Seminar Schedule Patent Examination Practices of KIPO and

Seminar Schedule Patent Examination Practices of KIPO and EPO TIME TITLE PRESENTER 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 KOREAN INTELLECTUAL PROPERTY OFFICE 1

Patent Examination in the Korean Intellectual Property Office Automobile Examination Division Lee Changwon Patent Examiner / Ph. D. KOREAN INTELLECTUAL PROPERTY OFFICE 2

Organizational Structure 9 bureaus including 5 patent examination bureaus and the Quality Assurance Division KOREAN INTELLECTUAL PROPERTY OFFICE 3

Statistics KOREAN INTELLECTUAL PROPERTY OFFICE 4

KIPOnet System Patent application & examination system KOREAN INTELLECTUAL PROPERTY OFFICE 5

Front View of the KIPOnet Patent System Due Dates Overdue Today 1 W Links to Search Systems 1 M 3 M Examination Results Patent/Utility Model PCT Preferential Examination Re-examination Trial/Appeal Approval KOREAN INTELLECTUAL PROPERTY OFFICE 6

Examination Prosecution Page Filing Dates Application # Publication Date Applicant # of Claims Inventor IPC Title Office Actions from Other Countries Priority under Treaty Specification of the Invention Automatic Checking for Claim Clarity KOREAN INTELLECTUAL PROPERTY OFFICE 7

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

One Portal Dossier (OPD) System Korea China Europe Japan USA KOREAN INTELLECTUAL PROPERTY OFFICE 9

Searching for Prior Art Korean / English / Japanese USA / EP / WIPO CN / UK / CA / AU / GE / FR / TA / RU Figure Abstract Claims CPC / IPC Application # Image Viewer Title Abstract Claim Keywords KOREAN INTELLECTUAL PROPERTY OFFICE 10

Translation Service English, Chinese, and Japanese Chinese Korean KOREAN INTELLECTUAL PROPERTY OFFICE 11

Notice of Grounds for Rejection Selection of Grounds for Rejection Reasons for Refusal Attachment of Prior Arts Applicants, Inventors and Patent Attorney KOREAN INTELLECTUAL PROPERTY OFFICE 12

Case Study: Application Number : KR 10 -2010 -7014727 KOREAN INTELLECTUAL PROPERTY OFFICE 13

Registration Information of the Application TITLE OF INVENTION OIL MIST SEPARATOR (오일 증기 분리기) APPLICATION DATE (출원일) 2010. 07. 02 FOREIGN APPLICATION PRIORITY DATE (국제출원의 우선일) 2007. 12. 21 PUBLICATION DATE (공개일) 2010. 08. 23 APPLICANT (출원인) MAHLE INTERNATIONAL GMBH IPC F 01 M 13/04 KOREAN INTELLECTUAL PROPERTY OFFICE 14

Brief Introduction to the Application : Figure 1, 3 & 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 KOREAN INTELLECTUAL PROPERTY OFFICE the impact wall when the blow-by gas 15

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 KOREAN INTELLECTUAL PROPERTY OFFICE 16

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 through 13 which quote Claim 1 again. Therefore, the invention in Claims 1 -13 is deemed unclear. KOREAN INTELLECTUAL PROPERTY OFFICE 17

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 KOREAN INTELLECTUAL PROPERTY OFFICE 18

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) KOREAN INTELLECTUAL PROPERTY OFFICE 19

Use of PCT International Work Products Effective documentation was found in the PCT International Search Report KOREAN INTELLECTUAL PROPERTY OFFICE 20

Check Results from Other Offices KIPO SIPO EPO JPO USPTO DATE of FA : 2014. 09. 19 DATE of DG : 2013. 11. 06 DATE of DG : 2013. 01. 29 DATE of DG : 2012. 05. 18 DATE of DG : 2013. 05. 07 KOREAN INTELLECTUAL PROPERTY OFFICE 21

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 ? No Yes End of search Further analysis of prior art documents KOREAN INTELLECTUAL PROPERTY OFFICE 22

Search Keys (IPC, CPC, FI/F-term) and Queries Search Key (IPC) IPC classification Technical field Main F 01 M 13/04 Crankcase ventilating or breathing having means for purifying air before leaving crankcase, e. g. removing oil Sub B 01 D 45/04 Separating dispersed particles from gases or vapours by gravity, inertia, or centrifugal forces by utilising inertia 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(*) KOREAN INTELLECTUAL PROPERTY OFFICE 23

Prior Arts Found in Search No Application Number Application source Category 1 JP 2005 -201080 A (TOYOTA INDUSTRIES CORP. ) PCT ISR X 2 JP 2001 -336413 A (TOKYO ROKI CO. , LTD. ) OPD Y 3 WO 2007 -053411 A 2 (DONALDSON CO. , INC. ) OPD Y 4 JP 2003 -531330 A (VORTEX AUTOMOTIVE CORP. ) KOMPASS A 5 JP 2005023824 A (UCHIHAMA KASEI K. K. ) KOMPASS A 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 KOREAN INTELLECTUAL PROPERTY OFFICE 24

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 KOREAN INTELLECTUAL PROPERTY OFFICE 25

Evaluation of Novelty Claim 1 JP 2005 -201080 A Evaluation 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 KOREAN INTELLECTUAL PROPERTY OFFICE 26

Evaluation of Inventive Step: Claim 1 Not identical element of the invention Claim 1 JP 200800061763 A 0 Estimation 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 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. KOREAN INTELLECTUAL PROPERTY OFFICE 27

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 KOREAN INTELLECTUAL PROPERTY OFFICE 28

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 KOREAN INTELLECTUAL PROPERTY OFFICE 29

Predicted Response or Opinions from Applicants : Predicted Amendments 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)) KOREAN INTELLECTUAL PROPERTY OFFICE 30

Thank you for your attention KOREAN INTELLECTUAL PROPERTY OFFICE 31