Claim 1 on file read :
Fireproof product made of a mix of additives, at least one binder and an admixture (Zusatz), characterised in that the admixture consists in synthetic TiO2-containing particulate materials having an average grain size d50 from 0.2 to 2000 µm. (my emphasis)
*** Translation of the German original ***
[3.1] In the impugned decision the Examining Division (ED) established that the subject-matter of the then pending claims 1 to 6 was not novel over the disclosure of documents D1 and D2.
[3.1.1] Documents D1 and D2 disclose TiO2-containing additives consisting of residues of the TiO2 production, a binder (e.g. a cement) and one or several components selected from inter alia SiO2 and Al2O3 […]. The TiO2-containing additives are powder mixtures having a grain size of 50 to 5000 µm […]. However, documents D1 and D2 do not disclose any grain size distribution. Particles having a grain size of 50 to 5000 µm do not necessarily have an average grain size for 0.2 to 2000 µm because they could, e.g. consist of particles > 2000 µm only.
[3.1.2] Thus documents D1 and D2 do not disclose TiO2-containing particulate materials having an average grain size from 0.2 to 2000 µm, so that these documents do not destroy the novelty of the subject-matter of claim 1.
[3.2] In the course of the examining proceedings there were additional objections of lack of novelty of the subject-matter of the then pending claims over documents D3 and D4.
[3.2.1] Document D3 discloses TiO2-containing additives consisting of inter alia residues of TiO2-pigment production and Fe2O3. The product does have a grain size of 100% <2 mm (i.e. necessarily an average grain size of up to 2000 µm) […], but it does not contain any binder.
[3.2.2] Document D4 discloses a fireproof material containing inter alia Al2O3, SiO2, FeO, TiO2, and boric acid […]. This document discloses all the components of the fireproof product according to claim 1 of the application under consideration, but it does not disclose any grain size for the products.
[3.2.3] Thus documents D3 and D4 do not disclose all the features of claim 1, so that they do not destroy the novelty of the subject-matter of claim 1.
[3.3] To sum up, the feature according to which the average grain size of the synthetic TiO2-containing particulate materials is between 0.2 to 2000 µm, as required by claim 1, cannot be directly and unambiguously derived from any of documents D1, D2, and D4, so that these documents do not destroy the novelty of the subject-matter of claim 1. Document D3 does not disclose that the product contains a binder, so that this document does not destroy the novelty of the claimed subject-matter either.
[3.4] The statement of the ED according to which there is no technical effect obtained over the whole claimed range is not relevant for the assessment of novelty, because novelty and inventive step are two distinct patentability requirements. A technical effect that occurs in a claimed range does not establish the novelty of a numerical range that is novel in itself but only confirms the novelty of this claimed numerical range, which has already been established. The question of whether there is a technical effect or not, however, remains to be answered in the context of inventive step (see T 1233/05 [4.4]; T 230/07 [4.1.6])
[3.4] Thus, for the above reasons the Board comes to the conclusion that the subject-matter of claim 1 is novel over documents D1 to D4.
The Board then remitted the case for further prosecution.
Should you wish to download the whole decision (in German), click here.
The file wrapper can be found here.