Paragraph 3 of Article 22 of China's Patent Law stipulates:Creativity means that, compared with the prior art, the invention has outstanding substantive features and marked progress, and the utility model has substantive features and progress.
In replies to notices of review we often encounter situations where claims 1-N do not have the creativity required by paragraph 3 of Article 22 of the Patent Law. So how does the notice of review usually negate the creativity of the claim?When faced with these negative creative situations, how do we respond? In view of the above problems, the author makes a simple summary as follows:
There are generally several ways in which examiners negate creativity in notice of review comments:
1.The relevant technical features in this application are disclosed in the closest prior Art comparison document 1.
Usually in the notice of review the examiner will say that one of the technical features described in comparison document 1 is equivalent to one of the technical features in this application.
2.The different technical features between this application and comparison document 1 are disclosed in comparison document 2 and other comparison documents.
Usually in the notice of review the examiner will say that comparison document 2 (or other comparison document) discloses a different technical feature between this application and comparison document 1.And the technical features have the same effect in comparison document 2 (or any other comparison document) as they have in this application.Comparison document 2 (or other comparison document) gives technical implications for applying the technical characteristics to the closest existing technology comparison document 1. That is, the technical solution of this application can be obtained by combining comparison document 2 (or other comparison document) with comparison document 1.
3.The technical features distinguished between this application and comparison document 1 are easy to think of as common knowledge in the field or as conventional technical means.
In view of the ways examiners usually used to negate creativity in the notice of review opinions mentioned above, we should make targeted replies according to their own characteristics, specifically as follows:
Regarding the first point, we need to find the relevant technical features recorded in the comparison document 1 and compare them with the technical features in this application to see whether the two technical features are the same.If it is determined that the two technical features are not identical and belong to two different technical features, the technical features constitute the different technical features of this application and the comparison document 1.We can discuss its creativity in detail according to the role of the distinguishing technical features in this application, the technical problems actually solved and the technical effects achieved.
For the second opinion, we need to find the relevant technical features recorded in the comparison document 2, and then check whether the technical features recorded in the comparison document 2 are the same as those in this application. If not the same, the comparison document 2 does not disclose the different technical features in this application technically, in which case the response is relatively simple.If the technical characteristics recorded in comparison document 2 are the same as those in this application,in this case, we need to determine the role of this technical feature in comparison document 2 and this application, that is, whether the same technical feature plays the same role in comparison document 2 and this application.If not, comparison document 2 still does not disclose the technical features in this application.If they are the same, you can only see if there is a combined revelation between comparison document 1 and comparison document 2.If there is no combination of revelation, we can discuss in detail that the technical personnel in this field will not think of combining the technical means of comparison document 2 on the basis of the technical scheme comparison document 1. If there is a combination of revelation, we can also take a further look at whether the comparison document 1 can be combined with the technical means of comparison document 2, and whether there is a combination barrier between the two.
In view of the third point, we can follow the examiner's ideas to think, further look at whether the different technical features in the application can be thought of.If not, what technology is easy to think of. For common knowledge and conventional techniques, we should see if there is such a technique in the area of expertise. If there is such a technical means, then we need to see this technical means is used to solve what technical problems in the conventional, so as to further determine whether it is a conventional application in this application, whether to achieve the technical effect that can not be achieved in the conventional.
To sum up, the inventor and the applicant should not be unduly concerned even if, upon receipt of an examination opinion, the examiner finds that all claims in this application are not creative. The review opinion is the preliminary conclusion of the examiner and does not imply that there is no possibility of a reply to this application.
1.The review opinion issued by the examiner is not entirely correct: at this point, the examiner can be persuaded to authorize by deletion, consolidation of the claims, or a direct statement of opinion.
(2)The review opinion issued by the examiner was absolutely correct: we could persuade the examiner to authorize it by finding some scheme content from the specification that was not included in the claim and adding it to the original claim, redefining the point of invention
