TIMETITLEPRESENTER 13:20 ～ 13:50 Patent Examination and Case Study Lee Changwon 13:50 ～ 14:20 Clarity (How does the EPO deal with unclear applications?) EPO 14:20 ～ 14:50 Disclosure (How strict should we be?)EPO 14:50 ～ 15:00 Discussion October 15, 2014 Seminar Schedule Patent Examination Practices of KIPO and EPO Patent Examination Practices of KIPO and EPO

Patent Examination in the Korean Intellectual Property Office

Organizational Structure 9 bureaus including 5 patent examination bureaus and the Quality Assurance Division

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KIPOnet System Patent application & examination system

Front View of the KIPOnet Patent System Preferential Examination Patent/Utility Model Trial/Appeal Re-examination Due Dates Overdue Today 1W 1M 3M Examination Results Approval Links to Search Systems PCT

Examination Prosecution Page Application # Publication # Filing Dates Priority under Treaty Office Actions from Other Countries IPC Automatic Checking for Claim Clarity # of Claims Title Applicant Inventor Publication Date Specification of the Invention

A claim is dependent on a deleted claim(s) Unclear expression "approximately", “about”, etc. “Said step a)”: step a) has not been mentioned in Claim 4 or in Claim 1 from which it depends Automatic Checking for Claim Clarity Relationship between the claims (claim structure) Multiple dependent claims can not depend on other multiple dependent claims (Article 42-8) Claim

One Portal Dossier (OPD) System Korea China Europe Japan USA

Searching for Prior Art Korean / English / Japanese USA / EP / WIPO Application # Keyword s Figure Abstract Claims CPC / IPC Image Viewer Title Abstract Claim Title Abstract Claim CN / UK / CA / AU / GE / FR / TA / RU

Translation Service English, Chinese, and Japanese Chinese Korean

Notice of Grounds for Rejection Selection of Grounds for Rejection Attachment of Prior Arts Applicants, Inventors and Patent Attorney Reasons for Refusal

Case Study: Application Number : KR

Registration Information of the Application TITLE OF INVENTION OIL MIST SEPARATOR ( 오일 증기 분리기 ) APPLICATION DATE ( 출원일 ) FOREIGN APPLICATION PRIORITY DATE ( 국제출원의 우선일 ) PUBLICATION DATE ( 공개 일 ) APPLICANT ( 출원인 ) MAHLE INTERNATIONAL GMBH IPCF01M 13/04

Brief Introduction to the Application : Figure 1, 3 & Claim 1 Claim 1 Purpose of the invention Oil particle separation from blow-by gas in PCV system Constitution of the invention A positive crankcase ventilation oil mist separator system, comprising: a first separator unit (2), wherein the first separator unit includes at least one filter body (10) arranged in a blow-by gas path (11) such that blow-by gas flows through the filter body; a second separator unit (3), wherein the second separator is an impactor separator arranged in a bypass path (18) that bypasses the first separator unit (2); and a bypass valve (4), which opens the bypass path as soon as a differential pressure at the first separator unit exceeds a predefined value, wherein the second separator unit comprises an impact wall (19) formed by a section of the filter body of the first separator unit, and a flow directing element which directs the blow-by gas flow against the impact wall when the blow-by gas path is open.

Search and Examination Process for Applications 1)Interpretation of Claims and Requirements for Description and Claims 2)Search Process 3)Novelty and Inventive Step 4)Drafting Notification to Applicant

Interpretation of the Claims Claim 1. A positive crankcase ventilation oil mist separator system, comprising: a first separator unit, wherein the first separator unit includes at least one filter body arranged in a blow-by gas path such that blow-by gas flows through the filter body; a second separator unit, wherein the second separator is an impactor separator arranged in a bypass path that bypasses the first separator unit; and a bypass valve, which opens the bypass path as soon as a differential pressure at the first separator unit exceeds a predefined value, wherein the second separator unit comprises an impact wall formed by a section of the filter body of the first separator unit, and a flow directing element which directs the blow-by gas flow against the impact wall when the blow-by gas path is open. Although it is described in Claim 1 as “an impact wall formed by a section of the filter body of the first separator unit”, it is unclear in what constitutes “the section of a filter body(10)”. The same can be said for the Claims 2 through13 which quote Claim 1 again. Therefore, the invention in Claims 1-13 is deemed unclear.

