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Case Study on Article 26.4 of the Chinese Patent Law
Patent Department
Linda Liu & Partners
As is well known, whether reasonable protection can be provided for an invention-creation and whether the protection scope of a patent can be determined correctly and reasonably is essential for a patent system to work properly. By definition, the extent of protection of a patent right for an invention or a utility model shall be determined by the terms of the claims, and the description and the appended drawings may be used to interpret the content of the claims. Thus, the claims play a crucial role in determining the protection scope of a patent.
In the 4th paragraph of Article 26 of the Chinese Patent Law (hereinafter referred to as Article 26.4), it is prescribed that the claims shall be supported by the description and shall define the extent of the patent protection sought in a clear and concise manner. This is a substantive requirement on the claims. Specifically, the provision of Article 26.4 includes the following three aspects: 1) the claims shall be supported by the description, in other words, the claims shall be based on the description, as is usually mentioned; 2) the claims shall define in a clear manner the extent of the patent protection sought for; 3) the claims shall define in a concise manner the extent of the patent protection sought. The first aspect stipulates the relationship between the claims and the description, and the second and third aspects are requirements on the claims themselves.
At present, Article 26.4 is quite frequently quoted by the examiner in patent examination. According to statistics from recent years, almost 50% of office actions relates to Article 26.4. Article 26.4 is analyzed below with respect to the aforesaid three aspects with several typical cases, in the hope that this will be helpful for the readers in drafting Chinese patent applications and making responses to office actions with objections under Article 26.4.
I. Being supported by the description
Whether the claims are supported by the description is determined by analyzing whether the technical solution of each claim of the Claims can be obtained by a person skilled in the art directly, or by generalization, from the contents disclosed in the description and the drawings, and whether the technical solution of each claim goes beyond the scope of the disclosure of the description and the drawings. Thus, there are two situations: being formally supported by the description, and being substantively supported by the description.
1. Whether a claim is formally supported by the description
The expression “being not formally supported by the description” means that the technical solution of a claim is not literally disclosed in the description or is inconsistent with the content disclosed in the description. The former defect can be eliminated by adding the technical solution of the claim into the description. As regards the latter situation, the response depends on the specific conditions. It may be feasible to unify the technical solution of the claim with the content disclosed in the description by making amendments, or by means of explanation in the response to the office action.
<Case 1.1>
Feature Concerned
… a stop comprising a retaining protrusion or a gear portion …, and a rod-shaped member connected to a spring …
Objection
This claim includes two parallel technical solutions respectively having one of the following features: 1) the stop comprises a retaining protrusion, or 2) the stop comprises a gear portion. As disclosed in the description, however, the solution having feature 1) does not include a rod-shaped member connected to a spring, while the solution having feature 2) does include said rod-shaped member. Clearly, the solutions defined by this claim are inconsistent with the content disclosed in the description, so this claim is not supported by the description.
Response
This claim was amended to two claims. One claim contains the feature 1) but does not contain “a rod-shaped member connected to a spring,” and the other claim contains the feature 2) and the feature of “a rod-shaped member connected to a spring.”
Result
The above defect was removed.
[Conclusion]
With regards to an application that describes several parallel technical solutions in its description, if these parallel technical solutions are drafted in a single claim, a formulation which shows that a feature that is unique to just one or some technical solutions is a common feature of all the parallel technical solutions shall be avoided. In other words, do not draft a feature unique to one technical solution into other technical solutions.
If a claim of an application is drafted such that “a feature unique to one technical solution is drafted into other technical solutions,” this claim may be deemed to lack support in the description. In case of such an objection, it is advised to divide the claim and make sure that the technical solutions of the respective divided claims are consistent with the content of the description.
In a response to an office action, if a claim is amended by “drafting a feature unique to one technical solution into the other technical solutions,” this amendment may be deemed to go beyond the original scope of the application. In case of such an objection, perhaps it will be necessary to divide the claim or even delete one or more technical solutions from the claim.
<Case 1.2>
Feature Concerned
Claim 1: An information processing apparatus …
Claim 2: A method of controlling an information processing apparatus …
Objection
The product claim and the method claim relating to computer programs are not drafted so as to be identical with, and corresponding to, each other. As a result, the product claim is not supported by the description.
Response
Amend the subject matter of claim 1 to “A system for controlling an information processing apparatus.”
Result
The above defect was removed.
[Conclusion]
As stipulated in Section 5.2 of Chapter 9 in Part II of the Guidelines for Patent Examination, an invention-creation solely relating to computer programs may be drafted as a method claim or an apparatus claim of “functional module architecture” type. When drafting such kind of apparatus claim, keep in mind that the subject matter shall be completely identical with and in full correspondence to that of the corresponding method claim, and that the content disclosed in the characterizing portion, namely each functional module, shall completely correspond to each step in the computer program flow or to each step in said method claim.
