DATE MONTH YEAR

priority date 7 6 2005

12 months 7-Jun-2006 PCT entry

18 months 7-Dec-2006 Publication

31months 7-Jan-2008 National Phase entry

48 months 7-Jun-2009 Request for Examination

4. Priority document should be filled. Priority application has only 3 claims. This instant application claims
4-11 are not fairly based on the priority application claims. Further, Claims 12-15 are also not fairly based on the
priority application. Hence, claims 4-15 are not allowed under the Act.

4. There are 35 claims in the International (PCT) application, however, this instant (NP) application has 34 claims.
Hence, this instant application is not allowed U/R 7(2)(c) and U/S 10(4-A) and 138(4) of the Act, unless fees for
additional claims is filed with necessary petition and fees to regularize this irregularity, failing which this instant
application shall proceed U/S 142(3) of the Act.

6. Proof of assignment of right from inventor to applicant should be furnished under clause (2) of
section 7 of Indian Patents Act , 1970. / Proof of right is not submitted in prescribed manner under
section 7(2) and under rule 10.

Proof of right to make the application has not been filled within the stipulated period of 3 months under ule
10 of the patents Rule ,2003 and thereof, a petition under rule 138 requesting the controller for extending
the said time limit should be filled.

7. Name and signature of authorized agent should be given at the end of all forms, drawing sheets
and at the end of claims in prescribed manner.

8. Priority document should be filled.

12. Notwithstanding other objections, following are required to be submitted:

(a) Corresponding PCT application and/ or certified English translation of the same to ascertain if
the specification/ claims in this instant application are filed in prescribed manner.

(b) Clarification if this instant (NP) application is indeed filed U/R 7(2)(c) read together U/S 10(4-
A) and 138(4) of the Act in respect of additional specification pages (including Form-2, Abstract
and Drawings) and claims and fees submitted thereof, else this instant application may proceed
U/S 142(3) of the Act .
13. Power of Authority in favour of Agent duly executed by the applicant and duly stamped under
the said Act or the prescribed form 26 should be filed to ratify the actions of agent, in accordance
with rule 135 of The Patents Rule, 2003 as amended by The Patents Amendment Rules, 2006.

GPA should be filled ./ signed by the applicant . / authorised agent .

16. The annexure to form 3 should be submitted with necessary petition.

The statement and undertaking on form 3 as required under subsection (1) of section 8 of the
patents act , 1970 should be filled .

19. The Drawings referred to in the specification should be prepared in accordance with the
instructions contained in the Rule 15 of the Patent rules.

20. Preamble to claims should be amended to read as "We claim" in the specification.

20.

Sl. No. Requirements under the Claim Remarks

Act Numbers
1. Invention Novelty Claims: Yes
u/s 2(1)(j)
Claims: No
1- X

Inventive step Claims: Yes

Claims: No

Industrial Claims: Yes

Applicability
Claims: No

2. Non-patentability u/s 3 Claims: Yes

(if yes, specify
section3(a-p))
Claims: No
1-X

Non-patentability u/s 4 Claims: Yes

3.
Claims: No
4. Unity of invention u/s 10 Claims: Yes
(5)
Claims: No
X-Y

5. Sufficiency of disclosure NO
u/s 10 (4)
(Specify Yes/No)
6. Reference to co-
pending/foreign
application(s) required
(Specify Yes/No)
7. Claims Clarity / Claims: Yes
[u/s 10(5) Conciseness
& 10(4)
(c)] Claims: No
1-X

Definitive Claims:
Yes

Claims: No
Supported by Claims: Yes
description
Claims: No

Scope Claims: Yes

Claims: No

8. Other requirement(s):
YES

B. Detailed observations on the requirements under the Act:

Novelty:
(i) 1- X
Claim(s) lack(s) novelty, being anticipated in view of
 disclosure in the docume In view of the following documents
D1:
D2:
D3:
D4:
D5":

D1 teaches

D2 describes

D3 teaches

D4 describes

D5 teaches

It is obvious for a person skilled in the art to produce the present invention by combining effects of
the above documents. Hence the present invention is not novel and falls under 2(1)(j) of the patent act.

