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Guidelines for Examination

 
 

3.10 Different categories

When the application contains claims of different categories, all these must be included in the search (for cases not complying with Rule 43(2), see B‑VIII, 4). However, if a product claim clearly seems to be both new and non-obvious, the examiner should make no special effort to search claims for a process which inevitably results in the manufacture of that product or for use of the product (see F‑IV, 3.8 and G‑VII, 13). When the application contains only claims of one category, it may be desirable to include other categories in the search. For example, generally, i.e. except when the application contains indications to the contrary, one may assume that in a claim directed to a chemical process, the starting products form part of the state of the art and need not be searched; the intermediate products are only searched when they form the subject of one or more claims; but the final products will always have to be searched, except when they are evidently known.