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Three Crucial Elements of the Invention are Fundamental for Drafting a Good Patent Application Analysis of “Easily-Cleaning Multifunctional Soybean Milk Maker” – One of the Top Ten Cases of the Patent Reexamination Board in 2012
Patent Department
Linda Liu & Partners
1. Foreword
The case involving the invention patent “Easily-Cleaning Multifunctional Soybean Milk Maker”, Patent Number CN1268263C, owned by Joyoung Co., Ltd. (hereinafter referred to as “the Patent”) was one of the Top Ten cases of the Patent Reexamination Board in 2012. Since 2007, different parties, including Phillips, Supor and Ouke, have altogether filed eight invalidation requests with the Patent Reexamination Board against the Patent, but all the reexamination decisions have maintained the validity of the Patent. The Patent Reexamination Board commented that the Patent was well-drafted and provided a good example for small and medium-sized home electric appliances companies in China.
This article will mainly analyze how the drafting of the Patent influenced the invalidation process, in order to summarize the key points for drafting a good patent.
2. Facts
2.1 Summary of the invention of the Patent
The crushing blade of a conventional soybean milk maker is disposed within a filter mesh cover and is difficult to clean.
In the soybean milk maker of the Patent, a flow guide (8) is securely fastened to the lower cover (2) of the head unit, with the lower port of the flow guide (8) being open; the blade (11) fastened at the front end of the motor shaft (7) is arranged within the flow guide (8) and extends into water; guiding holes (9) are provided in the flow guide (8), or guiding channels (6) in communication with the interior of the flow guide (8) are provided on the lower cover (2) of the head unit, so that the materials for making slurry are cycled together with water between the cylindrical container (10) and the flow guide (8) to get crushed and make slurry.
By using the flow guide (8) having an open lower port to replace the conventional fully-closed filter mesh cover, the soybean milk maker of the Patent achieves the beneficial technical effects of being easy to clean and making slurry in a better manner.
2.2 Invalidation process of the Patent
Party Requesting Invalidation
Requesting Date
Evidence
Grounds for Invalidation
Invalidation Decision
Xueyu XIAO
20071016
Evidence 1: ZL03225170.X
Evidence 2: ZL00227560.0
1. The Patent and Evidence 1 constitute double patenting.
2. Claims 1 and 6 lack inventiveness.
3. Evidences 5-6 help explain relevancy of the technical fields of Evidences 2-3.
4. Abandon Evidence 7.
1. Claim 1 lacks novelty.
2. Claims 1-5 lack inventiveness.
3. The material object was presented at court to prove that: a. although Evidence 1 puts soaked beans in a filter cover 8, soybean milk flowing into an inner tube and a cylindrical container contains crushed materials for making slurry, so the materials for making slurry are also cycled together with water to get crushed and make slurry; b. it is common knowledge to dispose a blade at 1/2 position below water level.
WX13373 Maintained the validity of the Patent
20090122
Evidence 1: CN1426723A
Evidence 2: Same as Evidence 2′
Evidence 3: Same as Evidence 1′
Evidence 4: Same as Evidence 3′
Evidence 5: US3229924
Evidence 6: US2038221
Evidence 7: Experimental Study on Circulating Flux in a Stirred Tank with Draft-tube
Evidence 8: Study on Application of Selection and Modification of Stirrer
Evidence 9: Copy of the Search Report for the Patent
Evidence 1: CN2540148Y
Evidence 2: CN1426723A (same as Evidence 1 in WX13373)
Evidence 3: CN2287884Y
Evidence 4: CN2399089Y
Evidence 5: CN2559406Y (same as Evidence 2 in WX13373)
Evidence 6: Copy of the published application for the Patent
1. Claims 1 and 6 lack essential technical features.
2. The amendments to claims 1, 6 and the description go beyond the scope of the original disclosure.
3. The description lacks sufficient disclosure.
4. Claims 1 and 6 are not supported by the description.
Evidence 1′: BE502600A
Evidence 2′: CN1205860A (same as Evidence 2 in WX19499)
