T 1668/20 (Catalyst particle/NISSAN) 06-09-2022

1. Main request: extension of the scope of protection

For the reasons set out below, the scope of protection has been extended, thus contravening Article 123(3) EPC.

1.1 It is firstly noted that the "catalyst particle" and the "alloy particle" are used synonymously both in claim 1 of the main request and claim 1 as granted: "a catalyst particle which is an alloy particle ..." (emphasis added by the board).

Claim 1 of the main request is directed to an electrode catalyst that comprises a catalyst/alloy particle and a carbon carrier. Furthermore, the catalyst/alloy particle has to respect the parameter ranges indicated in features (i) to (iii), the carbon carrier not being accounted for in this regard.

By contrast, claim 1 as granted does not mention an electrode catalyst and indicates that the catalyst/alloy particle comprises the carbon carrier (page 31, line 7 of the published patent). The catalyst/alloy particle (comprising the carrier) has to respect the parameter ranges of features (i) to (iii). In other words, the carbon carrier is accounted for when evaluating the parameters of features (i) to (iii).

Consequently, claim 1 of the main request contains fewer restrictions regarding the carbon carrier than claim 1 as granted, and the scope of protection of claim 1 has been partly broadened.

1.2 In the appellant's view, claim 1 as granted was unclear, so the skilled reader would consult the description and thereby establish that the catalyst/alloy particle and the carrier were separate entities.

The appellant in fact considered that there was a contradiction between the feature "catalyst particle which is an alloy particle formed of platinum atoms and a [sic] non-platinum metal atoms" in claim 1 as granted (emphasis added by the board) and the feature "the catalyst particle comprises a carbon carrier". The particle could not at the same time be made of platinum and a non-platinum metal and comprise another entity, namely the carrier.

Therefore the skilled reader would have consulted the description. They would then have realised that the expression "the catalyst particle comprises a carbon carrier" rather meant that the catalyst particle was supported on a carbon carrier.

There was thus no shift in the scope of protection between claim 1 as granted and claim 1 of the main request.

This argument is however not convincing. Claim 1 as granted explicitly requires that the catalyst particle comprise a carbon carrier. This means that the carrier explicitly forms part of the catalyst particle.

There is no contradiction with the remainder of claim 1 as granted either. While the preamble requires that the alloy particle is "formed of platinum atoms and a [sic] non-platinum atoms" (emphasis added by the board), the specific wording chosen does not state that the catalyst/alloy particle is exclusively formed of these atoms. Consequently, the alloy article may additionally comprise other elements (even including non-metallic elements) or entities as long as an alloy is present. The additional presence of a "carbon carrier" in the alloy particle is thus not excluded.

Consequently, there is no reason to ignore the feature "the catalyst particle comprises a carbon carrier" in claim 1 as granted.

1.3 The appellant moreover alleged that parameters (i) to (iii) depended only on the alloy particle of platinum atoms and non-platinum metal atoms, and not on the carrier. The appellant also argued that the "extent of ordering" had already been fixed when the carrier was added.

The board does not share this view. The patent in suit rather indicates the contrary and the appellant has provided no proof for its assertion.

The meaning of parameters (i) to (iii) according to the patent in suit is basically the following:

(i) The "L12 structure" relates to the crystalline arrangement of the platinum and non-platinum atoms. A higher "extent of ordering of L12 structure" reduces elution of the non-platinum metal, which in turn increases initial activity and reduces catalyst performance degradation (paragraph [0017], more precisely page 5, lines 3 to 5, as well as paragraphs [0035] and [0055] of the published patent).

(ii) The "LP ratio" gives information on the number of exposed crystal faces with high activity. A higher ratio also results in higher activity (paragraph [0017], more precisely page 5, lines 43 to 46, as well as paragraph [0042]).

(iii) The "dN/dA" ratio is an indication of the specific surface area. A value above 0.4 results in a high specific surface area and high activity (paragraphs [0018] and [0047]).

Importantly, paragraph [0089] of the patent in suit explicitly states that the carbon carrier helps control the extent of ordering of the catalyst particle. Hence even the patent in suit suggests that the carrier has an influence on parameter (i).

The same paragraph also states that the carrier reduces the agglomeration of the alloy particles and the deterioration of the specific surface. Similarly, paragraph [0061] indicates that the carrier helps disperse the catalyst particle. Thus it can at least not be excluded that the carrier also affects parameter (iii), i.e. the dN/dA ratio, which also relates to the specific surface area.

In view of these teachings of the patent in suit the carrier is considered to have an influence on the measurement of parameters (i) to (iii).

2. Auxiliary requests: admissibility

The respondent requested that the auxiliary requests not be admitted into the proceedings.

However, since none of the auxiliary requests meets the requirements of Article 123(3) EPC (see point 3. below), the question of their admissibility pursuant to Article 12(6) RPBA 2020 may be left unanswered.

3. Auxiliary requests: extension of the scope of protection

The reasons why the main request does not meet the requirements of Article 123(3) EPC also apply to all the auxiliary requests. This has also been acknowledged by the appellant (see minutes of the oral proceedings before the board).

This is because claim 1 of auxiliary requests 1 to 6 indicates (just as claim 1 of the main request does):

- that the electrode catalyst comprises both the catalyst/alloy particle and the carbon carrier, and

- that the catalyst/alloy particle (thus without accounting for the carbon carrier) has to respect the parameter ranges (i) to (iii).

4. Remittal

The appellant requested that the case be remitted to the department of first instance to assess inventive step in the event that a claim request met, among other things, the requirements of Article 123(3) EPC (see minutes of the oral proceedings).

However, since none of the requests meets the requirements of Article 123(3) EPC (see points 1. and 3. above), the condition for the appellant's request to remit the case to the opposition division is not met (Article 111(1) EPC) and the conditional request for remittal has thus become irrelevant.

5. Right to be heard and procedural violation

The appellant was of the opinion that the opposition division had not respected its right to be heard and had committed a procedural violation in considering then-auxiliary request 2 (present auxiliary request 5) to be late filed and as such rejecting this request under Article 114(2) EPC. In its view, this request could not be late filed since it was a reaction to the newly raised novelty objection against the subject-matter of claim 1 in view of D11.

However, even if the board were to confirm this view, arguendo, this finding would have no legal consequence in view of the appellant's present requests, in particular because

a) the present auxiliary request 5 does not meet the requirements of Article 123(3) EPC anyway (see points 1. and 3. above), and

b) the conditional request for a remittal is no longer relevant (see point 4.)