1.

The examination of the present search case has been carried out on the set of five claims
and the rest of documents originally filed .
2. CLARITY (ARTICLE 84 EPC)
2.1 It seems from the summary of the polish patent PL-17712 B1 which reads approximately
Sposb otrzymywania surowca dla woskw ochronnych do gumy na bazie mieszanin
stalych weglowodorw naftowych krystalizujacych z frakcji od 100 do 110 C z mieszanina
stalych weglowodorw naftowych krystalizujacych z uprzednio odasfaltowanej frakcji
pozostalosciowej o temperaturze wrzenia od 560 do 620 C w ilosci do 3 % wagowych, przy
czym tak otrzymana mase podgrzewa sie do temperatury od 140 do 150C dodajac do niej
do 3% wagowych polietylenu, a nastepnie po calkowitym jego rozpuszczeniu i obnizeniu
temperatury masy od 100 do 110C dodaje sie do niej do 3 wagowych antyutleniacza.
and a first google translation as follows:
A method for preparing raw material for rubber protective wax-based solid mixtures of
petroleum hydrocarbon fractions crystallizing from 100 to 110 C with a mixture of solid
petroleum hydrocarbon with a predetermined crystallizing deasphalted residual fraction with
a boiling point of from 560 to 620 C in an amount up to 3% by weight, wherein the mass
thus obtained is heated to a temperature of from 140 to 150 C by adding it to 3% by weight
of polyethylene, and then after complete dissolution mass the temperature was lowered from
100 to 110 C is added thereto to three weight antioxidant.
That the terms receiving and respectively kerosene throughout
the entire description and the claims presently on file have to read producing or preparing
and resepectively petroleum.
This interpretation of the cited terms is to be taken into account during the current
examination of the search application.
2.2 The terms deoleined until the amount of oil is not higher than 3% mass/mass at lines 45 of the independent claim 1 and respectively at line 6 of dependent claim 2 as well as
throughout the entire description, which are hereby interpreted as meaining deoiled, render
the claimed subject-matter in breach with the requirements of clarity of Rule 43(2) EPC and
respectively Article 84 EPC since they constitute a desired result to be achieved without
indicating which technical features must contain the process put into practice in order to
achieved the desired deoling step.
2.3 In the same way as above, the terms refining or hydrorefining in the wording of
independent claim 1 render the claimed subject-matter in breach with the requirements of
clarity of Rule 43(2) EPC and respectively Article 84 EPC since they constitute a desired
results to be achieved without indicating which technical features must contain the process
put into practice in order to achieved the desired refining or hydrorefining step.
2.4 The attention of the applicants is drawn to the fact that the application originally filed
documents do not contain any single technical feature concerning the deoiling step (point
2.2 above) and respectively the refining or hydrorefining step (point 2.3 above) . As a
consequence of that it is impossible to consider these steps as forming part of the claimed
subject-matter.
2.5 In the same way, the presence of desired results to be achieved in the wording of
independent claim 1 ( until the product is received having group compositions of n-paraffin
with the amount of carbon in molecule C20 to C40 where it is from 40 to 80% of the wax
mass and isoparaffin having from C30 to C40 carbons in the molecule in the amount of from
7 to 15% of wax mass) does not constitute a real technical feature of the claimed process .
The same objection applies to each of the desired results to be achieved in the wordings of
dependent claims 2 and 4 presently on flie.

Dependent claim 3 contains the only real technical feature concerning the claimed process
presentl or preferably below 1 mbar.y claimed (invention 1) and it ( fractionation at
subatmospheric pressure below 5 millibars ) must be introduced into the wording of the
independent claim 1 for the sake of clarity of Rule 43(2) and respectively Article 84 EPC.
2.6 The claimed subject-matter presently in the wording of independent claim 1 is therefore
concerning merely a process containing one single step namely a single or multiple cascade
thin layer vacuum fractionation step(s) for treating a mixture of deoiled and hydrotreated
petroleum or synthetic hydrocarbons which must be further characterized by the introduction
of the terms of dependent 3 by indicating that the fractionation is performed under
subatmospheric pressure below 5 millibars or preferably below 1 mbar.
3. UNITY (ARTICLE 82 EPC)
The wordings of indepdendent claims 1 and 5 concern subjects-matter not linked with
eachother by a common inventive concept. In fact claim 1 (and dependent claims 2-4)
concern (first invention) the use of distillation technologies for obtaining a wax of a certain
composition whereas independent claim 7 (second invention) concerns al least nine different
purported uses of a wax (1 as protective wax for rubber, 2 as a base for waxes for casting
forms, 3 for moistening paper for food industry, 4 as adhesion compounds for gluing paper, 5
as adhesion compounds for gluing metal foils, 6 as adhesion componds for gluing
polymeric, 7 as waxes for cosmetic industry, 8 as waxes for pharmaceutical industry, 9 as
waxes for feathers removal of poultry).
The tecnhical concept linking the first invention (namely at least a wax containing 40
isoparafins and 7%isoparaffinsC20-C40 of the range presently in the wording of claim 1 as
desired result to be achieved ) cannot be considered inventive let apart novel, the two
groups of inventions have to be part of different patent applications.
The applicant is hereby requested to state on which group of inventions the examination of
the present search is to be carried out (FIRST OR SECOND INVENTION?) and file only a
set of claims accordingly. The invention to be excised from wording and description of the
presenta application can be filed as a divisional application according to the provisions of the
EPC.
4. NOVELTY (ARTICLE 54 EPC)
4.1 FIRST INVENTION (CLAIMS 1-4)
The attention of the applicants is drawn to the fact that only technical features presently in
the wording of independent claim 1 are considered for the analysis of novelty of the claimed
subject-matters and that desired results to be achieved do not constitute real technical
features of them. As already indicated under point 2.6 the wording of independent claim 1
and respectively claims 2-4 concern at best:
a process containing one single step namely a single or multiple cascade thin layer vacuum
fractionation step(s) for treating a mixture of deoiled and hydrotreated petroleum or synthetic
hydrocarbons which must be further characterized by the introduction of the terms of
dependent 3 by indicating that the fractionation is performed under subatmospheric pressure
below 5 millibars or preferably below 1 mbar.

