T 1486/08 (Filter material/PROCTER) 23-02-2012

Reasons for the Decision

1. Main request (Article 84 EPC)

1.1 In the grounds of appeal (paragraph bridging pages 2 and 3), the appellant stated that the claimed process aimed at solving the problem of removing bacterial and viral contaminants from drinking water by means of an activated carbon having a particular pore size distribution with "a balance of mesopores/macropores (tens of nm) to micropores (less than 2 nm) of the order of 1:1" (emphasis added by the board).

1.2 In its communication dated 21 July 2011, the board acknowledged the above feature to represent the solution to the problem underlying the application-in-suit. It further invited the appellant to amend the claims, the scope of which was too broad to meet the requirements of Article 84 EPC, and suggested in this respect to restrict the range of values defining the ratio of the sum of the mesopore and macropore volumes to the micropore volume to the range of from 0.8 to 1.5.

1.3 In its reply to the above communication, the appellant argued that the range that the board suggested was simply described in the application-in-suit to represent the preferred range; it was however not considered to be an essential feature.

1.4 The board observes that it is the established case law of the boards of appeal that the scope of the claims must not be broader than is justified by the extent of the description and also the contribution to the art (T 0409/91, OJ EPO 9/1994, 653, Reasons 3.2, penultimate sentence and Reasons 3.3, second sentence).

In the present case, the alleged invention is illustrated by only two specific embodiments, namely by the filter materials in Examples 1 and 2, which have the following specifications:

- BET area of 1472 m**(2)/g, micropore volume of 0.61 mL/g, sum of the mesopore and macropore volume of 0.86 mL/g (Example 1),

- BET area of 1631 m**(2)/g, micropore volume of 0.72 mL/g, and a sum of the mesopore and macropore volume of 0.67 mL/g (Example 2).

The above data lead to a (calculated) ratio of the sum of the mesopore and macropore volumes to the micropore volume of 1.41 and 0.93, respectively. The board observes that these two values fall comfortably within the range of "from 0.8 to 1.5" without however going beyond the limits of this range.

The efficiency of these two filtering materials in removing bacterial contaminants from water has been tested and reported in the test procedures on pages 18 to 20 of the application in suit. It can be seen that both materials efficiently achieve the expected effect.

1.5 The appellant, which has the onus of demonstrating that a claim is fully supported by the description over the whole of its breadth, did not however provide any evidence that filtering materials with a ratio of the sum of the mesopore and macropore volumes to the micropore volume falling outside the range of "from 0.8 to 1.5" also have any bacterial removal efficiency and so achieve the expected effect.

Since claims are supposed to define the matter for which protection is sought, their scope should correspond to the invention as disclosed in the description. In the present case, this requirement is not fulfilled, since the scope of claim 1 is broader than is justified by the extent of the description, contrary to the requirements of Article 84 EPC.

Therefore the main request is rejected.

2. Auxiliary request 1

2.1 Amendments

The claims of this request have a basis as follows in the application as filed and published as WO 02/098536:

- Claim 1 results from the combination of claims 1, 9, 11 and the passages at page 5, lines 7 to 13; page 5, line 30 to page 6, line 4; page 11, line 7; page 12, lines 3 and 4; page 12, line 30 to page 13, line 2; page 13, lines 13 to 15; page 13, line 29 to page 14, line 2 as filed.

- Claims 2 and 3: in claim 2 and the examples as filed;

- Claim 4: in the passage at page 7, lines 7 and 8 as filed;

- Claims 5 to 9: in claims 5, 6, 7, 8 and 10 as filed, respectively.

It follows that the amended claims of this request meet the requirements of Article 123(2) EPC.

2.2 Article 84 EPC

The subject-matter of claim 1 having been limited as suggested (communication dated 21 July 2011), the board is satisfied that the scope of protection of the invention now claimed is justified. The subject-matter of claim 1 now reflects the filtering materials specifically exemplified in the application-in-suit. The board's concerns raised in said communication are therefore considered overcome and the requirements of Article 84 EPC met.

2.3 Novelty

The board is satisfied that the subject-matter now claimed is distinguished from the disclosure in documents D1 and D2 cited in the search report as neither of these prior art documents disclose the combination of steps b) and c) in claim 1 at issue, nor do these documents disclose the ratio of the sum of the mesopore and macropore volumes to the micropore volume to be between 0.8 and 1.5. D2 is further distinguished therefrom in that the sulfonate is of the lignosulfonate type.

Therefore, claim 1 and claims 2 to 9, which depend thereon, meet the requirements of Article 54(1),(2) EPC.

2.4 Inventive step

2.4.1 The present application concerns a method for manufacturing a filter material capable of removing bacteria and/or viruses from a fluid (page 2, lines 22 to 24 of the application-in-suit).

2.4.2 D2, which relates to the same technical field, represents the closest state of the art and thus the starting point for assessing inventive step. It is observed that D1 cannot represent the closest state of the art since it concerns a different technical field, namely the preparation of a supporting material for microorganisms.

D2 (abstract) discloses an antibacterial particulate activated carbon prepared by mixing a silver zeolite with an aqueous solution of a condensation product of aromatic sulfonic acids or salts to prepare a slurry. The slurry is then atomised into fine particles and spray-dried, baked, carbonised and activated to produce an antibacterial activated carbon containing 0.5 to 10 wt.% of silver zeolite.

2.4.3 The problem to be solved in the light of D2 is to be seen in the provision of a process for preparing a further filter material capable of removing bacteria and/or viruses from a fluid.

2.4.4 As a solution to this problem, the application in suit proposes the process according to claim 1, characterized in particular in that the ratio of the sum of the mesopore and macropore volumes to the micropore volume of the activated coating is between 0.8 and 1.5.

2.4.5 Concerning the question of whether the above problem has been effectively solved, the application in suit provides evidence that it has been, since the filtering materials prepared in the examples have been tested and reported as efficient in removing bacterial contaminants from water (see the test procedures at pages 18 to 20 of the application in suit).

2.4.6 It remains to be decided whether the proposed solution to the above problem is obvious or not in view of the state of the art.

In this respect, the board observes that the solution proposed according to the subject-matter of claim 1 comprises a specific ratio of the sum of the mesopore and macropore volumes to the micropore volume of the activated coating. The feature defining the said ratio makes the solution proposed by the application in suit totally different from the one proposed in D2, which in comparison requires a silver zeolite for removing the contaminating microorganisms.

Concerning the other state of the art (D1) cited in the search report, this document concerns a different technical problem, namely the preparation of a supporting material for microorganisms, and the skilled person confronted with the problem of removing microorganisms from water would thus not take the content of this document into consideration. Even if he did so, he would not arrive at the claimed solution, since the material in D1 has a porosity different from the one claimed.

2.4.7 It follows from the above that the subject-matter of claim 1 of this request, and of claims 2 to 9, which depend thereon, involves an inventive step within the meaning of Article 56 EPC.