nt cited above under reference . for the following reasons:

INVENTIVE STEP:
(ii)
Claim(s) lack(s) inventive step, being obvious in view of teaching
(s) of cited document(s) above under reference . for the following
reasons:

INDUSTRIAL APPLICABILITY:
(iii)
Claim(s) lack(s) industrial applicability for the following
reasons:

NON PATENTABILITY:
(iv)
Claim(s) are statutorily non-patentable under the provision of
clause ( ) of Section 3 for the following reasons:

Claims 17 and 18 fall within the scope of section 3(k) of the Patent Act, 1970 in absence of the technical features
disclosed therein and therefore liable to be non patentable.

The invention is an artistic work or any other aesthetic creation and also the mere arrangement or re-
arrangement or duplication of known devices each functioning independently of one another in a known
 way under section 3(i) and 3(f) of patent act respectively ,hence not patentable.

In absence any structural limitations, subject matter of these claims is mere

scheme and/or mental act and hence falls within scope of clause
(m) of section (3) of the Patents Act, 1970 (as amended). Therefore invention
claimed in said claims is not patentable.

(v)
Claim(s) are not allowable under section 4 of the Patents Act,
1970.
UNITY OF INVENTION:
(vi) 1-X
Claim(s) lack(s) unity of invention as the claims do not relate to
a single invention or to a group of inventions linked so as to form a single
inventive concept:

The independent claim 11 is not clear in view of the undefined term "graphite electrode and graphite body" therein,
and lack unity with the principal claim 1 as per section 10(5)of the act.

Present set of claims defines a plurality of distinct inventions as follow:

Group (1): Claims ---

Mention the inventive feature(s)

Group (2): Claims ---

Mention the inventive features(s)

The inventions listed in these two groups define separate inventions as stated
above and are not linked so as to form single general inventive concept as defined u/s 10(5) of the
Patents Act, 1970(as amended).
(vii)
Claim(s) of the instant application conflict(s) with
claim(s) of co-pending application no. .
SUFFICIENCY OF DISCLOSURE:
(viii)
Claim(s) are not fairly based on the matter disclosed in the
specification or not supported by the disclosure in the specification for
the following reasons:

(ix) The complete specification does not fully and particularly describe the
 invention and its operation and the method by which it is to be performed
in respect of:

(x) The specification does not disclose the best method of performing the
invention which is known to the applicant and for which he is entitled to
claim protection for the following reasons:

(xi) Abstract: Abstract should be prepared in accordance with the instructions contained in the Rule
13{7(d)} of the Patent Rules, 2003(as amended in 2006).

(xii) Title of Invention: Title is inconsistent with description and claims.

(xiii) Drawings are not prepared in accordance with the provisions of Rule 15
of the Patents Rules, 2003 for the following reasons:

The Drawings referred to in the specification should be prepared in accordance with the
instructions contained in the Rule 15 of the Patent Rules, 2003(as amended in 2006).
Drawings are not prepared in accordance with the provisions of Rule 15 of the
Patents Rules, 2003.

(xiv) Information of source and geographical origin of biological material used

in the invention:

(xv) Details of depositing the biological material to an International

Depository Authority under the Budapest Treaty:

SCOPE:
(xvi)
Claim(s) does/do not define the scope of invention for which
the protection is claimed for the following reasons:

CLARITY AND CONCISENESS:

(xvii) 1, X
Claim(s) are not clearly worded in respect of:

Without pre- judice to earlier objection, in view of plurality of independent sets of claims
the nature and scope of the invention is not clearly definitive. They should be re-drafted to incorporate all the
inventive features in the characterised clause of principal claims and subsidiary features in the dependent claims.
The inventive features should be characterised over prior art supplemented by reference numerals to enhance the
intelligibility of claims.