If the aforesaid two conditions are not satisfied, the examiner may raise an objection indicating that the claim is not supported by the description. In case of such an objection, it usually is necessary to amend the apparatus claim so as to be completely identical with and in full correspondence to the method claim.
2. Whether a claim is substantively supported by the description
The expression “being not substantively supported by the description” means that a person skilled in the art cannot obtain the technical solution of a claim directly or by generalization from the contents disclosed in the description and the drawings. If a claim is an unreasonable generalization of the contents literally recorded in the description and the contents disclosed in the drawings, and the technical solution of this claim cannot be obtained or generalized by one skilled in the art, then this claim may “not be substantively supported by the description.” When a claim has such a defect, the applicant usually needs to amend the claim to remove this defect. If this defect actually does not exist but the objection against the claim results from a misunderstanding by the examiner, then the applicant may consider making necessary arguments for clarification.
<Case 2.1>
Feature Concerned
… control means that is configured to control simultaneous opening/closing of the first and second valves.
Objection
This feature is a functional definition to the control means, so it should be understood as covering all manners capable of realizing the function of “controlling simultaneous opening/closing of the first and second valves.” The description, however, merely discloses a specific method of realizing simultaneous opening/closing of the two valves using a link. One skilled in the art has no idea whether the aforesaid function can also be realized by other alternatives not mentioned in the description. Thus, this claim is not based on the description.
Response
This claim was amended by adding the feature of “link” defined in a dependent claim.
Result
The above defect was removed.
[Conclusion]
In China, a functional definition in a claim is allowable, but a claim comprising purely functional definitions is unallowable. In addition, a claim containing a functional definition is likely to be deemed as lacking support in the description, usually for the following reasons: 1) the description discloses only one specific manner of realizing said “functional feature,” so the technical solution claimed is substantively inconsistent with that disclosed in the description, and 2) one skilled in the art has no idea whether said function can also be realized by other alternatives that are not mentioned in the description.
To prevent the examiner from pointing out that a technical solution containing “a functional feature” is not supported by the description, the applicant had better avoid drafting an application in such a way that the function is realized only by one detailed mode, for example, by only one specific mechanical structure. Instead, it is better to describe more than one detailed method of realizing the function in different ways and to state that one skilled in the art is able to conceive of other methods based on the contents disclosed in the description. If only one detailed embodiment can be drafted due to objective reasons, it is better to sufficiently discuss that one skilled in the art is apt to conceive of other methods based on the disclosure of the description.
In the face of an objection indicating that “a functional feature” makes a claim lack support in the description, it is necessary to determine whether this objection is right.
(1) If the objection is right, that is, said “functional feature” in the claim is indeed realized by a single detailed embodiment in the description, and one skilled in the art cannot foresee whether the other means can play the same role, then it probably is necessary to limit said “functional feature” in the claim based on the detailed embodiment described in the description, instead of a re-generalization. In view of this, it is very important to provide multiple levels of generalization, such as an upper level, a middle level and a lower level of generalization, when drafting the description or claims.
(2) If the objection is unreasonable, the applicant could consider making arguments to show that a person skilled in the art is able to derive the claim containing said “function feature” by reasonable generalization from the contents sufficiently disclosed in the description. The arguments may be made in the following way: state facts that are described in the description to traverse the objection, and/or provide evidence, such as technical documents published before the filing date, which proves that the technical means commonly used to realize this functional feature in the art can all solve the technical problem solved by the invention concerned.
<Case 2.2>
Feature Concerned
… a compression ratio of air is 2 or more …
Objection
This claim defines a broad numerical range, but the examples in the description merely disclose one or more compression ratios that are “2 or more.” According to the content disclosed in the applicantion, one skilled in the art can hardly foresee that all numerical values within said numerical range can solve the technical problem. Therefore, this claim is not supported by the description.
Response
It was argued that one skilled in the art is able to understand that the solution is capable of solving the technical problem and realizing the effect to be achieved by the present invention as long as the compression ratio of air is 2 or more. Detailed arguement was made based on the content disclosed in the description and common knowledge. An article published in an academicjournal was cited to verify the common knowledge.
Result
The examiner was persuaded.
[Conclusion]
When drafting an application relating to numerical values or numerical ranges, if a numerical value or range is present in the claims, it is advisable to mention in the description some preferred ranges and the reasons for selecting these ranges. If possible, it is good practice to describe examples of the end values and the middle value within the numerical range.
