1 1 1 Standard Clause English 82 84 p 248 54 56 GVII

7/23/2019 1 1 1 Standard Clause English 82 84 p 248 54 56 GVII

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1.The examination of the present search case has been carried out on the set of five claimsand the rest of documents originally filed .

2. CLARIT !ARTICL" #$ "%C&2.1 It seems from the summary of the polish patent %L'1((12 )1 *hich reads approximately+,pos-b otrymy*ania suro*ca dla *os/-* ochronnych do gumy na baie miesaninstalych *eglo*odor-* nafto*ych /rystaliu0acych fra/c0i od 1 do 11 C miesaninastalych *eglo*odor-* nafto*ych /rystaliu0acych uprednio odasfalto*ane0 fra/c0ipoostaloscio*e0 o temperature *renia od 34 do 42 C * ilosci do 5 6 *ago*ych7 prycym ta/ otrymana mase podgre*a sie do temperatury od 1$ do 13C doda0ac do nie0do 56 *ago*ych polietylenu7 a nastepnie po cal/o*itym 0ego ropusceniu i obnieniutemperatury masy od 1 do 11C doda0e sie do nie0 do 5 *ago*ych antyutleniaca.8

and a first google translation as follo*s9

+A method for preparing ra* material for rubber protective *ax'based solid mixtures ofpetroleum hydrocarbon fractions crystalliing from 1 to 11 C *ith a mixture of solid

petroleum hydrocarbon *ith a predetermined crystalliing deasphalted residual fraction *itha boiling point of from 34 to 42 C in an amount up to 56 by *eight7 *herein the massthus obtained is heated to a temperature of from 1$ to 13 C by adding it to 56 by *eightof polyethylene7 and then after complete dissolution mass the temperature *as lo*ered from1 to 11 C is added thereto to three *eight antioxidant.8

That the terms +receiving8 and respectively +/erosene8 throughoutthe entire description and the claims presently on file have to read +producing8 or +preparing8and resepectively +petroleum8.This interpretation of the cited terms is to be ta/en into account during the currentexamination of the search application.

2.2 The terms +deoleined until the amount of oil is not higher than 56 mass:mass8 at lines $'3 of the independent claim 1 and respectively at line 4 of dependent claim 2 as *ell asthroughout the entire description7 *hich are hereby interpreted as meaining +deoiled87 renderthe claimed sub0ect'matter in breach *ith the re;uirements of clarity of Rule $5!2& "%C andrespectively Article #$ "%C since they constitute a desired result to be achieved *ithoutindicating *hich technical features must contain the process put into practice in order toachieved the desired deoling step.

2.5 In the same *ay as above7 the terms +refining or hydrorefining8 in the *ording ofindependent claim 1 render the claimed sub0ect'matter in breach *ith the re;uirements ofclarity of Rule $5!2& "%C and respectively Article #$ "%C since they constitute a desired

results to be achieved *ithout indicating *hich technical features must contain the processput into practice in order to achieved the desired refining or hydrorefining step.

2.$ The attention of the applicants is dra*n to the fact that the application originally fileddocuments do not contain any single technical feature concerning the deoiling step !point2.2 above& and respectively the +refining8 or +hydrorefining8 step !point 2.5 above& . As aconse;uence of that it is impossible to consider these steps as forming part of the claimedsub0ect'matter.2.3 In the same *ay7 the presence of desired results to be achieved in the *ording ofindependent claim 1 ! +until the product is received having group compositions of n'paraffin*ith the amount of carbon in molecule C2 to C$ *here it is from $ to #6 of the *axmass and isoparaffin having from C5 to C$ carbons in the molecule in the amount of from

( to 136 of *ax mass8& does not constitute a real technical feature of the claimed process .The same ob0ection applies to each of the desired results to be achieved in the *ordings ofdependent claims 2 and $ presently on flie.


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< I>B">TI>& and file only a

set of claims accordingly. The invention to be excised from *ording and description of the

presenta application can be filed as a divisional application according to the provisions of the

"%C.

