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1.

The present communication has been issued in order to avoid directly summoning the
applicant to oral proceedings before the examining division in Munich, as requested by the
applicant (see letter dated 30.06.2016 page 7 last paragraph). As a matter of fact, the
examining division is of the opinion that the application in its entirety must be immediately
refused on grounds of lack of clarity (Article 84 EPC and Rules 43(1) and (3) EPC) and
consequently inventive step (Article 56 EPC) of the claimed subject-matter according to the
provision of Article 97(2) EPC. The examining division has nevertheless decided to analyse
the application in its entirety in order to at least try by itself to solve the objections of lack of
clarity of the claimed subject-matter under the proviso that oral proceedings are to be held
at the latest by the end of August 2019, when possible, for the case that a set of claims
meeting all the requirements would not have been filed by the answering date of the present
communication.

2. The examination has been carried out on the set of 11 claims filed with a letter dated on
the 30.06.2016 and the rest of documents (pages 1-17 of the description and sheets 1/9-7/9 of
drawings) as originally filed.

3.The attention of the applicant is hereby drawn to the general principle that the analysis of
patentability must be carried out in the following order i.e. the objections on file are to be
dealt with in a sequential order and the next step is to be undertaken provided that the
previous has been correctly overcome. Otherwise the application in its entirety must be
refused on the concerned objection without even taking into account any single of the
following points:

3.1) support of the amendments (Article 123(2) EPC)

3.2) clarity of the independent claims (Article 84 EPC and Rules 43(1),(3) EPC)

3.3) novelty of the independent claims (Article 54 EPC)

3.4)inventive step of the independent claims (G-VII,5 ff and Art. 56 EPC).

4. ARTICLE 123(2) EPC

4.1 The attention of the applicant is hereby drawn to the fact that the claims per se constitute
a self-contained element which does not allow any relationship to the description. Its time the
description contains a general part which is normally defining the features therein in a general
way and the examples which contain quite particular features which are not normally able to
be made generalized so as to be one of the general features of the description. Following the
above scheme any new claim being non supported by the originally filed claims must be
completely based on the general part of the description and the introduction of any real
feature of the examples (particular embodiments) in the wording of any claim to be filed
requires that the rest of the features belonging to it (the concerned example) must also be
included into the wording of the corresponding claim.

4.2. The wordings of present claims 1 to 11 being completely based on the originally filed set
of claims do meet, therefore, the requirements of Article 123(2) EPC.
5. CLARITY (ARTICLE 84 EPC)

The attention of the applicants is hereby drawn again to the fact, that the Article 84 EPC in
combination with Rules 43(1) and (3) EPC require that the wording of the independent claim
1 on file contains all real technical features essential for the claimed process to be carried out,
i.e. allowing it to obtain the desired result to be achieved defined therein.

5.1 The wording of independent claim 1 presently on file does not contain all essential
technical features which are necessary in order to allow the claimed process to be carried out
allowing the desired results to be achieved defined therein (namely (a) "to form at least one
dissolved organic product in aqueous solution" and (b) "whereby more than 50% of the
organic solid is recoverable as dissolved organic product in aqueous solution"), rendering it
in breach with the requirements of Article 84 EPC.

5.2 As a matter of fact, the wording of claim 1 has been drafted in terms of the desired results
to be achieved but it does not contain any of:

5.2.1-the name and particle size of the feedstock to be treated,

5.2.2- the pressure for the treatment to be carried out,

5.2.3-the name of the real reagent to be used for the reaction to be carried out,

5.2.4-the ratio real reagent to feedstock to be used for the reaction to be carried out and the
reaction time for a batch process or their equivalent of flow of reagent and feedstock for a
continuous flow process,

which do constitute essential technical features of the claimed process without which none of
the desired results to be achieved could by far be obtained.

5.3 In the absence of the reference to the real technical features of the claimed process
referred to under point 5.2.1 to 5.2.4 explicitly present in the wording of claim 1 on file, the
application in its entirety must be refused on grounds of lack clarity of Article 84 EPC
according to the provisions of Article 97(2) EPC, without even taking into account any single
of the following points.