In the face of an objection indicating that a wide numerical range makes a claim lack support in the description, an analysis of the concerned application should be conducted. Sometimes, it is necessary to search for, and refer to, prior art and common knowledge in order to make an objective determination on the objection. If the objection is determined to be incorrect, arguments showing this can be made in combination with detailed analysis of the description. Arguments making use of evidence, for example, prior art, will be more convincing.
<Case 2.3>
Feature Concerned
… determining a humidity state in the fuel cell stack based on a change in the absolute voltage difference after the flow rate of the oxidizer gas has been changed …
Objection
This expression is too general, and it fails to specify how to determine a humidity state in the fuel cell stack based on a change in the absolute voltage difference. Thus, the protection scope of this claim is too broad.
Response
The following argument was made: to facilitate the understanding of one skilled in the art, in the description, the following three detailed embodiments with respect to the aforesaid feature are described: determine a humidity state in the fuel cell stack by comparing the absolute voltage difference with the second preset value; determine a humidity state by comparing the absolute voltage difference with the third and fourth preset values; and determine a humidity state by comparing the absolute voltage difference with the second, third and fourth preset values. One skilled in the art certainly is able to select various methods of determining the humidity sate according to practical requirements, rather than be limited to the aforesaid three methods. Specifically, it is feasible to select different methods of determining the humidity state according to the degree of humidity of a fuel cell stack. For example, if the humidity of the fuel cell stack is divided into 5 degrees: excessive humidity, relative humidity, insufficient humidity, drying and insufficient oxygen, then more preset values need to be set to be able to determine the humidity state. To be specific, perhaps four preset values are needed for comparison with the absolute voltage difference. Furthermore, different methods of determining the humidity state can be selected based on the conditions for setting the preset values. The determination method varies as the conditions change. Therefore, according to the disclosure of the claim, one skilled in the art certainly is able to select different methods of determining the humidity state according to practical requirements in order to solve the technical problem which is to be solved by the present invention and to achieve the same technical effect, rather than be limited to the methods described by the description.
Result
The examiner was persuaded.
[Conclusion]
If an application claims a technical solution in which some parameter is determined based on other parameters, it is favorable to describe as many determination methods as possible in the description.
In the case of a claim regarding the aforesaid technical solution, if the description only discloses a few detailed determination methods, the examiner may raise the following objection: according to the contents disclosed in the application, one skilled in the art can hardly foresee that all the other embodiments generalized by the claim can solve the technical problem solved by the present invention, so the claim is not supported by the description. In the face of this objection, necessary arguments can be made if this objection is determined to be incorrect. For instance, first explain the determination methods described in the description, and then explain that the claimed technical solution can be obtained by reasonable generalization from these determination methods based on the prior art and the knowledge of a person skilled in the art. The argument for the above case is typical.
<Case 2.4>
Feature Concerned
Claim 4: … according to any one of claims 1 to 3 …
Objection
Claim 2 corresponds to the first example, claim 3 corresponds to the third example, and claim 4 corresponds to the second example, but the technical solution formed by combining these examples is beyond the scope of the description.
Response
Claim 4 was amended to refer to only claim 1.
Result
The above defect was removed.
[Conclusion]
An application usually contains several embodiments each being a variation or an improvement to a certain part of the invention. In this case, it is advisable to explain in the description that respective embodiments can be employed in combination. Otherwise, the technical solution regarding the combination of the respective embodiments may be deemed to lack support in the description, or a subsequent amendment to this combination may be deemed to go beyond the original scope of the application.
In the face of an objection indicating that a technical solution formed by combining different embodiments is not supported by the description, if the aforesaid explanation is lacking in the description, then it is quite difficult to persuade the examiner to accept such a technical solution, and in general, it has to be deleted.
<Case 2.5>
Feature Concerned
A process for producing a toner … subjecting … and a resin component containing a cross-linkable polymer … to cross-linking reaction in the presence of a first wax to form a wax-containing cross-linked polymer composition; mixing the wax-containing cross-linked polymer composition with at least a colorant and a second wax … to produce toner particles.
Objection
The expressions “a first wax” and “a second wax” in this claim are not technical terms in the related technical field but merely indicate that they possibly are different kinds of waxes. There are various waxes which may be different from each other in structure, composition or properties. Thus, one skilled in the art can hardly reasonably foresee that any wax other than those having specific properties listed in the description has the same properties or use as the waxes in the present invention and can solve the technical problem to be solved by the present invention. Therefore, claim 1 is not supported by the description.
