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My PCT application (at EPO) has been rejected due to the lack of novelty and inventive step. Now, I am considering amendment of the claims under Article 34 PCT.

The description contains the following sentence: „When more than one widget is needed, a plurality of widgets should be arranged, aligned in a row.“ Also, in the drawings, a figure showing the widgets aligned in a row is provided.

The method of use claim reads „said widgets are aligned in a row.“, whereas claim 1 does not mention this feature at all.

Is it allowable to amend the claim 1 by adding „a plurality of said widgets is aligned in at most one row,“ and removing the corresponding part of the method of use claim?

Thank you in advance.

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Amendment under Article 34 PCT is only possible if you are proceeding to International Preliminary Examination. Is this the case? Furthermore, if you only intend to proceed to EPO, is there any special reason you want to amend the claims now and not within the EP phase? Provisional protection perhaprs? I just want to make sure that you are aware of the fact that you can amend claims upon entry in EP.

Now, to the point. I think the phrase "at most one" will be objected to. But I am only using the short expert from the description you provided me with. Is it important to limit to only one row? After all the description reads "a row" which implies singular. Is there basis in the description for the indefinite article "a" to be interpeted as plural as well? Is there any example you may be able to use?

  • I think EPO = IPEA and/or ISA – DonQuiKong Jun 18 '18 at 12:12
  • Yes, EPO is ISA in which case it will also be IPEA, but only if he requests International Preliminary Examination, since this is not mandatory in contrast to the International Search Report. If he does not, the application will only enter EPO upon 31 months from earliest prio date of filing date and he can file amendments then. – chempatent1981 Jun 18 '18 at 12:37
  • I am considering IPE as a vehicle to obtain a positive report (the positive report is a must at the moment). After a positive report, I plan to proceed to the national phase, out of Europe. Considering a question, yes, it is important to limit to only one row. Namely, a multi-row and two-row embodiments are already known in the art but single-row not. Therefore, I try to use that feature as proof of novelty and inventive step. I am afraid that a novelty of an „aligned in a row“ feature could be invalidated by the two-row solution, already known in the art. – RobyK Jun 18 '18 at 12:42
  • OK, I understand. I am reluctant to answer here, because the whole description usually gives a proper meaning in such expressions. If it is not mentioned anywhere in the text that it is "at most one" row, either implicitly, or explicitly, there is a good chance you will get an objection. Using "a" row is just an indefinite article, while "at most one" sets a new framework to the invention and one can argue you are creating an essential feature that was not there. It really depends on how you presented the invention. You need to find some king of support in the description, examples/drawings. – chempatent1981 Jun 18 '18 at 13:06
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The wording "at most one row" cannot be derived from solely the example of "a row" and is therefore not allowable (generalisation/missing support). [Unless there are other examples]

The reason is, "at most one" means "exactly zero or exactly one". Exactly one could be derived from "a", depending on context.

So without an example of no rows, zero rows would be added matter.

The question if a row and exactly one row are the same would be a question of context, but unless you have an example for zero rows, it's almost purely academical because there's a risk and no gain - either "a row" is equal to "exactly one row", then it doesn't matter, or it's not, then you rather want "a row" to fall in examination than "exactly one row" to maybe pass and then get invalidated.

Either you have some wording for "exactly one row" in the description that you can use, or you will probably have to risk your chances with "a row". Which I would consider reasonable (at least for meaning "exactly one row", I don't know about inventiveness).

Disclaimer: As the information is limited, this is a rather general analysis and your spcific case might just be one of those edge cases.

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