DEFINITIVENESS:
(xviii)
Claim(s) do not sufficiently define the invention for the reasons
as follows:

The term "without usage of any raw materials" in claim 1, 5 and in

abstract is a relative term which renders the claim indefinite.
OTHERS REQUIREMENTS:
(xix)

Omnibus Claim 11 is indefinite and do not satisfy the requirement of

section 10(4) (c) of the Patents Act, 1970(as amended).
Claims 12 and 13 are not clear in respect of expression as herein described with
reference to accompanying drawings. These statements make the claims ambiguous and
vague. Also said expression makes it difficult to ascertain the subject matter for which
protection is sought and hence do not fulfill the requirements of section 10(4)(c) of the
Patents Act, 1970 (as amended).

Dependent Claims are not clear in respect of the expression "further comprising","AT LEAST"

Dependent claims are not clear in respect of the expression further comprising. It should be deleted
from claims or aptly reworded.

Dependent claims are not clear in respect of the expression means. means should be deleted from claims or aptly reworded.
Drafting of claims is not proper because of which the nature & scope of the alleged invention cannot be clearly
ascertained. The statement of claims should therefore be revised & all essential features of the invention should be
brought in claim1 while subsidiary features of the invention may be claimed in dependent claims.
The online examination has been
done on the basis of documents
available in the e-module .Put up for
controllers consideration.

B(I)

n view of the following documents

D1:
D2:
D3:
D4:
D5":

D1 teaches

D2 describes

D3 teaches

D4 describes

D5 teaches

It is obvious for a person skilled in the art to produce the present invention by combining effects of the
above documents. Hence the present invention is not novel and falls under 2(1)(j) of the patent act.

Abstract should be prepared in accordance with the instructions contained in the Rule 13{7(d)} of the Patent
Rules, 2003(as amended in 2006).

The essential technical features of the claims should be provided with reference signs placed in parentheses to
increase the intelligibility of the claims . This applies to both the preamble and characterising portion .

Omnibus Claim 11 is indefinite and do not satisfy the requirement of section 10(4) (c) of the Patents Act,
1970(as amended).
Dependent claims are not clear in respect of the expression further comprising.

Claims are not clear in respect of , which should be elaborated therein.

You are required to provide breakup of fees in respect of additional pages of the complete specification (including
Form-2 as the 1st page of specification, Abstract and Drawings) in your response. In case you have not filed the
adequate fees for the same U/R 7(2)(c), balance fees in rtion espect of additional pages should be submitted
immediately along with necessary petition and fees, failing which the instant application shall proceed U/S 142(3) of
the Act.
However, without prejudice.

