The present decision reminds us that the use of unusual parameters in claims may backfire on the applicant.
Claim 1 of the main request before the Board read (differences with respect to claim 1 as filed are highlighted):
1. A honeycomb structure in which plural honeycomb units are adhered through the intermediary of an adhesive layer and in the honeycomb unit plural cells are juxtaposed to each other in the longitudinal direction thereof through the intermediary of a cell wall, said honeycomb structure including a catalyst for reaction of converting gas, characterized in that each of the plural cells of the honeycomb unit has unsealed openings at both ends thereof in the longitudinal direction and the ratio of the specific surface area of the honeycomb unit to that of the adhesive layer is
1.0 or greaterfrom 1.1 to 10 in the finally completed honeycomb structure, wherein the specific surface area is measured by a single point method in accordance with JIS-R-1626.
In what follows, the Board discusses the novelty of this claim:
 According to the decision under appeal, the process of Claim 1 of the main request is not novel over either of D8 and D9. D8 is a European patent application pursuant to A 54(3), as it was published on 28 June 2006, i.e. after the filing date of the present application (24 January 2006). The same goes for D9, an international application published on 18 August 2005, i.e. after the priority date of the present application, i.e. 1 February 2005. The Board has no reason to deviate from the decision under appeal on this issue, for the following reasons:
The disclosure of D8
[3.1] D8 […] discloses a honeycomb structural body comprising having [sic] pillar-shaped honeycomb structural porous ceramic members formed by arranging a plurality of cells side by side through cell walls and a sealing material layer interposed between the mutual ceramic members for bonding a plurality of the porous ceramic members in the presence of the sealing material layer, characterized in that the sealing material layer has a specific surface area of 10 to 100 m²/g.
In D8 […], the specific surface area of the sealing material is represented by BET specific surface area (m²/g) per unit weight of the sealing material and measured by a one-point method according to JIS-R-1626 (1996) prescribed by the Japanese Industrial Standards.
As shown in […] D8, the honeycomb structure 20 comprises a plurality of honeycomb units 30, adhered through the intermediary of an adhesive layer 23, whereby in the honeycomb units plural cells 32 are juxtaposed to each other in the longitudinal direction thereof through the intermediary of a cell wall 33. Each of the plural cells 32 of the honeycomb unit 30 has unsealed openings at both ends thereof in the longitudinal direction. The specific surface area of the adhesive layer 23 is from 10 to 100 m²/g […]. That specific surface is measured by a single point method in accordance with JIS-R-1626 […]. The honeycomb structure of D8 uses a material having a high specific surface area for making the cell walls, in order that catalyst components can be widely dispersed and carried on such a cell wall […]. This high specific surface area of the cell walls of the honeycomb unit, is however not quantified in D8, let alone the ratio thereof with the specific surface area of the adhesive layers.
[3.2] Thus, the Board agrees with the only argument of the [applicants] […] that D8 does not mention any ratio of a specific surface area of the honeycomb unit to that of the adhesive layer of 1.0 or greater, nor any ratio of a specific area of the honeycomb unit to that of the coating layer of 1.0 or greater. This fact, which certainly constitutes a difficulty for assessing novelty, is however not decisive, as it merely represents a parametrical definition of a product that could well be defined otherwise, for instance by the process of manufacture from which the parametrically defined product is inevitably obtained.
[3.3] A comparison of the present application with the process of D8 shows that:
[3.3.1] The aim of the manufacturing process of D8 is to provide honeycomb structures, being excellent in bonding strength and thermal shock resistance, by using sealing material layers having high bonding strength and excellent durability, in order that the honeycomb has high conversion efficiency of the exhaust gas and a high removal efficiency of the particles included in the exhaust gas […]. Hence, D8, as well as the present application […], address conversion efficiency.
[3.3.2] D8 discloses how to control the specific surface area of the adhesive sealing material […] and the specific surface area of the honeycomb unit […], and also discloses how to generally produce the honeycomb structure […].
[3.3.3] D8 […] illustrates the production of an alumina honeycomb structure, made up as follows:
(a) A paste for the heat-resistant sealing material having the same starting materials of the paste illustrated in the present application […] and overlapping compounding ratios […].
(b) An alumina honeycomb unit prepared from starting materials […] identically corresponding to the starting materials used in the present application for producing an alumina honeycomb unit […], under process conditions […] which are identical to those used in the corresponding embodiment of the present application […].
(c) An adhesive layer provided on the surface of the honeycomb unit, by drying and firing under conditions […] which are identical to those used in the corresponding embodiment of the present application […].
(d) A coating layer of the same composition as the sealing layer applied on the outer surface of the honeycomb structure, as in the present application.
[3.4] It is apparent from the above that, for the embodiments illustrated in D8, the same starting materials and process conditions have been used as disclosed in the present application. Hence, there is a strong presumption that the corresponding products should be the same.
[3.5] Since the applicants decided to formulate the definition of the invention by an unusual parameter, the onus to convincingly establish novelty over the illustrated embodiments of D8 lies on them. The EPO cannot carry out comparative tests to establish whether the embodiments illustrated by D8 fulfil the condition specified in Claim 1 for the specific surface areas of honeycomb units and adhesive materials, i.e. to assess whether the claimed subject-matter is novel.
[3.6] Although D8 is an earlier application by the [applicants], who thus might well have provided all of the necessary evidence concerning the embodiments of D8, no evidence whatsoever has ever been provided by the [applicants] in order to discharge their onus of proof. Therefore, the presumption that the claimed honeycomb structure is not novel having regard to the disclosure of D8 has not been displaced by evidence. No benefit of doubt can be accorded in this respect (e.g. T 1764/06 […]).
[3.7] However, a European patent can only be granted on inventions which inter alia are novel (A 52(1)).
[3.8] Therefore, in the absence of convincing evidence, novelty cannot be acknowledged having regard to D8 (A 54(3)).
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