Response
The following argument was made: the first wax and the second wax in this claim are mentioned just to distinguish the wax added before the resin cross-linking and that after the resin cross-linking, and there is no special restriction to the structure or composition of the waxes. Thus, this claim is supported by the description.
Result
The Patent Reexamination Board revoked the Decision of Rejection.
[Conclusion]
When drafting an application in chemical field, it is advisable, if possible, to avoid using serial numbers to differentiate substances. If it is impossible to avoid such an expression, the applicant could think about making an explanation in the description.. For example, according to the practical condition, it may be feasible to explain that whether this expression restricts the structure and/or composition of the defined substances or that it merely aims at distinguishing the substances used in different steps.
In the face of an objection indicating that a claim is not supported by the description because of serial numbers are used to differentiate substances, it is necessary to analyze the function of these serial numbers. If the substances defined by these serial numbers have special structures and/or compositions, perhaps it is necessary to add the special structures and/or compositions to the claim. If these serial numbers merely are used to differentiate the substances used in different steps, arguments can be made to clarify that the substances defined by these serial numbers may either have or not have identical structures and/or compositions.
<Case 2.6>
Feature Concerned
A substituted ethynyl gold-nitrogen containing heterocyclic carbene complex represented by the general formula (1): , wherein, … X represents an alkyl group, a cycloalkyl group, an aryl group, an aralkyl group or a heterocyclic group; in which one or more hydrogen atoms on the carbon atom(s) of X may be replaced by a halogen atom, an alkyl group, a cycloalkyl group, an alkenyl group, an aryl group, an aralkyl group, an alkoxy group, an aryloxy group, a dialkylamino group, an acyl group or an arylcarbonyl group; and, when more than one hydrogen atom on the carbon atom(s) of X is replaced by the alkyl group, the alkenyl group, the aryl group, the aralkyl group, the alkoxy group, the aryloxy group, the dialkylamino group, the acyl group or the arylcarbonyl group, the adjacent groups may be bonded together to form a ring.
Objection
The definitions of the group X in claim 1 are all generic generalization having broad scopes, which include a large number of groups having different structures. However, only 48 compounds are sufficiently disclosed in the embodiments of the description. In the field of organic luminescence, properties of a compound are affected by many factors such as electronic effect and steric effect of the substituents, the types of the substituents, etc. A subtle difference in the structure of the compound might lead to a significant change in its luminescence performance. Therefore, claim 1 contains contents that are deduced by the applicant, and it is difficult to determine or evaluate, in advance, the effects of these contents. Thus, claim 1 is not supported by the description.
Response
“X” in claim 1 was further limited as “X represents an aryl group or a heterocyclic group; one or more hydrogen atoms on the carbon atom(s) of X may be replaced by a halogen atom, an alkyl group, an aryl group, an aralkyl group, an alkoxy group, an acyl group or an arylcarbonyl group.”
Result
A third Office Action was issued, which still objected to a lack of support in the description.
[Conclusion]
In the chemical field, when drafting an application relating to a Markush claim, it is advisable to list as many as possible specific substances, e.g. a list of specific compounds containing different substituents, so that one skilled in the art, according to the contents disclosed in the description, can be convinced that all the technical solutions generalized by the Markush claim can solve the technical problem solved by the concerned invention.
In the face of an objection indicating that a Markush claim is not supported by the description, the applicant can determine the key technical means of the invention in view of the technical problem solved by the invention. If a technical feature with a larg scope pointed out by the examiner is the key technical feature, then the applicant may consider further limiting this technical feature. Otherwise, the applicant may consider arguing that this technical feature can be reasonably generalized by one skilled in the art and that the detailed technical features listed in the description are just preferred examples of the present invention that can achieve a better technical effect.
II. Clarity of the claims
Clarity of the claims is of the utmost importance for the determination of the extent for which protection is sought by a patent. The requirement that the claims shall be clear means, on the one hand, individual claims, generally including the title of its subject matter, the wording and the expressions, shall be clear, and on the other hand, the claims as a whole also shall be clear.
1. Clarity of the subject matter of a claim
A vague title of the subject matter of a claim means that the title of the subject matter fails to indicate clearly the category of the claim or is not adaptive to the technical contents of the claim. For example, “A technique …” and “A formula …” are vague titles of subject matter. Besides, according to current examination practices in China, titles such as “A product” and “A process” are not clear either as they fail to reflect the technical field to which the technical solution pertains. In general, it is necessary to amend the title of the subject matter to remove this defect.
<Case 3.1>
Feature Concerned
A transformer and a circuit device for controlling the transformer …
Objection
The title of the claimed subject matter is unclear.
Response
The title of the subject matter was amended to “A circuit device for controlling a transformer ….”
