Recently, our firm won the second instance of an administrative lawsuit on invalidation declaration of a patent for invention, successfully having the patent fully invalidated by th...
Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Effective Rebuttal on Multiple References Cited for an Individual/Single Distinguishing Feature
Wenwen DAI
Chinese Patent Attorney
I. Introduction
The Guidelines for Patent Examination stipulates that generally the determination of whether or not the claimed invention is obvious in view of the prior art may follow the “three-step method”, i.e., (1) determining the closest prior art, (2) determining the distinguishing technical feature of the invention and the technical problem actually solved by the invention, and (3) determining whether or not the claimed invention is obvious to a person skilled in the art. In step (3), there is a need to determine whether or not the prior art contains a technical teaching for applying the distinguishing technical feature to the closest prior art to solve the technical problem actually solved by the invention. In China’s IP practice, compared to the common case where a distinguishing technical feature is rejected by citing one prior art document, it is relatively rare that multiple prior arts are cited in combination to reject an individual distinguishing technical feature. However rare, it still happens; and it is very important to properly respond to the office opinions on an individual distinguishing technical feature based on a combination of multiple prior arts. Herein with one example case, discussion is made on the response strategy for the individual distinguishing technical feature rejected based on a combination of multiple prior arts.
II. Provisions of the Guidelines for Patent Examination
The Guidelines for Patent Examination includes the following provisions for the third step of the “three-step method” in Section 3.2.1.1 of Chapter 4, Part II:
At this step, the examiner shall make a judgment, starting from the closest prior art and the technical problem actually solved by the invention, as to whether or not the claimed invention is obvious to a person skilled in the art. In the course of judgment, what is to be determined is whether or not there exists such a technical motivation in the prior art as to apply said distinguishing features to the closest prior art in solving the existing technical problem (that is, the technical problem actually solved by the invention), where such motivation would prompt a person skilled in the art, when confronted with the technical problem, to improve the closest prior art and thus reach the claimed invention. If there exists such a technical motivation in the prior art, the invention is obvious and thus fails to have prominent substantive features.
Under the following circumstances, it is usually thought there exists such a technical motivation in the prior art.
(i) The said distinguishing feature is a common knowledge, such as a customary means in the art to solve the redetermined technical problem, or a technical means disclosed in a textbook or reference book to solve the redetermined technical problem.
(ii) The said distinguishing feature is a technical means related to the closest prior art, such as a technical means disclosed in other part of the same reference document, the function of which in the other part is the same as the function of the distinguishing feature in the claimed invention in solving the redetermined technical problem.
(iii) The said distinguishing feature is a relevant technical means disclosed in another reference document, the function of which in that reference document is the same as the function of the distinguishing feature in the claimed invention in solving the redetermined technical problem.
Pursuant to these provisions, in order to determine whether there exists such a technical motivation in the prior art as to apply the distinguishing features to the closest prior art in solving the existing technical problem, the correct way is to determine whether a prior art other than the closest prior art has provided a technical motivation to apply the distinguishing features to the closest prior art. Accordingly, a key to overcoming the rejection to an individual distinguishing technical feature in view of a combination of multiple prior arts is to correctly determine whether a prior art other than the closest prior art has provided a technical motivation to apply the distinguishing features to the closest prior art and whether the rejection of the examiner to the distinguishing technical feature complies with the above provisions.
III. Case Study
In the objection to claim 1, the examiner states that: as compared with D1, claim 1 has distinguishing technical feature A; based on distinguishing technical feature A, the technical problem actually to be solved by claim 1 is problem B; D2 provides a technical motivation to arrive at a part of the technical concept of the subject application reflected by distinguishing technical feature A, so that a person skilled in the art would look to incorporate a function corresponding to said part of technical concept into the device of D1; further, D3 provides a technical motivation to arrive at a part of distinguishing technical feature A, so that a person skilled in the art has the motivation to incorporate said part of the feature to D1 and D2, and provide the rest part of distinguishing technical feature A as needed; thus, claim 1 does not possess inventiveness.
