Tuesday, 27 July 2010

T 1764/06 – Is It There?

Sometimes patent drafters - by choice or for necessity - resort to drafting claims containing somewhat exotic parameter features that are not known in the prior art. As a result, the Office is in a difficult position when it comes to assessing novelty and inventive step. Will the Office give the benefit of the doubt to the applicant? Not necessarily, as the present decision shows.

The application was refused by the Examining Division for lack of novelty. Claim 1 of the main request before the Board was amended with respect to the claims as filed, in particular by addition of a feature related to an index X:

1. A photocatalyst comprising a titanium oxide and a metal-containing compound other than titanium oxide on the surface of the titanium oxide, wherein the metal-containing compound is a metal oxide having an acid site, the photocatalyst has a BET specific surface area of 55 m2/g or larger, and the photocatalyst has an index X calculated by equation (I): X=B/A (I) of 0.2 or more, wherein A represents an integrated value of absorbance within a wavelength range of from 220 nm to 800 nm along an ultraviolet-visible diffuse reflection spectrum of the photocatalyst, and B represents an integrated value of absorbance within a wavelength range of from 400 nm to 800 nm along the ultraviolet-visible diffuse reflection spectrum.

Here is what the Board had to say:

[2.2.8] It follows from the above that D1 discloses a photocatalyst prepared according to a method as defined in claims 4 and 8 of the Main Request and comprising all the features of Claims 1 to 3 of the Main Request (supra) but the Index X.

[2.3] According to Claim 1, the photocatalyst has an index X of 0.2 or more, calculated by equation X = B/A (I), wherein A represents an integrated value of absorbance within a wavelength range of from 220 nm to 800 nm along an ultraviolet-visible diffuse reflection spectrum of the photocatalyst, and B represents an integrated value of absorbance within a wavelength range of from 400 nm to 800 nm along the ultravioletvisible diffuse reflection spectrum. Hence, the claimed photocatalyst also has a performance related characteristic expressed by a parameter feature.

[2.4] In their letter dated 23 March 2006 […], the applicants offered the following interpretation of Index X: “A” represented the amount of absorption of a broad wavelength range of light, including both the ultraviolet and the visible region; “B” represented the amount of absorption in the visible region of light; “Index X”, which was equal to “B/A”, therefore showed the proportion of ultraviolet-visible light that was absorbed in the visible region; the larger the Index X, the larger the proportion of light that was absorbed within the visible region; Index X thus related to the strength of the colour of the titanium oxide; when the titanium oxide was white Index X was about 0.1; the claimed photocatalyst had an Index X of more than 0.2, i.e. it absorbed enough light within the visible region and was not white.

[2.5] The Board notes that:

(a) None of the documents cited in the proceedings as representing the prior art ever mentions such an Index X. Not even D5 (Masakazu Anpo, “Photocatalysis on titanium oxide catalysts, Approaches in achieving highly efficient reactions and realizing the use of visible light”, Catalysis Surveys from Japan, 1(1997), pages 169-179), which concerns the use of visible light in the photocatalysis on titanium oxide catalysts, ever mentions Index X.

(b) No evidence whatsoever that “Index X” was common general knowledge in the field of photo-catalysis or had already been disclosed or used has ever been offered either.

(c) D7, alleged to represent the history of the development of visible light photo-catalysis, does not mention either any Index X.

(d) The characterization of the photocatalysts disclosed by D1 does not include the assessment of the colour. Nor does D2 or D6.

[2.6] Hence, the only expressed distinction between the definition of the claimed photocatalyst and the photocatalyst of D1 relies on a parameter feature that is not usual, let alone common, for the skilled person.

[2.7] Furthermore, if the significance of Index X given by the applicants were retained, i.e. that it is related to the strength of the colour of the titanium oxide, nothing of this would be found in the application as filed. Instead, from D1 […], it is learnt that an excess of iron, as in samples having more than 3% mol of iron, a fortiori the sample having 5% mol, produces, on the catalyst, surface layers and/or islands of inactive amorphous and/or crystalline material such as hematite. Hematite is generally known to be coloured, which fact must have an impact on the colour of the titanium oxide catalyst and on its capacity of absorbing visible light.

[2.8] Also, the method of preparation of the samples illustrated in D1 is as defined in Claims 4 and 8 of the Main Request, and as described in the paragraph bridging pages 4 and 5 of the application as filed. In particular, in D1, ammonia is added dropwise, hence until completion of the reaction. As regards the loading, the examples of the present application illustrate 3% mol of metal. Concerning Index X, the present application shows that also the comparative samples obtained by impregnation of commercially available titanium oxide (which have not been shown to have been produced by the alleged excess of ammonia) attain an Index of as high as 0.2 (Comparative Example 2), with a loading of 3% mol. Hence, no proven distinction appears to result from the method of preparation either, let alone from the alleged excess of ammonia, which further is not a feature required by any of the claims.

[2.9] Summing up, the applicants have not provided any items of evidence showing that the samples of D1, e.g. those having a high iron content, do not attain an Index X as required. However, the onus of the proof in that respect lay on them, and no proven distinction has ever been shown.

[2.10] Therefore, in these circumstances, the presumption that the claimed catalyst is not novel (as detailed throughout the examination and appeal proceedings), having regard to e.g. D1, has not been displaced by evidence.

2.11 Consequently, the condition required by A 52 (... provided that they are new ...) is not fulfilled by the catalysts defined in Claim 1, and a European patent cannot be granted on the Main Request.

[2.12] As regards the invoked “benefit of doubt”, to be accorded to the applicants in complex situations without direct disclosure, the position of the Board is as follows: in a situation where the applicants have used an unusual parameter feature to define their product, which unusual parameter feature represents the only distinction over otherwise identical known products, and the applicants have decided not to provide evidence that the parameter feature as such represents a difference of the claimed products from the known products, no benefit of doubt can be accorded. A 52 requires that the invention (here, the claimed photocatalyst) be novel.

[2.13] The above objections extend to the subject-matter defined in Claims 2 and 3 as well as to the method of preparation as defined in Claims 4 and 8.

[2.14] Therefore, the Main Request is not acceptable.

If you wish to download the whole decision, please click here.

To read a previous post on a similar decision, click here.