Result
The above defect was removed.
[Conclusion]
When drafting a claim, make sure that one claim has one definite subject matter, that the category of the subject matter is clear, namely, it is clear whether the claim is a product claim or a process claim, and that the title of the subject matter reflects the technical field to which the claimed technical solution pertains.
In the face of an objection indicating a vague title of the subject matter, it usually is necessary to amend the title to remove this defect. If necessary, it may be feasible to add some claims to protect the deleted technical solution.
<Case 3.2>
Feature Concerned
A three-dimensional operating system for a two-dimensional warehouse, comprising a programming program, an erecting program, and a warehouse entry program …
Objection
As definitions using these computer programs are neither structural features nor process features, the scope of protection of the system claimed by this claim is not clear.
Response
The above feature was amended to “A three-dimensional operating process for a two-dimensional warehouse, comprising a programming step, an erecting step, and a warehouse entry step ….”
Result
The above defect was removed.
[Conclusion]
When drafting a claim relating to computer programs, terms such as “program,” “program product,” “instruction” and “patch,” as is usually advised, shall not be used as the title of the subject matter. Besides, the definition part shall not be purely defined by the programs, or else it may be deemed as unpatentable subject matter. Claims relating to computer programs may be drafted as process claims or apparatus claims. No matter what kind of claim it is drafted as, the features defined in the claim shall correspond to the title of its subject matter. That is, a process method shall specify the steps of the process and functions to be performed or accomplished by the computer program, and an apparatus claim shall specify various component parts and the connections among them, and give a detailed account of the component parts by which the various functions of the computer program are performed, and how these functions are performed.
For an apparatus claim that is defined by computer programs or instructions, the examiner sometimes may point out that the definitions regarding programs or instructions are neither structural features nor process features, so they fail to clearly specify the structure of the claimed apparatus, and, as a result, the scope of protection of the claim is unclear. In the face of such an objection, it may be feasible to amend the concerned claim to a process claim or an apparatus claim of “functional module architecture” type which is in full correspondence with the process claim.
2. Clarity of the wording in the claims
Generally, words used in the claims are understood to have the common meaning in the related field. If the meaning of a wording is unclear or indefinite in the related field, the claim is correspondingly unclear. In the face of such a defect, it is possible to make an amendment if this defect can be removed by making such an amendment. If there is a risk that the amendment may go beyond the original scope of the application, then it is advisable to make explanation in the response to the office action.
<Case 4.1>
Feature Concerned
… the nutrient solution is diluted to a solution of a specified concentration suitable for the growth of crops …
Objection
The meaning of “specified concentration” mentioned in this claim is unclear.
Response
The following argument was made: different crops or the same crop at different growth stages have different requirements on nutrition, so the concentration of the nutrient solution used also varies. Thus, it is impossible to limit a specific concentration value in the claim. Besides, diluted solution set for various crops or the same crop at different stages is a feature occurring to one skilled in the art easily based on the common knowledge. Therefore, “a specified concentration” does not make the claim unclear.
Result
The examiner was persuaded.
[Conclusion]
Pay attention to words such as “certain,” “specified,” “proper” when drafting the claims. Use of these words had better be avoided in the claims unless they are clear in meaning. If such a word has to be used, explain its meaning in detail in the description so that the description can be taken as a basis for amendment during the subsequent prosecution or can be used to explain the meaning of the claims in an infringement suit.
In the face of an objection indicating lack of clarity due to the type of wording mentioned above, analyze from the viewpoint of a person skilled in the art. If the claim is clear, then appropriate arguments may be made; if it is hard to determine whether the claim is clear, it is advisable to amend the claim. Of course, if amendment cannot be made to the claim, then a detailed and accurate analysis and supporting evidence may be used in attempt to convince the examiner that the meaning of the word is clear.
<Case 4.2>
Feature Concerned
A reinforcing member for rubber article … wherein an amount of phosphorus included as an oxide … is suppressed to not more than 1.5 atomic%.
Objection
“atomic%” in this claim is not a common technical term in the art, so the scope of protection of this claim is unclear.
Response
The following argument was made: atomic%, namely atomic percentage, means a percentage of one kind of atom relative to the total number of atoms. The number of one kind of atom divided by Avogadro constant 6.02×1023 just is a molar number, so “atomic%” is equal to “mol%” of each element. Thus, the meaning of “atomic%” is clear to one skilled in the art. Moreover, expressions like “atomic%” or “atomic percentage” have been used in a lot of granted patents.
Result
The examiner was persuaded.
