If the applicant replies to the Rule 71(3) communication by requesting that a grant be based on a higher-ranking request and the examining division is not convinced by the arguments and evidence filed by the applicant with his reply, the examining division resumes examination following the procedure in C-V, 4.7.1. The examining division may also directly refuse the application providing a full reasoning under the proviso that:
For the purposes of determining whether the reasons not to grant the higher-ranking requests given in the communication under Rule 71(3) allow the division to issue a refusal, a general indication such as "Auxiliary request 3 is not clear because an essential feature is missing" is not sufficient. Rather, a more detailed statement is needed to ensure that the applicant's right to be heard is properly respected. For example, the division may provide the applicant with an explanation such as: "Auxiliary request 3 is not inventive in view of D1 (see col. 5, lines 25-46; fig. 4) because the skilled person, wishing to avoid friction between the cable and the carpet, would make the clip recess deeper than the cable diameter".
Date retrieved: 30 December 2018
9 references found.Click X to load a reference inside the current page, click on the title to open in a new page.
EPC Implementing Rules
EPO Guidelines - C Procedureal Aspects of Substantive Examination
XGL C V 4.6.2 Second Rule 71(3) communication based on higher -ranking request initially rejected in first Rule 71(3) communication