Search and Examination Process for Applications 1)Interpretation of Claims and Requirements for description and Claims 2)Search Process 3)Novelty and Inventive Step 4)Drafting Notification to Applicant

Preliminary Search Procedures : Guidelines for Examination (Part V, Chapter 2, Section 2) 1)Analyze the claimed invention 2)Examine documents cited in the specification 3)See ISRs and preliminary examination reports for PCT applications 4)Check the results from other offices (T-PION, OPD) 5)Consider outsourcing prior art searches (Art. 58)

Use of PCT International Work Products Effective documentation was found in the PCT International Search Report

Check Results from Other Offices KIPOSIPOEPOJPOUSPTO DATE of FA : DATE of DG : DATE of DG : DATE of DG : DATE of DG :

Search Process with Queries Analysis of claimed inventions Technical field, queries Selection of database KOMPASS, Google scholar, etc. Execution of search Instant optimization of queries Analysis of results Satisfactory ? End of search Further analysis of prior art documents No Yes

Search Key (IPC) Search queries (for Claim 1 of the invention) US/EP/CN/WO (English), KR (Korean), JP (Japanese) : Crankcase & Vent* & PCV & filter & (impact | baffle) AND(&), OR(|), WILDCHAR(*) IPC classification Technical field MainF01M 13/04 Crankcase ventilating or breathing having means for purifying air before leaving crankcase, e.g. removing oil SubB01D 45/04 Separating dispersed particles from gases or vapours by gravity, inertia, or centrifugal forces by utilising inertia Search Keys (IPC, CPC, FI/F-term) and Queries

Based on the search databases and queries, 5 documents were found and the closest invention was chosen In the next session, the closest invention will be compared to the claimed invention to examine Novelty and Inventive Step NoApplication NumberApplication source Category 1JP A (TOYOTA INDUSTRIES CORP.)PCT ISRX 2JP A (TOKYO ROKI CO., LTD.)OPDY 3WO A2 (DONALDSON CO., INC.)OPDY 4JP A (VORTEX AUTOMOTIVE CORP.)KOMPASSA 5JP A (UCHIHAMA KASEI K.K.)KOMPASSA Prior Arts Found in Search

Search and Examination Process for Applications 1)Interpretation of Claims and Requirements for Description and Claims 2)Search Process 3)Novelty and Inventive Step 4)Drafting Notification to Applicants

Claim 1JP AEvaluation Purpose of the invention The oil particle separation from blow-by gas in PCV system The oil separation from blow-by gas in cylinder head cover Highly similar Field of Tech. Constitution of the invention a first separator unit (2), wherein the first separator unit includes at least one filter body(10) arranged in a blow-by gas path(11) A first filter (8) (see paragraph [0010] and figure 1) Exactly identical a second separator unit (3), wherein the second separator is an impactor separator arranged in a bypass path(18) and includes a flow directing element(20) A second filter (9) (see paragraph [0010] and figure 1) Not exactly/ substantially identical (The cited invention is expressed in a generic concept) a bypass valve (4), which opens the bypass path as soon as a differential pressure at the first separator unit exceeds a predefined value A relief valve (12) (see paragraph [0011] and figure 1) Exactly identical Evaluation of Novelty

In paragraphs [0010] and [0011], no clear statement is described about the impactor and the flow directing element. However, there are walls which directing a flow and working as an impactor located in primary flow path in figure 1. Claim 1JP A0 Estimation Not identical element of the invention a second separator unit(3), wherein the second separator is an impactor separator arranged in a bypass path (18) and includes a flow directing element(20) The second filter (9) is located behind a flow directing wall (see paragraph[0010], [0011] and figure 1) -Sufficient motivation -Exercise of ordinary creativity -No advantageous effects over the cited invention Evaluation of Inventive Step : Claim 1

Search and Examination Process for Applications 1)Interpretation of Claims and Requirements for Description and Claims 2)Search Process 3)Novelty and Inventive Step 4)Drafting Notification to Applicants

Types of Notification Non-Final Notification - The first notification issued since the start of an examination - The notification based on the reasons for refusal which are not necessitated by the amendments made in response to the previous notifications Final Notification The notification based on the reasons for refusal all of which are necessitated by the amendments made in response to the previous notifications

1)Grounds for rejection on Patent Act Article 42(4)2 : Grounds for rejection can be cleared by combining definite claim 14 and indefinite claim 1. Direct/Indirect dependent claims of claim 1 (claims 3 to 13, 15) can also become definite. 2)Grounds for rejection on Patent Act Article 29(2) : Amendments with opinion - An amendment to the specification or drawings under paragraph(1) shall be made within the scope of the features disclosed in the specification or drawings initially attached to the patent application (PCT Act Article 47(2)) Predicted Response or Opinions from Applicants : Predicted Amendments

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