[Conclusion]
When drafting an application, particularly when drafting the claims, it is favorable to carefully review whether each term has a clear meaning. Use terms commonly used in the related technical field as far as possible rather than terms used in your company. For some terms that may be ambiguous or be vague in other aspects, necessary explanation or definition to these terms should be present in the description so that the description can be taken as a basis for amendment during the subsequent prosecution of the application or can be used to explain the meaning of the claims in an infringement suit.
After receipt of an objection indicating that meaning of a word is vague, analyze which one of the following situations is present and take corresponding measures:
(1) if the word is a common technical term, present arguments to that effect;
(2) if the word is already explained in detail in the description, make a clarification in the response to the office action or add the detailed explanation to the claim;
(3) if the word indeed makes the claim unclear and there is no relevant explanation in the description, then the applicant needs to consider making an explanation or deleting the related technical solution.
3. Clarity of expressions in the claims
Vague expressions in the claims mainly include expressions having wrong meanings or being self-contradictory, expressions describing a generic term and a specific term as alternatives, unreasonable exclusive/reference expressions. In the face of such a defect, it may be feasible to make an amendment if this defect can indeed be removed by making amendment. If such an amendment may go beyond the original scope of the application, it is advised to make an explanation in the response to the office action.
<Case 5.1>
Feature Concerned
An engagement portion is formed on the other surface of the transmission structure …
Objection
As there is no expression regarding one surface of the transmission structure and no similar expression has been used previously, it is unclear which surface of the transmission structure is referred to by “the other surface.”
Response
The expression of “the other surface” was amended to “a surface opposite to an alignment structure.”
Result
The above defect was removed.
[Conclusion]
When drafting the claims, if some feature itself (e.g. “the other surface” in case 5.1) is dependent on another preceding feature, clearly specify both features and clarify the relation between them.
In the face of an objection indicating unclearness of a claim due to inappropriate wording, an exemplary way of amendment is replacing the wording used without going beyond the original scope of the application.
<Case 5.2>
Feature Concerned
… the air cooling unit comprises a group of tool post air cooling lines having an outlet portion, a tool post air cooling flow channel, a tool post air cooling channel surrounding inner wall of the tool post and being defined by the inner wall and peripheral wall of the tool post, and an inlet portion …
Objection
It is unclear whether “surrounding inner wall of the tool post and being defined by the inner wall and peripheral wall of the tool post” limits “an outlet portion, a tool post air cooling flow channel, a tool post air cooling channel” or just limits “a tool post air cooling channel.” As a result, the scope of protection of this claim is not clear.
Response
The aforesaid feature was amended to “… the air cooling unit comprises a group of tool post air cooling lines having an inlet portion, a tool post air cooling channel, an outlet portion, and a tool post air cooling flow channel, wherein the tool post air cooling channel surrounds inner wall of the tool post and is defined by the inner wall and peripheral wall of the tool post ….”
Result
The above defect was removed.
[Conclusion]
When drafting an application, particularly when drafting the claims, use short phrases as far as possible. To restrict only one of a plurality of parallel technical features, it is favorable to draft the features separately. For example, it is advised to draft a feature as “… A1, A2, A3 …，said A3 has B …” rather than “… A1, A2, A3 having B ….”
In the face of an objection indicating unclearness of a claim due to unclear expressions, carefully read the description first to determine the true meaning to be expressed, and then decide whether to make a response by providing an explanation in the response to the office action or by amending the claims according to the specific conditions.
<Case 5.3>
Feature Concerned
A printed circuit board comprising … a solder resisting layer that is formed to cover said hole plugging material, wherein said hole plugging material and said solder resisting agent …
Objection
The expression of “said solder resisting agent” in this claim lacks an antecedent basis.
Response
This claim was amended by introducing a relationship between the solder resisting layer and the solder resisting agent.
Result
The above defect was removed.
[Conclusion]
When drafting the claims, words like “said” shall not present before a technical feature that is mentioned for the first time. Additionally, pay attention to the consistency of the term modified by a word like “said.” For instance, if it is “a polymer composition” that is mentioned previously, then it is possible to use “said polymer composition” or “said composition” subsequently. Such expressions generally are allowable. In addition, do clarify respective structures, compositions and the relationships between them. The structures or compositions should have a direct or indirect connection with the claimed subject matter so that one skilled in the art can determine the scope of protection sought by the claim.
In response to an objection indicating that a claim is unclear due to the use of “said” or the like, generally, amendment to the claim is necessary.
<Case 5.4>
Feature Concerned
A polyester resin composition … containing (b) a sulfonamide compound metal salt which is a structure represented by the following general formula (1):
in the formula (1), … M represents a divalent metal atom or a linking group …
Objection
When M is a linking group, the compound represented by the general formula (1) contains no metal atom, which is contradictory to definition of a sulfonamide compound metal salt in this claim.
