible only if the products themselves fulfil the requirements for patentability and that there is no other information available in the application which could have enabled the applicant to define the product satisfactorily by reference to its composition, structure or other testable parameters (cf. T 150/82 [10]).
As regards the above second requirement, in the present case, information is available in the application as filed, on how to define the catalyst by composition parameters for example by preferred amounts of cobalt, preferred cobalt metal surface area and the type of alumina. None of these possibilities, however, have been introduced in claim 1 of the main request, since the [patentee] wishes to rely on features such as crystallite size and distribution which are not defined in the application as filed. Since there is no other information available in the application as filed for the desired limitation by reference to crystallite size and distribution, the question arises whether the products themselves as defined by the “obtainable-by” features in claim 1 would fulfil the requirements for patentability. [3.2]
The [patentee] argued that the claimed “obtainable-by” features resulted in distinguishable structural properties over the prior art catalysts according to D4 to D6 such as higher cobalt metal surface area for a given cobalt content, as well as a crystallite size of 3 to 5 nm having a narrow distribution. [3.3]
[…] The prior art catalysts according to D4 to D6 having a cobalt content in the range of 3 to 40% by weight already provide a cobalt metal surface area of above 40 m² per g of cobalt as defined in claim 1. [3.3.4]
The [patentee] argued, however, that the evidence on file showed that the “obtainable-by” features provided a higher cobalt metal surface area at a given cobalt content than any prior art catalyst. [3.4]
[…] From the test results [provided by the patentee], it can be gathered that the measured cobalt metal surface areas at a given cobalt content are not consistent and that for different alumina supports the cobalt metal surface area is dependent on the amount of cobalt deposited and the type of alumina used. Thus, the type of alumina and the specific loading of cobalt thereon is not irrelevant. Consequently, a specific relation between the metal content and the cobalt metal surface area cannot be the inevitable result of the claimed “obtainable-by” features. [3.5.3]
[…] In summary, the [patentee’s] test reports show that catalysts according to D5 and D6 having a cobalt content in the range of 3 to 40% by weight provide a cobalt metal surface area of above 40 m²/g of cobalt when reduced as defined in claim 1. Thus, all these prior art catalysts fulfil the product parameters of claim 1 of the main request, and are thus not distinguishable from catalysts which are arguedly the inevitable result of the “obtainable-by” features. Furthermore, even if the invoked different relation between cobalt content and cobalt metal surface had been shown, it is not a requirement of claim 1. [3.5.5]
The [patentee] furthermore argued that the “obtainable-by” features provided a crystallite size of 3 to 5 nm and a more uniform distribution than that obtainable by the prior art catalysts. [3.6]
No crystallite particle size or its distribution is ever mentioned in the application as filed, let alone as a possibly distinguishable feature of the claimed catalyst. Thus, from the patent in suit, no causal relation between the “obtainable-by” features and the crystallite size and its distribution can be gathered. In addition, it is not clear how “uniform” that crystallite size distribution would be. Hence, the board considers that the “obtainable-by” features cannot provide a clearly distinguishable product feature with respect to the crystallite size and its distribution. [3.6.1]
[…] According to the case law (T 552/91 [5.2]) it is necessary to include in the claim the process parameters required for defining unambiguously the claimed substances as inevitable process products. It is generally necessary to indicate not only the starting compounds and the reaction conditions, but also the methods by which the reaction mixture is processed to obtain the claimed compounds. Without clearly indicating the specific starting materials (including the alumina carrier having specific pore volume and surface area) and the specific reaction conditions (drying, calcination and reducing conditions), the “obtainable-by” features as claimed fail to unequivocally define any clear catalyst features. [3.6.7]
In summary, the claimed “obtainable-by” feature does not unambiguously define the claimed catalysts as inevitable process products. Furthermore, the exact distinction (a specific relation between cobalt content and cobalt metal surface area or a more uniform Co crystallite size distribution of 3 to 5 nm), which should define the scope of protection, cannot be learnt from the “obtainable-by” features, since the experimental evidence on file does not show that the “obtainable-by” features necessarily provide any clearly distinguishable product feature in that respect. Consequently, the product-by-process features of claim 1 of the main request is not clear and does not permit the conclusion that the inevitable process product thereof is novel over the prior art catalysts. [3.7]
Therefore, the product-by-process features in claim 1 of the main request do not clearly define patentable subject-matter and the claim does not meet the requirements of A 84. [3.8]
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