$. >B"LT !ARTICL" 3$ "%C&

$.1 @IR,T I>B">TI> !CLAID, 1'$&

The attention of the applicants is dra*n to the fact that only technical features presently in

the *ording of independent claim 1 are considered for the analysis of novelty of the claimed

sub0ect'matters and that desired results to be achieved do not constitute real technical

features of them. As already indicated under point 2.4 the *ording of independent claim 1

and respectively claims 2'$ concern at best9

a process containing one single step namely a single or multiple cascade thin layer vacuumfractionation step!s& for treating a mixture of deoiled and hydrotreated petroleum or synthetic

hydrocarbons *hich must be further characteried by the introduction of the terms ofdependent 5 by indicating that the fractionation is performed under subatmospheric pressurebelo* 3 millibars or preferably belo* 1 mbar.


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TI> !CLAID 3&

$.2.1 TI>& cannot be ac/no*ledged !Article 3$ "%C&.

$.2.2 The attention of the applicants is dra*n to the fact that the originally filed documents donot contain any single feature concerning the rest eight uses presently in the *ording of

independent claim 37 fact *hich is at the origin of an ob0ection of r lac/ of sufficient

disclosure !Article #5 "%C& since none of the purported uses are defined in terms of

technical features and additionally of an ob0ection of lac/ of clarity !Rule $5!2& "%C and

Article #$ "%C& since the s/illed person does not /no* the limits constituting the forbidden

one of the claimed used according to the decision of the boards of appeal !see annexed

copy of the page 2$#7 last paragraph of the Case la* of the )oards of Appeal of the "%F 4 th

"dition7 2?&.

5. INVENTIVE STEP (ARTICLE 56 EPC)

5.1 The analysis of inventive step before the EPO must follow the problem solution approach

of the guidelines (G!""#5 and ff$ which re%uires that the evidence be provided that a

technical problem has effectively been solved in a non obvious way as the conse%uence of a

differentiating technical feature present in the wording of all independent claims.

"n particular# the attention of the applicants is drawn to the fact that &'eatures which cannot be

seen to mae any contribution# either independently or in combination with other features# to

the technical character of an invention are not relevant for assessing inventive step& andrespectively to the fact that &) technical problem may be regarded as being solved only if it is


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credible that substantially all claimed embodiments e*hibit the technical effects upon which

the invention is based& (see G!""#5.+$.

5.+ The absence of a differentiating technical feature (see point ,.1$ in view of -1 does not

allow starting the reasoning according to t he problem solution approach of the guidelines

impeaching therefore any argument concerning the inventive step of the claimed subectmatter of the first invention. The same comment (point ,.+$ applies to the second invention.

5./ The application documents originally filed do not contain any single additional technical

feature (real operational features of the claimed process invention 1# let apart none of use of

invention +$ which could once incorporated into the wording of the independent claim 1

would be of help for overcoming at least one posed technical problem (cited in the application

documents originally filed$ which would not have been solved in an obvious way by the

technical features of -1 taen alone.

5., 0eference is made to the following documents the numbering will be adhered to in therest of the procedure.

-+2 3"PPE- '"4 E!)PO0)TO0 3'E# 1667 from the 3eb8

http899www.pfaudler.com9images9docs9sb/6:1;;.pdf

-/2 "n the absence of at least one differentiating technical feature present in the wording of the

independent claim 1 (claim 5 if the applicant decide to choose this second invention$# which

could be considered responsible for the solution in a non obvious way of technical problem

posed in the application documents originally filed# in view of -1-, the inventive step of the

claimed subectmatter cannot be acnowledged (Guidelines G!"".5ff and )rticle 5> EP@$.
http://www.pfaudler.com/images/docs/sb39_100.pdfhttp://www.pfaudler.com/images/docs/sb39_100.pdf

Documents

1 1 1 Standard Clause English 82 84 p 248 54 56 GVII