D1= EP-A-0 579 330 (see in particular example and claims 1-10) concerns a process
wherein a single step wipped vacuum fractionation as well as many step vacuum wipped
fractionation (see page 4, lines 28-29) of waxes of any nature are performed at pressures as
low as 0.02 mba (see claim 6) which are therefore prejudicial for at least the novelty of claims
1-4 presently on file.
In the asbsence of at least one differentiating technical feature in the wording of independent
claim 1 in view of D1, the novelty of the claimed subject-matter cannot be acknowledged
(Article 54 EPC).
4.2 SECOND INVENTION (CLAIM 5)
4.2.1 D1 explicitly refers to the use of waxes for commercial uses at page 2, lines 30-39
referring to special conditions of colour and odor and page 4, lines 30-31 ( colour and odor
being essential technical features of waxes in the cosmetic, pharmaceutial and food
production industry presntly cited in the wording of independent claim 5 presently on file) as
well as melting points at page 2, lines 30-34 (essential technical features for protective wax
for rubber and respectively for waxes for molding and casting forms present in the wording of
independent claim 5 presently on file) which are therefore prejudicial for at least one of the
nine particular inventions presently claimed in the wording of independent claim 5 presently
on file, rendering it not novel .
In the absenece of at least one differentiating technical feature in the wording of the
independent claim 5 in view of D1 the novelty of the claimed subject-matter (SECOND
INVENTION) cannot be acknowledged (Article 54 EPC).
4.2.2 The attention of the applicants is drawn to the fact that the originally filed documents do
not contain any single feature concerning the rest eight uses presently in the wording of
independent claim 5, fact which is at the origin of an objection of r lack of sufficient
disclosure (Article 83 EPC) since none of the purported uses are defined in terms of
technical features and additionally of an objection of lack of clarity (Rule 43(2) EPC and
Article 84 EPC) since the skilled person does not know the limits constituting the forbidden
zone of the claimed used according to the decision of the boards of appeal (see annexed
copy of the page 248, last paragraph of the Case law of the Boards of Appeal of the EPO; 6th
Edition, 2009).

5. INVENTIVE STEP (ARTICLE 56 EPC)

5.1 The analysis of inventive step before the EPO must follow the problem solution approach
of the guidelines (G-VII,5 and ff) which requires that the evidence be provided that a
technical problem has effectively been solved in a non obvious way as the consequence of a
differentiating technical feature present in the wording of all independent claims.
In particular, the attention of the applicants is drawn to the fact that "Features which cannot be
seen to make any contribution, either independently or in combination with other features, to
the technical character of an invention are not relevant for assessing inventive step" and
respectively to the fact that "A technical problem may be regarded as being solved only if it is

credible that substantially all claimed embodiments exhibit the technical effects upon which
the invention is based" (see G-VII,5.2).
5.2 The absence of a differentiating technical feature (see point 4.1) in view of D1 does not
allow starting the reasoning according to t he problem solution approach of the guidelines
impeaching therefore any argument concerning the inventive step of the claimed subjectmatter of the first invention. The same comment (point 4.2) applies to the second invention.
5.3 The application documents originally filed do not contain any single additional technical
feature (real operational features of the claimed process invention 1, let apart none of use of
invention 2) which could once incorporated into the wording of the independent claim 1
would be of help for overcoming at least one posed technical problem (cited in the application
documents originally filed) which would not have been solved in an obvious way by the
technical features of D1 taken alone.
5.4 Reference is made to the following documents; the numbering will be adhered to in the
rest of the procedure.
D2=
WIPPED
FILM
EVAPORATOR
WFE,
1997
from
the
Web:
http://www.pfaudler.com/images/docs/sb39_100.pdf
D3=US-20110270010
D4=US-A-3146184
D2 concerns further technical features of the thin film evaporation process which can be used
by the skilled person and have been effectively used by him/her for decades without implying
for that any kind of inventive skill rather an obvious modification of the prior art devoid of
inventive height.
Each of D3 and D4 refer to usual compositions containing differents amounts of normal and
isoparaffins which can be used by the skilled person without implying for that any kind of
inventive step, rather obvious modifications of the prior art devoid of inventive height.
5.5 The skilled person having knowledge of the above technical features (see documetns D1D2) is in a position to any starting feedstock without that any form of inventive step be
involved therein. The advantages of wipped fild fractionation are well known from D1 (see in
particular page 2, lines 35-39) and D2 and the advantages of compositions of particular
nature are known from D3 or D4 and cannot constitute the basis of an inventive step argument
according to the problem solution approach of the Guidelines G-VII, 5 ff.
5.6 In the absence of at least one differentiating technical feature present in the wording of the
independent claim 1 (claim 5 if the applicant decide to choose this second invention), which
could be considered responsible for the solution in a non obvious way of technical problem
posed in the application documents originally filed, in view of D1-D4 the inventive step of the
claimed subject-matter cannot be acknowledged (Guidelines G-VII.5ff and Article 56 EPC).