1. The amendments to claims 1-10 go beyond the scope of the original disclosure.
2. Claims 1-10 lack essential technical features.
3. Claims 1-10 are not supported by the description.
4. Claims 1-10 lack inventiveness.
WX19513 Maintained validity of the Patent
20120423
Evidence 1: CN1435119A (same as Evidence 1 in WX19499)
Evidence 2: BE502600A (same as Evidence 1′) and its Chinese translation
Evidence 3: EP0792610A1 and its Chinese translation
Evidence 4: US5810472A and its Chinese translation
Evidence 5: US5636923A and its Chinese translation
Evidence 6: CN1205860A (same as Evidence 2′)
Evidence 7: CN1435120A
Evidence 8: GB784682A and its Chinese translation
Evidence 9: Granted version of the Patent
Evidence 10: Published application for the Patent
Evidence 11: Copy of the Belgian Patent Act of 1854 and its Chinese translation
Ping GONG
20121214
Evidence 1: JPH2-228920 and its Chinese translation
Evidence 2: CN1435119A (same as Evidence 1 in WX19499)
As shown above, the grounds cited for invalidating the Patent were as follows: there is double patenting; the claims lack novelty; the claims lack inventiveness; the description lacks sufficient disclosure; the independent claims lack essential technical features; the claims are not supported by the description; and the amendments to the description and claims go beyond the scope of the original disclosure. These grounds for invalidation cover almost all the possible grounds for invalidation, but despite this the Patent was ultimately still found to be valid.
This is not only because the technique of the Patent was a breakthrough improvement by replacing the conventional fully-closed filter mesh cover with a flow guide having an open lower port, but it was also closely associated with the good drafting of the Patent. The following is a detailed analysis of some of drafting characteristics of the Patent.
3.1 Regarding inventiveness
All the invalidation requests involve inventiveness, but the corresponding six invalidation decisions all maintained the validity of the Patent and expressed almost the same inventiveness evaluation criteria in the “Key Point of the Decision”, that is, a claim will possess inventiveness if the following conditions are satisfied – the technical solution of the claim has a distinguishing technical feature when compared with the prior art; the prior art does not teach that the distinguishing technical feature can be used to solve a relevant technical problem, and there is no clear evidence showing that the distinguishing technical feature is common knowledge in this field; and the distinguishing technical feature provides beneficial technical effects for the technical solution of this claim.
Why are the reexamination results so consistent? Because the description of the Patent clearly fulfills the key points of the above evaluation criteria!
Firstly, the “Background” directly points out that the present invention aims to solve the technical problem that the device for crushing and slurry-making in a conventional home soybean milk maker comprises a filter mesh cover which is difficult to clean.
Secondly, the “Summary of the Invention” clearly shows that the main technical improvement of the easily-cleaning multifunctional soybean milk maker according to the present invention lies in replacing the filter mesh cover of the conventional soybean milk maker with a flow guide. For further details, please see the last paragraph on page 1 of the description in the published application for the Patent.
Thirdly, the “Summary of the Invention” clearly describes beneficial technical effects achieved by the above improvement. Specifically, the flow guide of the easily-cleaning multifunctional soybean milk maker according to the present invention is open in the lower port, thus the inner and outer walls of the flow guide can be easily cleaned, therefore it is substantially different from the conventional filter mesh cover in the structure, even though guiding holes are provided therein. At the same time, as opposed to merely being crushed and making slurry within the filter mesh cover as is known from the prior art soybean milk maker, in the present invention the materials for making slurry are extensively cycled together with water between the cylindrical container and the flow guide in order to be crushed and make slurry. Therefore, the efficiency of crushing and making slurry is improved, and the nutritional content released from the materials for making slurry is increased.
Clearly, the patent application for the Patent not only explicitly expresses the three crucial elements of the invention (i.e., the technical problem to be solved, the technical improvement proposed for solving the technical problem, and the beneficial technical effects achieved by the technical improvement) but also shows a strong logical relationship among them. As a result, even if Evidence 2 (ZL03225170.X) mentioned in No. 12244 Invalidation Decision discloses a flow guiding cover having a structure similar to that of the flow guide, due to their differences in position and the technical problem to be solved, the Patent Reexamination Board still judged that Evidence 2 did not teach the same use of the flow guide as in the Patent, namely to solve the problem of difficulty in cleaning, and thus concluded that claim 1 of the Patent possesses inventiveness.