Formal Check list

NA YES NO
Fees Fees submitted for additional claims than 10
Fees submitted for number of pages additional to 30 pages
Fees submitted for additional no. of priority
Time Date of filing within 31 months from earliest priority date, in case
of PCT application
Date of filing within 12 months from earliest priority date, in case
of convention application
Request for examination should be filed within 48 months from the
earliest priority date
In case of provisional application, complete specification should be
filed within 12 months
In case of Divisional application, the application should be filed
before grant of the parent application.
Publication Application should be published u/s 11A before examination
PCT & For PCT application, National phase application should be same as
Convention international application regarding claims, description, Name,
al Check nationality & address of applicants, Name, nationality & address of
inventors, title of invention, drawings and abstract
Subject matter of convention application should be within scope of
priority document
English translation certificate for international application should be
submitted within 31 months in case of PCT application is filed and
 published in any other language (as per rule 20(3))
Priority document should be submitted within 31 months in case of
PCT/IB/304 is not filed during international phase (as per rule
21(1))
Duly verified copy of English translation of priority document
should be submitted within 31 months, if PCT/IB/304 is not filed
during international phase and priority document is not in English
(as per rule 21(2))
If application filed is derived from one application filed out side
India and any of the inventors or applicants is an Indian resident,
Whether Form 25 submitted? (u/s 39)
Form 1 Address for service should be within India
Jurisdiction of the application is proper
Title should be limited to 15 words
Para 5 of form 1 should be filled in case of PCT and Convention
application
Para 6 of form 1 should be filled in case of PCT application
Para 7 of form 1 should be filled in case of divisional application
Para 8 of form 1 should be filled in case of patent of addition
application
Proof of right (Para 9(i) of form 1) should be signed by inventors
/assignee in convention country and submitted within 6 months
Form 3 Form3 should be in prescribed format
Form 3 should be submitted at the time of filing or within 6 months
from filing of application
Filing of application in any country should be reflected in Form 3
within 6 months from corresponding date of filing
Form 5 Form 5 should be in prescribed format
Required when Provisionalcomplete, PCT/Conventional
At the time of filing or within the extended period of 1 month with
form 4.
Name, Nationality and address of inventors and applicants in form
5 should be consistent with Form 1.
Form 6 Check for change of name & supporting documents
PA in favour of the agent from the new claimant.
All subsequent documents filed in the name of new claimant
Form 13 Form 13 regarding any change in name, nationality and address of
applicant or inventor or change of address for service should be
submitted along with Rs 800/- fee
Same changes should be reflected in all documents.
Form 13 regarding any technical change should be submitted with
Rs 2000/-
These technical amendments should be within scope of previous
disclosure
A mark-up copy filed suitably indicating the amendments.
Form 18 Name, Nationality and address of applicants, Title of invention and
address for service in form 18 should be consistent with Form 1.
PA/GPA/Fo All forms should be signed by authorised patent agent declared in
rm 26 PA/GPA
Title of invention in PA should be consistent with form 1
Photo copy of GPA should be self-attested by agent
Designation and name of signatory authority in PA/GPA should be
mentioned
 PA/GPA should be made in Rs 100/- stamp paper
Form 2 Title of invention, Name and address of applicant in form 2 should
be consistent with form 1
References in the form of application numbers should be deleted or
replaced with the relevant publication numbers if the application
was published at the time of filing of the PCT application
Reference to Foreign provisions should be removed from the
complete specification
Irrelevant portion shall be deleted and blank spaces shall be scored
out in the complete specification
Claims should be prefaced with the words We Claim
The size of the font used in the complete specification should be
increased in order to make the complete specification legible
The complete specification should be prepared following the
margin requirement prescribed in rule 9
Description given in complete specification should be in prescribed
format and divided in different sections like field of invention,
background etc.
Date and sign of applicant/agent should be mentioned at the end of
claims
Abstract Abstract should be limited to 150 words.
Title in abstract should be consistent with Form 1
Necessary figure should be mentioned in Abstract
Drawings Neat and clearly scaled figures should be given on standard A4 size
sheets with a clear margin of at least 4 cm on top and 3-3 cm in
other sides
No drawings or sketch should appear in the specification itself
Drawings except flow diagrams should not include any descriptive
matter
Drawings should contain the name of applicant in the left hand top
corner, the number of sheets of drawings and the consecutive
number of each sheet in right hand top corner and the signature of
applicant or his agent in right hand bottom corner
Petition u/r For proof of right after 6 months (u/r 10)
137 For foreign filing details after 6 month (u/r 12)
For English translation after 31 month from priority (u/r 20(3)(b))
For Declaration of inventorship (Form-5) after 1 month (u/r 13(6))

Technical Check list

NA YES NO
Title Title discloses the specific features of the invention
Sufficiently discloses the invention
Description Best method is disclosed
No Vague terms like spirit in description
Abstract Abstract is providing the technical information on the
invention [u/s 10(4)(d) & u/r 13(7)].
Drawings Figures are sufficiently disclosing invention.
Patentability Single inventive concept u/s10 (5)
Patentability u/s 2(1)(j)
 Invention should not fall u/s 3 / 4
Divisional If Divisional application, then check the claims & its
scope
Parent application sec.16(3)
Claims Addition of claims u/s 57 /59
No Redundant claims
No Use claims
No Omnibus claim
Clarity in claims
Support of claims in the description
Proper dependency of the dependent claims
No Grammatical errors like comma & full stop at
claims etc.
No Multiple Independent claims
Object should be mentioned in preamble of claims
Patent Strategy Prepare search strategy
Find of keywords synonymous keywords & there
combinations
Search Novelty & Inventive step by various search
engines & make search
Prepare detailed report

Reply to FER

Mark-copy for Technical amendment should be given.

All amendments within scope of original disclosure.

No. Reason
Objections
waved off

Objections
maintained

Newly added
objections