The author, as the responsible patent attorney, studied the application document and D1 to D3 and note that the examiner was correct about the identified distinguishing technical feature and the technical problem actually to be solved by claim 1; but any of the rest part of D1, D2, and D3 does not disclose distinguishing technical feature A. As stipulated in the Guidelines for Patent Examination with regard to the technical motivation to apply the distinguishing technical feature to the closest prior art to in solving the existing technical problem, in this case the prior art can be considered to provide such a technical motivation as to apply the distinguishing technical feature A to the closest prior art in solving the existing technical problem B should only distinguishing technical feature A be the common knowledge in the art for solving technical problem B, or any of the rest part of D1, D2, and D3 disclose distinguishing technical feature A and distinguishing technical feature A plays the same role in prior art. The Guidelines for Patent Examination does not specify a circumstance where an additional prior art provides a technical motivation. In particular, there is no mentioning of a circumstance where two independent prior arts can be combined in order to assess a distinguishing technical feature.
Specifically in this case, the examiner raises the objection that although D2 does not discloses distinguishing technical feature A, a person skilled in the art still combines D2 to D1; and although D3 does not disclose distinguishing technical feature A, a person skilled in the art still combines D3 to the technical solution obtained by combining D1 with D2. Such assertion is obviously incompliance with the provisions of the Guidelines for Patent Examination and is improper.
Based on the foregoing consideration, the author made the following arguments for distinguishing technical feature A:
… Therefore, D2 cannot provide the motivation such as to apply distinguishing technical feature A to D1 in order to solve technical problem B.
… Therefore, D3 cannot provide the motivation such as to apply distinguishing technical feature A to D1 in order to solve technical problem B.
Furthermore, regarding distinguishing technical feature A, the correct manner to determine its inventiveness in accordance with the provisions of the Guidelines for Patent Examination should be as follows: first determining whether or not D2 provides the technical motivation to apply Feature A to D1 to solve the corresponding technical problem; if not, a person skilled in the art will not combine D2 to D1; or, determining whether or not D3 provides the technical motivation to apply Feature A to D1 to solve the corresponding technical problem; if not, a person skilled in the art will not combine D3 to D1. That is, it should be determined whether D2 or D3 provides the technical motivation to apply Feature A to D1 that is the closest prior art.
Whereas the examiner’s assertion equals to stating that although D2 does not disclose Feature A, a person skilled in the art still combines D2 to D1; and although D3 does not disclose distinguishing technical feature A, a person skilled in the art still combines D3 to the technical solution obtained by combining D1 with D2. It can be seen that the examiner uses the technical solution obtained by combining D1 with D2 as the closest prior art. However, D1+2 is not a prior art of objective existence and cannot serve as the closest prior art. The objection of the examiner based on such assertion departs very far from the Guidelines for Patent Examination and is improper.
The examiner was convinced and abandoned the above objection in question.
IV. Conclusion
The above case shows that when confronted with an objection to an individual distinguishing technical feature based on a combination of multiple prior arts, the key to overcoming the objection is to correctly determine whether each one of the multiple prior arts provides the technical motivation to combine the distinguishing technical feature to the closes prior art. If any of the cited prior art fails to provide such a motivation, it can be concluded that the prior art does not provide such a technical motivation as to apply the distinguishing technical feature to the closest prior art in solving the existing technical problem. On this basis, the applicant may simply draw a conclusion of the assertion of the examiner and point out that such assertion does not comply with the corresponding provisions of the Guidelines for Patent Examination.
Foregoing is the author’s practical experience and considerations on the response strategy for overcoming an objection to an individual distinguishing technical feature based on a combination of multiple prior arts. It is hoped that this article would provide some reference for fellow attorneys. I would of course welcome any comments and/or diverging views on this topic.
