Thursday, 16 February 2012

T 871/08 – Round 3

In this case all the opponents filed appeals against the decision of the Opposition Division to maintain the patent in amended form.

Claim 1 of the main request before the Board read:
1. A process for production of hydrogen peroxide according to the anthraquinone process comprising the steps of alternate hydrogenation and oxidation of anthraquinones and tetrahydro anthraquinones in a working solution, characterised in that the working solution to be hydrogenated comprises a mixture of alkyl-substituted anthraquinones and alkyl-substituted tetrahydro anthraquinones dissolved in at least one organic solvent, wherein from 10 to 55 mole % of the anthraquinones and the tetrahydro anthraquinones are substituted with one amyl group, and the molar ratio of alkyl-substituted tetrahydro anthraquinones to alkyl- substituted anthraquinones is from 3:1 to 9:1. (my emphasis)
In what follows, the Board examines the novelty of this claim:

[2.1] Document D9 […] relates to a method for hydrogen peroxide production by an anthraquinone method involving hydrogenation of a mixture of alkyl and tetrahydroalkyl anthraquinones dissolved in organic solvents. The mixture is further supplemented with amyl anthraquinones and tetrahydroamyl anthraquinones.

[2.2] In Example 3 of D9, the working solution contains
  • 0.233 mol/l of 2-ethyl anthraquinone,
  • 0.312 mol/l of tetrahydro 2-ethyl anthraquinone,
  • 0.139 mol/l of tetrahydro anthraquinone,
  • 0.386 mol/l of tetrahydro 2-isoamyl anthraquinone.
It follows that in the working solution:
  • 36,07 mole % of the anthraquinones and the tetrahydro anthraquinones are substituted with one amyl group;
  • the molar ratio of alkyl-substituted tetrahydro anthraquinones to alkyl-substituted anthraquinones
  • when calculated from the values in Example 3 - is 2.996 : 1.
[2.3] The [patent proprietor] argued that the claimed subject-matter was novel, because the value 2.996 was lower than the lower limit of 3:1 defined in claim 1 at issue.

This argumentation is not accepted by the board. When comparing a value from the state of the art (in the present case the value “2.996”) - with those claimed (here the range of values of “from 3:1 to 9:1”), the state of the art value has to be given the same accuracy as the one claimed.

In the case at issue, the values in the claims have been quoted without any digit after the comma, which means that for comparison purposes, the value 2.996 has to be rounded up to 3, which thus falls into the range of the claimed values.

This judgement is in agreement with the jurisprudence of the boards of appeal (in particular T 1186/05 [3.6.1-5]; T 708/05 [3]).

All the other features defined in claim 1 being also disclosed in combination in document D9 […], claim 1 of the main request lacks novelty under A 54 (1) and (2).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.