Saturday, 26 June 2010

Interpretative spotlight: “complete”

[4.1] In the appealed decision the application was found not to meet the requirements of A 83 and A 84 due to the presence in all independent claims of the features that the Group IB metals present in the catalytically active metal phase should be partially reduced and the Group VIII metals present in the same phase should be completely reduced.

In the new main request both the product and the method claim have been limited so as to include only completely reduced Group VIII metals in the catalytically active metal phase, no partially reduced Group IB metal being present in said phase. Therefore, the grounds of refusal related to the feature “partially reduced” have been removed.

[4.2] The expression “complete reduction” is defined in the original application on page 7, lines 14-17, where it is stated:

“By complete reduction it is meant the metal sites largely consist of a single species, more particularly the highest number of species exhibit the elemental state of charge, i.e., zero”.

Such a definition is in agreement with what the skilled person would understand from the wording of the claims alone. In particular, in the method claim it is indicated that a support material is impregnated with a salt of a catalytically active metal phase wherein the active metal phase is nickel and cobalt or nickel and iron and that the impregnated support material is calcined and activated so as to completely reduce said nickel and cobalt or nickel and iron. The skilled person would understand from those process steps that the metals present in the salt in an ionised state are later reduced so as to obtain the metal in their unionised elemental form. A more specific definition of the starting state is not necessary as long as it is clear that the metals are transformed from one of their possible ionised forms into their unionised elemental form. This is similarly clear in the product claim where the Group VIII metals (i.e. nickel and cobalt or nickel and iron) are defined to be present as completely reduced metals, i.e. as metals in their unionised elemental form.

[4.3] In addition, it is clear to a person skilled in the art that the feature “completely reduced” cannot be understood as implying that each and every atom of the metal is in its elemental form, since there is hardly a situation in chemical processing where each atom is present in a single defined state.

For this reason, the presence of the term “largely” in the expression “largely consist of a single species” in the definition of complete reduction cannot be considered as resulting in a lack of clarity of the feature “completely reduced” in the claims.

To read the whole decision (T 1465/05), you may click here.