Response
This claim was amended by deleting the technical solution in which M is a linking group.
Result
The above defect was removed.
[Conclusion]
Avoid contradictory expressions in the claims as far as possible. Particularly, avoid contradictory expressions when making multiple restrictions to the same technical feature.
In response to an objection indicating that a claim is vague due to multiple contradictory restrictions, amendment to the claim usually is necessary, unless the examiner’s understanding is wrong.
4. Clarity of the claims as a whole
The claims as a whole shall be clear, which means that the relationships between the claims shall be clear. For example, a preceding claim refers to a subsequent claim, or a subsequent claim refers to a preceding claim but lacks a basis for this reference. These defects can be removed by making amendments to the claims.
<Case 6.1>
Feature Concerned
Claim 1: … a first member having a horizontal portion …
Claim 2: … the first member has a saw tooth-shaped portion …
Claim 3: … the first member has a curved portion …
Wherein, claims 2 and 3 respectively are dependent on claim 1.
Objection
It is unclear what relationship exists between the horizontal portion defined in claim 1 and the saw tooth-shaped portion and the curved portion defined in claims 2 and 3. It is possible that the first member has both a horizontal portion and a saw tooth-shaped portion or has both a horizontal portion and a curved portion, or it is possible that the saw tooth-shaped portion and the curved portion both are specific configurations of the horizontal portion.
Response
The aforesaid features in claims 2 and 3 were amended respectively to “… the horizontal portion of the first member is a saw tooth-shaped portion” and “… the horizontal portion of the first member is a curved portion.”
Result
The above defect was removed.
[Conclusion]
When drafting the claims, if the additional technical feature of a subsequent claim is a further restriction to some feature in a preceding claim, it is necessary to clearly define the relationship between the additional technical feature in the subsequent claim and the corresponding feature in the preceding claim.
In the face of an objection indicating that a claim is vague due to an indefinite object restricted by an additional technical feature, this defect usually can be removed by adding the relationship between the subsequent feature and the corresponding preceding feature, provided that the amendment does not go beyond the original scope of the application.
<Case 6.2>
Feature Concerned
1. A thin-film transistor … the channel layer is formed by an indium oxide film to which titanium or tungsten is doped.
3. The thin-film transistor according to claim 1, wherein the metal oxide containing indium is formed by sputtering a target including indium under an atmosphere including oxygen gas.
Objection
The expression of “the metal oxide containing indium” in claim 3 is inconsistent with “an indium oxide film to which titanium or tungsten is doped” in claim 1 to which claim 3 refers, so it lacks a reference basis.
Response
The expression “the metal oxide containing indium” in claim 3 was amended to “the indium oxide film to which titanium or tungsten is doped.”
Result
The above defect was removed.
[Conclusion]
Expressions of an identical technical feature in different claims shall be consistent with each other, or else the examiner may raise an objection indicating that the claim is vague. In the face of such an objection, first analyze whether the technical feature concerned is consistently expressed. If yes, make an explanation in the response to the office action in the response. Otherwise, make an amendment to the claims to make the expressions consistent.
5. Other issues
<Case 7.1>
Feature Concerned
… a drive counter that counts inputted drive pulses towards a direction from an initial value and counts a count value towards the direction of the initial value based on a unit detection pulse from said unit counter …
Objection
It is uncertain whether the “count value” is a count value of the “unit counter” or that of the “drive counter,” so this claim is not clear.
Response
The term of “count value” was amended to “count value of said drive counter.”
Result
The above defect was removed.
[Conclusion]
In the claims, if the same wording may refer to different technical contents, it is advisable to further restrict this wording so as to avoid an indefinite reference.
In the face of an objection indicating that a claim is vague due to an indefinite reference, it usually is necessary to amend the claim to indicate the specific content that is referred to.
<Case 7.2>
Feature Concerned
… the mechanical shutter comprises a second curtain that retains at an initial position before the movement using electric power …
Objection
The term of “a second curtain” is defined without a definition to a first curtain, so it is difficult to determine whether this term merely is a name of a member or is a name containing a serial number. Thus, it is difficult to determine whether the mechanical member comprises a first curtain.
Response
The term of “a second curtain” was amended to “a curtain.”
Result
The above defect was removed.
[Conclusion]
In the claims, if names of some members need to contain serial numbers, the members usually are named from “a first …” in order, for example, “a first curtain,” “a second curtain,” …
In the face of an objection indicating that a claim is vague due to such a mistake, it usually is necessary to amend the claim so as to clearly specify the different members.