5.4 The examining division has tried by itself to draft an independent process claim 1 which
would simultaneously meet the requirements of clarity and respectively support of the
amendments keeping it as broad as possible -for that it was necessary the analysis of the
entire application documents (general part of the description from paragraph [0010] to [0015]
and [0029] to [0054] taking into account that paragraphs [0036] to [0038] concern the
particular embodiments of the figures 1-3 and paragraphs [0043] concern the particular
example of figure 6 and the examples 1 to 4 are disclosed at paragraphs [0055] to [0060])
originally filed and has arrived to the following wording (claim 1):

5.4.1 a process for solubilizing small particle size organic solid selected from coal, lignite,
kerogen, biomass (wood, grasses, grains), solid organic wastes and mixtures thereof which
includes reacting the organic solid with an oxidant in superheated water to form at least one
solubilized organic solute. (support paragraph [0010] and [0033] for small particle size),

5.4.2 the oxidant (molecular oxide) is derived from hydrogen peroxide (support paragraph
[0011]), the molecular oxide is derived from the in situ decomposition of hydrogen peroxide
(support paragraph [0031])

5.4.3 the superheated water has a temperature above 100°C to 374°C and a pressure sufficient
to maintain the liquid state of water selected from 1.5 MPa to 17 MPa (support paragraphs
[0012] and [0032]), this sentence express the minimum supported pressure to allow keeping
the liquid state of water at temperatures expressed above,

5.4.4 more than 50% of the organic solid is recoverable as a solubilized organic solute
(support paragraph [0014])

5.4.5 the degree of dissolution of the coal can be controlled by variation of the oxidant
loading and the time of exposure of the coal to oxidant and can be taken to completion if
desired (support paragraph [0040]). The process works by middle partial oxidation of the coal
under hydrothermal conditions. This differs from oxidation of coal by gaseous oxygen.
Conventional oxidation of coal by gaseous oxygen results in formation of a high reflectance
rind (see paragraph [0041])

5.4.6 oxidant concentrations in superheated water for biomass are at least 0.005 M of O2
(support paragraph [0044])

5.5 The attention of the applicant is hereby drawn to the fact that even by taking into account
all the essential real technical features of the claimed subject-matter present in the general
part of the description, an independent claim containing all technical features referred to
under points 5.4.1 to 5.4.6 does not meet the requirements of clarity of Article 84 EPC (and
Rules 43(1) and (3) EPC) since in the absence of the essential technical feature concerning
the ratio of oxidant to carbon or organic feedstock in combination with the reaction time for
a batch reaction system (or its equivalent defining the flow of materials used for reacting in a
continuous flow system) from the wording of independent claim 1 on file, the desired result
defined therein cannot be achieved.

5.6 None of the applicants arguments (see letter dated 30.06.2016; entire point Clarity) are of
relevance in order to overcome the above objections of lack of clarity.

5.7 Consequently, the application in its entirety must be refused on grounds of clarity of the
claimed subject-matter (Article 84 EPC and Rules 43(1) and (3) EPC) following the
provisions of Article 97(2) EPC without even taking into account any single of the following
points.
6. NOVELTY (ARTICLE 54 EPC)

The objection of lack of novelty in view of D1 and D2 are hereby maintained as originally
raised. The attention of the applicant is hereby drawn again that only real process
features explicitly disclosed in the wording of the claims but by no means the desired
results to be achieved disclosed therein are of relevance for the analysis of novelty (and
inventive step) of the claimed subject-matter.

6.1 The applicants arguments (see letter dated 30.06.2016, entire point Novelty) cannot be
considered establishing the novelty of the claimed subject-matter in view of D1 since they are
based on desired results to be achieved but by no means on real operational features of the
claimed process per se.

6.2 The applicants arguments cannot be considered for establishing the novelty of the claimed
process in view of that disclosed in D2 as far as they are based on different names
(supercritical in D2) and (superheated in the present application) given to overlapping real
technical features. As a matter of fact, the figures 704°F and 3206 psia which are equivalent
to 373°C and respectively 221 bar used in the process disclosed in D2 are precisely
encompassed by the real technical features presently in the wording of claim 1 on file.