Further, it should be noted that the description of the Patent describes corresponding beneficial effects for almost all the technical features that define an inventive contribution. Here are some examples.
For the feature “the lower port of the flow guide being open”, the beneficial effect that “the inner and outer walls of the flow guide can be easily cleaned, therefore it is substantially different from the conventional filter mesh cover in the structure and the working principle, though guiding holes are provided therein” is described. Please see lines 9-10 from the bottom of paragraph 2 on page 2 of the description in the published application for the Patent.
For the feature “the materials for making slurry are extensively cycled together with water between the cylindrical container and the flow guide to get crushed and make slurry”, the beneficial effect that “as opposed from merely being crushed and making slurry within the filter mesh cover as is known from a prior art soybean milk maker, the efficiency of crushing and making slurry is improved, and the nutritional content released from the materials for making slurry is increased” is described. Please see lines 5-6 from the bottom of paragraph 2 on page 2 of the description in the published application for the Patent.
For the feature “a handle of the flow guide is provided at the lower end of the flow guide”, the beneficial effects “to facilitate the installation or disassembly of the flow guide” and “to prevent the flow guide from being cut by the rotating blade” are described. Please see lines 7-10 from the bottom of paragraph 4 from the bottom on page 3 of the description in the published application for the Patent.
For the feature “crushing ribs are provided on the flow guide”, the beneficial effect that “the materials for making slurry can be crushed and cycled better” is described. Please see lines 2-3 from the bottom of paragraph 4 from the bottom on page 3 of the description in the published application for the Patent.
As shown from the above analysis, during the process of drafting the patent application, in order to strongly refute any future doubts about the inventiveness of the invention, the applicant should clearly state the three crucial elements of the invention, namely the technical problem to be solved, the technical improvement proposed for solving the technical problem, and the beneficial technical effects achieved by the technical improvement, and should describe a strong logical relationship among them. For instance, the beneficial technical effects can be described based on the technical features.
3.2 Regarding sufficient disclosure of the description
According to No. 19505 Invalidation Decision, the party requesting invalidation asserted that the description of the Patent does not clearly explain what temperature and pressure the materials (or slurry in the cylindrical container) have, and under what temperature and pressure the materials can be rotated by the blade and raised in the flow guide so that the materials can be cycled together with water and ejected from guiding holes or guiding channels back into the cylindrical container.
In the collegial panel’s opinion, the object of the present invention is to solve the problem that home soybean milk maker is difficult to be cleaned up, and to provide an easily-cleaning multifunctional soybean milk maker (see lines 11-12 on page 1 of the description of the Patent). In order to achieve this object, the present invention adopts the following technical means: a flow guide is securely fastened to the lower cover of the head unit, with the lower part of the flow guide immersed into water and the lower port of the flow guide being open; the blade fastened at the front end of the motor shaft is arranged within the flow guide and extends into water; guiding holes are provided in the flow guide, or guiding channels in communication with the interior of the flow guide are provided on the lower cover of the head unit so that the materials for making slurry are cycled together with water between the cylindrical container and the flow guide to get crushed and make slurry (see lines 14-17, 21-22 on page 1 of the description of the Patent). Lines 3-15 on page 4 and lines 13-18 on page 5 of the description of the Patent also explain the working principle and working manner of the soybean milk maker of the Patent. The description of the Patent obviously has set forth the claimed technical solution in a manner sufficiently clear and complete that one skilled in the art can carry out the technical solution of the present invention, solve the existing technical problem and achieve the expected technical effects based on the description.