<Case 7.3>
Feature Concerned
… at least one silanol compound represented by (a) (hereinafter referred to as component (a)) …
Objection
The content of “(hereinafter referred to as component (a))” is present in this claim. These parentheses limit different protection scopes. As a result, the protection scope of this claim is unclear.
Response
This claim was amended to the following one: … at least one silanol compound represented by (a), which hereinafter is referred to as component (a) …
Result
The above defect was removed.
[Conclusion]
Patent systems vary in different countries. In some countries the presence of parentheses in the claims is allowable while in other countries it is not allowed (except for those necessarily used with chemical formulae, mathematical formulae or reference signs). According to the current patent examination practices in China, the use of parentheses in the claims is not absolutely unallowable, but it generally is limited to those used with chemical formulae, mathematical formulae or reference signs. Thus, attention shall be paid to this when drafting claims.
The presence of parentheses in the claims usually does not result in vague technical contents but may cause an unclear scope of protection. Such a defect usually can be removed by making an amendment, for example, by deleting the parentheses. Generally, it is advised to retain contents enclosed in the parentheses and to properly adjust the word order in order to make the expression clear, provided that the protection scope is not narrowed thereby.
III. Conciseness of the claims
The conciseness of the claims has little influence on the protection scope of a patent. Despite that, the claims shall be concise. Claims are considered to be not concise mainly in circumstances where a claim contains contents that obviously have no actual definitive effect on the technical solution, and where there exist two or more claims that have substantively the same protection scope.
The claims should specify technical features but shall not contain contents that obviously do not have an actual definitive effect on the technical solution, such as commercial advertising, purpose or principle of the invention. The Chinese patent system has been in force for more than 30 years, so the professional level of applicants and patent attorneys has continuously improved, and expressions like commercial advertising rarely appear in the claims. In practice, if a claim contains contents regarding the purpose or principle of the invention, the examiner may raise an objection indicating “being not concise.” Once the examiner raises such an objection, consider carefully whether an amendment will go beyond the original scope. It is advisableto first communicate with the examiner and then decide how to make the response. If the amendment may risk going beyond the original scope of the application, it is advisable to make explanation in the response to the office action.
A patent application shall not contain two or more claims that have substantively the same protection scope. Such a defect sometimes exists in the initial application, but more commonly it exists in a subsequently amended application.
<Case 8.1>
Feature Concerned
Claim 2: An image processing method as claimed in claim 1, further comprising retrieving an image using such a registered index.
Claim 3: An image retrieval method, comprising retrieving an image using a registered index produced using a method as claimed in claim 1.
Objection
Despite different expressions, claims 2 and 3 are claims that have substantively the same protection scope.
Response
Claim 3 was deleted.
Result
The above defect was removed.
[Conclusion]
When drafting the claims, figure out how the respective claims connect and make sure that the set of claims does not contain two or more claims that have substantively the same protection scope.
In the face of an objection indicating that the claims are not concise because of more than one claim that have substantively the same scope of protection, this usually can be overcome by deleting some claims or technical solutions.
IV. Summary
Article 26.4 relates to the core portion of a patent application – the claims, so it is frequently quoted during the prosecution of a patent application. When drafting the claims, take note of the following aspects: firstly, pay attention to the connection between the claims and the description and ensure that the drafted claims can be obtained directly or by generalization from the contents sufficiently disclosed in the description; secondly, ensure that the protection scope of a claim is clear by selecting suitable terms, proper expressions, regular formats and so on; and thirdly, make the claims as a whole clear and concise by eliminating contents which are irrelavent to the technical contents, and by selecting proper reference relationships. When making a response to an office action, we shall first determine whether the objection is correct or not. If it is incorrect, then you could consider directly making an argument to that effect. Otherwise, it is necessary to determine is the reason causing the defect and then selects a proper approach to overcome it, for example, to make an explanation in the response to the office action and/or amend the claims.
, wherein, … X represents an alkyl group, a cycloalkyl group, an aryl group, an aralkyl group or a heterocyclic group; in which one or more hydrogen atoms on the carbon atom(s) of X may be replaced by a halogen atom, an alkyl group, a cycloalkyl group, an alkenyl group, an aryl group, an aralkyl group, an alkoxy group, an aryloxy group, a dialkylamino group, an acyl group or an arylcarbonyl group; and, when more than one hydrogen atom on the carbon atom(s) of X is replaced by the alkyl group, the alkenyl group, the aryl group, the aralkyl group, the alkoxy group, the aryloxy group, the dialkylamino group, the acyl group or the arylcarbonyl group, the adjacent groups may be bonded together to form a ring.