6.3 In the absence of at least one real differentiating technical feature in the wording of claim
1 presently on file in view of each of D1 and D2 the novelty of the claimed process cannot be
acknowledged and the application in its entirety must be refused on grounds of lack of
compliance with the requirements of Article 54 EPC according to the provisions of Article
97(2) EPC, without even taking into account any single of the previous or following points.

7. INVENTIVE STEP (ARTICLE 56 EPC)

7.1 The attention of the applicant is hereby drawn again to the fact that the analysis of
inventive step before the EPO must follow the problem-solution approach of the guidelines
(G-VII.5ff) according to which the evidence must be provided that a differentiating technical
feature present in the wording of the independent claims is responsible for the solution of a
technical problem posed in the description in a non obvious way in view of the closest prior
art document.

7.2 The application documents originally filed do not seem to contain reference to technical
features which could once incorporated into the wording of independent claim 1 result in a
subject-matter which could be considered inventive in view of the disclosure of D1-D2
referred to above.

7.3 In fact, it seems that none of the features in the application documents originally filed
could be used for solving a technical problem (comparative examples are missing) in a non
obvious way in view of D1-D2. On the contrary they seem to be quite usual technical
features of the prior art which could be used by the skilled person without implying for that
any inventive step rather obvious modifications of the prior art.

7.4 Additionally and completely independent of the objections under the points 7.2 and 7.3
above, the attention of the applicant is hereby drawn to the fact that the presently claimed
subject-matter cannot be considered meeting the requirements of inventive step of Article 56
EPC on grounds of lack of clarity of the wording of claim 1 presently on file for the reasons
already referred to under points 5.1 to 5.5 above.

As a matter of fact, the absence of the features concerning concentration of reagents and time
for a batch reaction system or the equivalent reagent flow and feedstock flow for a
continuous process, the wording of claim 1 presently on file encompass subject-matters
(processes) for which no reaction at all can be carried out with a consequent lack of
solubilization of any kind of the products to be treated (carbon, biomass,.....etc.). The
same applies mutatis mutandis to some kind of thermostable plastics (Bakelite for instance)
since in spite of the intention expressed to dissolve them in superheated water containing
hydrogen peroxide which is thermally decomposed in order to produce any amount of
molecular oxygen (also in the concentration range amounting some ppt, ppb or ppm) the
desired dissolution cannot be obtained in the entire range of operational features explicitly
defined in the wording of claim 1 presently on file. The claimed process (independent claim
1) containing ranges of process features for which no real technical problem can be solved
per se (dissolution of organic materials either in presence of ppm of molecular oxygen
produced by thermal decomposition of hydrogen peroxide or for any content of oxidant
applied for very short periods of time, e.g. 1 nano second ), is the reason why the application
is to be refused on grounds of lack of inventive step (Article 56 EPC) according to the
provisions of Article 97(2) EPC, without even taking into account any single of the previous
points.

7.5 In the absence of at least one differentiating technical feature present in the wording of
the independent device claim 1 for which it has been effectively shown as being responsible
for the solution, in a non obvious way of a technical problem posed in the application
documents originally filed in a non obvious way either without comparing it with the prior art
(i.e. for the entire range of operational features in the wording of the independent claim) or
auxiliary in view of D1, D2 the inventive step of the claimed subject-matter cannot be
acknowledged (Guidelines G-VII.5 and well as Article 56 EPC).

8. further procedure

8.1 The attention of the applicant is hereby drawn to the fact that the intention of the
examining division is to reach to a final decision concerning the present application if
possible by the end of August 2019 as already indicated under point 1 above.

8.2 For the case that at the end of the answering period of two months no patentable set of
claims would have been filed, the applicant is to be summoned to oral proceedings according
to the request at page 7 last paragraph of the letter dated 30.06.2016, at the latest by the end
of August , when possible, in order to allow the examining division to reach to a final
decision concerning the present application.

8.4 The applicant is also hereby informed from the fact that in case the applicant would not
have interest in attending oral proceedings in Munich, a decision on the state of the file can
be taken by the examining division at applicants request.

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