My template for Paper B
As you probably know, Paper B is about amending some claims and write a response to an EPO office action. I am now publishing possible sentences for the arguments part. However, please adjust these to the Paper you are doing and do not use my template blindly.
Basis for amendments - Art.123(2) EPC
Claim 1:
Amended claim 1 comprises the features of claim 1 as originally filed and the additional features of claims X and Y as originally filed.
Claim 1 has been amended to define that …
Basis for this amendment is found in …, and thus does not add subject matter against Art.123(2) EPC
In case of deletion from a claim: The feature "…" has been deleted from claim X. This amendment is allowable in the sense of the Guidelines H-V, 3.1 (three point essentiality test).
1. In this regard, the feature is not explained as essential in the disclosure of the application, as § X states that …
2. Further, this feature is not, as such, indispensable for the function of the invention in light of the technical problem the invention serves to solve, because …
3. Also the removal of this feature requires no real modification of other features to compensate for the change. The remaining features of the claim are unchanged, and … Thus the removal of the feature passes the three point essentiality test of GL H-V, 3.1.
Dependent claims:
Claim 2, which corresponds to original claim 2, has been amended to … Basis for this amendment is found in §X of the application as originally filed.
Claim 3, which is based on claim 3 as filed, has been clarified to … Further arguments as to why the claim is now clear are marked as discussed under “Clarity”.
Claim 4, which corresponds to original claim 3, has been amended to … Basis for this amendment is found in §X of the application as originally filed.
Claim 5 has been renumbered as claim … and the dependency was adapted.
Accordingly, all amended claims are in conformity with Art.123(2) EPC.
Unity and conciseness - Art.82, R.43 and R.44 EPC
If necessary, argue why there are two independent claims from the same category (R.43(2)(a)/(b)/(c) EPC).
If necessary, argue why the independent claims are unitary (Art.82, R.44 EPC): describe what the same or corresponding special technical feature is.
(Both requirements have to be satisfied and argued separately, but only for the independent claims.)
A substantive assessment of unity requires (GL F-V, 2):
1. Determining in the light of the application as a whole, the subject- matter that is common to the claims, that is, the technical features that are the same or corresponding
2. Examining whether any of this common matter is special, in the sense that they make a contribution over the prior art.
Consequently, the requirements of both Art. 82 EPC (unity) and Rule 43(2) EPC are fulfilled.
Clarity - Art.84 EPC
Under point 5 of the communication the examining division raises the that the …
This objection is overcome by the wording of the amended claim such that …
It is respectfully submitted that the amended set of claims is clear within the meaning of Article 84 EPC.
Novelty - Art.54 EPC
Claim 1:
According to independent claim 1 as amended
Document D1 does not disclose a …
Document D2 does not disclose a …
Document D3 does not disclose a …
The conclusion is, therefore, that neither the disclosure of D1, nor the disclosure of D2 or D3
comprises all features set out in the amended claim 1.
It follows that the subject-matter of claim 1 is novel within the meaning of Article 54 EPC.
Independent claim X:
Document D1 does not disclose a …
Document D2 does not disclose a …
Document D3 does not disclose a …
The conclusion is, therefore, that neither the disclosure of D1, nor the disclosure of D2 or D3
comprises all features set out in the amended claim X.
It follows that the subject-matter of claim X is novel within the meaning of Article 54 EPC.
Dependent claims Y to Z are novel by merit of dependency on claim 1.
Similarly, claim W is novel, because it depends on independent claim X.
Inventive step - Art.56 EPC
(Do not miss any steps of Problem solution approach in your inventive step argument.)
Claim 1 relates to …
Dx is the closest prior art (CPA) because it relates to the same purpose of … and is from the same technical field of … (You should also discuss all documents shortly and then conclude why Dx is the closest prior art, e.g. “Dx is the only document disclosing…”)
Dx discloses …
Claim 1 differs from Dx in that …
The effect of this feature is … (Cite the relevant paragraph from the patent application.)
This solves the technical problem of …
The solution according to the invention is not obvious to the skilled person for the following reasons:
- Arguments for CPA on its own: … (Argue why the person skilled in the art would not
arrive at the claimed invention on the basis of the closest prior art taken on its own.)
- Arguments for CPA+D2:
Starting from D1 and considering the technical problem set out above, the skilled person would (not) turn to document D2, since D2 relates to…
D2 does not contain any specific disclosure regarding the …
When combining the teachings of documents D1 and D2, the skilled person would still not arrive at the present invention, since there is no suggestions that … is capable of solving the technical problem.
(Argue why the person skilled in the art would not
combine the documents in order to arrive at the claimed invention. Describe how the subject-matter resulting from such a combination is different from the claimed invention.)
- Arguments for CPA+D3:
For these reasons, it is not obvious for the skilled person to arrive at the subject-matter of independent claim 1 from the technical teaching of Dx, taken as such or in combination with D2 or D3. Thus, claim 1 is in conformity with Article 56 EPC.
Claim X relates to … (Do the same steps for any other independent claims regarding inventive step. The independent claims may have different CPA!)
The dependent claims fulfil the requirements of inventive step by virtue of their dependence on claim 1 and claim X.