T 1854/18 19-11-2019

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division posted on 9 January 2018 to refuse European application No. 11 007 747.6, filed as a divisional application of the earlier European patent application 07 870 818.7, the later being filed as International application PCT/US 2007/022719 and published as WO 2008/073186 A2.

II. The decision was based on a main request submitted with letter of 8 June 2017 and an auxiliary request submitted during the oral proceedings on 8 December 2017. According to the reasons for the decision the step of burning lignin disclosed on page 10, lines 12-13 of the description of the application as filed could not be read separately from the step of removing lignin from the second lignocellulosic material and from a step of combining the de-lignified material with a micro-organism as was disclosed on lines 9-11 of the same page. Accordingly, the subject-matter of claim 1 of the main request and of its dependent claims extended beyond the content of the divisional application as filed, in contravention of Article 123(2) EPC. For the same reasons, the subject-matter of claim 1 of the main request and of its dependent claims was also held to extend beyond the content of the earlier application as filed contrary to the requirements of Article 76(1) EPC. The amendment introduced into the auxiliary request prima facie could not overcome the objection that claim 1 did not meet the requirements of Article 123(2) EPC. Therefore, the examining division using its discretion under Rule 137(3) EPC did not admit the auxiliary request into the proceedings.

III. The decision was appealed with letter of 6 March 2018 and the statement setting out the grounds of appeal was submitted with letter of 4 May 2018 to which a second auxiliary request labelled "Auxiliary Request 2" was attached. The main request submitted with letter of 8 June 2017 and the auxiliary request submitted during the oral proceedings on 8 December 2017 (herein after referred to as the first auxiliary request) were maintained.

IV. In a Board's communication sent in preparation of the oral proceedings the Board gave the preliminary opinion that the main request and the second auxiliary request extended beyond the content of the earlier application as filed. It was also indicated that the Board was of the preliminary opinion that the first auxiliary request was not to be admitted into the proceedings under Article 12(4) RPBA, since there was no reason to consider that the examining division had not correctly exercise its discretion in not admitting this claim request into the proceedings.

V. Oral proceedings were held on 19 November 2019 in the course of which all pending claim requests were replaced by a single new request, whose claims read as follows:

"1. A method comprising:

providing a first lignocellulosic material that includes cellulose having a first number average molecular weight;

irradiating the first lignocellulosic material to provide a second lignocellulosic material that includes cellulose having a second number average molecular weight lower than the first number average molecular weight;

combining the second lignocellulosic material with a microorganism and burning an obtained lignin residue to generate energy, or removing lignin from the second lignocellulosic material to provide a delignifed material, then combining the delignified material with a microorganism, and burning the lignin to generate energy.

2. The method of claim 1 wherein the lignin residue is burned to heat water flowing through a heat exchanger.

3. The method of claim 2 further comprising evaporating the water flowing through the heat exchanger and superheating it to steam.

4. The method of claim 3 further comprising using the steam in heat exchange in a distillation process.

5. The method of claim 3 or 4 further comprising allowing the steam to expand to power a multi-stage steam turbine connected to an electric generator.

6. The method of claim 5 further comprising condensing steam exiting the steam turbine with cooling water, and returning the condensate to the heat exchanger for reheating the steam.

7. The method of any one of claims 2 to 6 further comprising controlling the flow rate of water through the heat exchanger to obtain a target electricity output from the steam turbine when the turbine is connected to an electric generator.

8. The method of claim 7 further comprising adding water to the heat exchanger to ensure that the steam turbine is spinning fast enough to turn the electric generator.

9. The method of claim 1 wherein irradiating comprises treating with electron beam radiation to a total dose of between 10 Mrad and 150 Mrad.

10. The method of any one of the above claims wherein the lignocellulosic material is selected from the group consisting of grasses, rice hulls, bagasse, jute, hemp, flax, bamboo, sisal, abaca, straw, corn cobs, corn stover, alfalfa, hay, coconut hair, seaweed, algae, and mixtures thereof.

11. The method of any one of the above claims wherein irradiating is performed at a dose rate of 1 Mrad/s to 10 Mrad/s.

12. The method of claim 9 wherein the electron beam delivers electrons having an energy of 0.3 MeV to 2.0 MeV.

13. The method of any one of the above claims, the method further comprising reducing the size of lignocellulosic material by subjecting the material to one or more of the following: stone grinding, mechanical ripping or tearing, pin grinding, or air attrition milling.

14. The method of any one of the above claims wherein the lignin residue further comprises cellulose and hemicellulose."

VI. The appellant essentially submitted that the amendments contained in claims 1 to 14 did not extend beyond the content of both the application and the earlier application as filed. The passages of the earlier application as filed and of the application as filed indicated by the appellant as forming the basis for the subject-matter of the pending claim request are indicated below in the Reasons for the Decision.

VII. The appellant requested that a patent be granted on the basis of claims 1 to 14 according to the request as submitted during the oral proceedings on 19 November 2019.