The issues of “what temperature and pressure the materials (or slurry in the cylindrical container) have, and under what temperature and pressure the materials can be rotated by the blade and raised in the flow guide so that the materials can be cycled together with water and ejected from guiding holes or guiding channels back into the cylindrical container” mentioned by the party requesting invalidation can be determined by one skilled in the art based on the knowledge mastered by him or her as well as the actual situation, after knowing the object and summary of the invention of the Patent, without spending any creative effort.
The reply of the collegial panel tells us that, during the process of drafting the application document, after the three crucial elements of the invention are clarified, it is preferable to describe in detail the working principle and the working manner of the claimed technical solution as well as an example of each component (units of a product or steps of a method) based on the appended drawings, so as to strongly refute any doubt about sufficient disclosure in the future.
3.3 Regarding inclusion of essential technical features, necessary for solving the existing technical problem, in independent claims
According to No. 19505 Invalidation Decision, the party requesting invalidation asserted that claims 1 and 6 of the Patent lack the essential technical features “the temperature and pressure of the electrical heater or materials in the cylindrical container of the soybean milk maker” and “handle of the flow guide”, while claim 1 lacks the technical feature of “filtering off soybean dregs”.
According to No. 19513 Invalidation Decision, the party requesting invalidation asserted that independent claim 1 lacks the essential technical features “the bottom port of the flow guide is open” and “the guiding holes are configured to allow the materials for making slurry together with water to be ejected back into the cylindrical container”, while independent claim 6 lacks the essential technical features “the bottom port of the flow guide is open” and “the guiding channels are configured to allow the materials for making slurry together with water to be ejected back into the cylindrical container”.
In the collegial panel’s opinion, firstly, the object of the present invention is to solve the problem that prior art home soybean milk makers are difficult to clean. In order to achieve this object, the present invention adopts the technical means of removing the filter mesh cover and securely fastening a flow guide to the lower cover of the head unit, with the lower port of the flow guide being open, wherein guiding holes are provided in the flow guide, or guiding channels in communication with the interior of the flow guide are provided on the lower cover of the head unit. These technical features are explicitly disclosed by independent claims 1 and 6 of the Patent.
Secondly, although the features “the temperature and pressure of the electrical heater or materials in the cylindrical container of the soybean milk maker” and “handle of the flow guide” as well as the feature of filtering off soybean dregs are also related to the running and operation of the soybean milk maker, these features are not indispensable in view of the technical problem to be solved by the Patent. Since all the technical features of independent claims 1 and 6 are enough to achieve the object of the invention, claims 1 and 6 have indeed disclosed all the technical features necessary for solving the existing technical problem.
The reply of the collegial panel tells us that describing the three crucial elements of the invention, namely, the technical problem to be solved, the proposed technical improvement and the beneficial technical effects achieved, is fundamental for ensuring the appropriateness of the content of the independent claims so that the independent claims will neither be invalidated due to lack of essential technical features nor have an excessively narrow scope of protection due to the inclusion of unnecessary technical features.
For instance, independent claims 1 and 6 of the Patent clearly define not only structural features of the flow guide such as “the lower port of the flow guide being open” and “guiding holes are provided in the flow guide” but also features concerning the positional relationship among the flow guide, the lower cover of the head unit, and the blade, such as “a flow guide is securely fastened to the lower cover of the head unit”, “the blade is arranged within the flow guide” and “guiding channels in communication with the interior of the flow guide are provided on the lower cover of the head unit”, without defining other features unrelated to the problem of the device being difficult to clean.
4. Conclusion
To sum up, from the patent application and the invalidation process of the Patent, we can unambiguously determine that the foundation for drafting a good patent is to clarify three crucial elements of the invention – the technical problem to be solved, the technical improvement proposed for solving the technical problem, and the beneficial technical effects achieved by the technical improvement, and to formulate a strong logical relationship among them.
On the basis of the above, the description should be as detailed as possible, that is, it is preferable to describe in detail the working principle and the working manner of the claimed technical solution as well as an example of each component (units of a product or steps of a method) based on the appended drawings. In contrast, the content of the claims should be concise, that is, the claims should just contain the essential technical features necessary for solving the existing technical problem, in order to obtain a scope of protection which is as large as possible.
