Inventiveness argument from the perspective of technical problems

Inventiveness is a necessary condition for the grant of a patent right. Chinese examiners usually make an assessment on inventiveness using a three-step method: first, they determine the closest prior art. They then determine the distinguishing features of the invention and the technical problem solved by the invention before finally determining whether the invention is obvious to those skilled in the art.
The examiner’s assessment on inventiveness is made after the invention is completed and the application is submitted. Based on the hypothetical capability of those skilled in the art, subjective assessments are made regarding whether creativity is required at a relevant point of time (before the filing date or the priority date) between the existence of the prior art and the existence of the present invention, and whether it is obvious.
The examination is often conducted two to four years after the filing date or the priority date. This kind of post-event consideration, especially in cases where the invention has been fully outlined in the application document, is easily influenced by the technological developments at the time of the examination, thereby resulting in inappropriate assessments on the creative work or non-obviousness of the invention.
In practice, when assessing inventiveness, examiners often mistakenly carry out *ex post facto* analysis and tend to underestimate the inventiveness of the technical solutions of the invention. This makes it difficult for patent applications to be permitted, even if they are permissible.
Regarding the underestimation of inventiveness, we take as an example an administrative litigation case in which the patent re-examination decision was successfully reversed to discuss how to argue inventiveness from the perspective of technical problems to promote the permissibility of patent applications.

Case study
In this case, the patent application sought protection for a device for volumising hair. In the original re-examination proceedings, the China National Intellectual Property Administration (CNIPA) made a re-examination decision to maintain the rejection on the grounds that the claims lack inventiveness.
Although the re-examination decision recognised that the first claim (claim 1) differed from reference 1, it considered that reference 2 provided a corresponding technical hint. The panel believed that based on the distinguishing technical features, it can be concluded that “the technical problem actually solved by the present application is how to provide a more stable perm than that provided by the hemispherical shape when the curling iron is specifically used for volumising hair”. It held that:

Reference 2 discloses the feature that the working surface that contacts hair in the curling iron has a flat top surface, and it is generally recognised by those skilled in the art that, compared to a curved surface such as a hemisphere, a flat top surface can provide a more stable and lasting support structure for hair; that is, the above-mentioned feature of ‘flat top working surface’ in reference 2 actually plays a role in providing a more stable and lasting perm shape. Therefore, when the electric curling iron in reference 1 is used to volumise hair, to perm hair into a more stable hairstyle, those skilled in the art are motivated to search for corresponding technical means in the prior art to solve the above technical problem, and reference 2 offers the technical enlightenment of configuring the perm working surface to a flat top surface to solve this technical problem. Those skilled in the art are therefore motivated to apply the ribs with a rectangular flat surface disclosed in reference 2 to reference 1 to improve the technical solution by replacing each hemispherical tooth in reference 1 with a tooth with a flat top surface, thereby making the permed hairstyle more stable and durable.

The authors believed that the assessment on inventiveness made in the re-examination decision was incorrect and therefore filed an administrative lawsuit with the Beijing Intellectual Property Court (the Court). The Court upheld the authors’ opinion, determined the claims to be inventive and ruled to reverse the re-examination decision.
In that judgment, the Court affirmed that the technical problem identified in the re-examination decision “is more like a conclusion reached after comparing the ‘rectangular shape’ of the present application, which belongs to an *ex post facto* analysis made after having understood the technical solution of the present application.” It held that:

the technical problem should be identified based on the required hair volumising effects and the required hair volumising effects that the curling iron failed to achieve. As described in the prior art of the present application, the pattern is easily exposed through the upper scalp, the lower layer of hair is not firmly supported, and hair volume, frizzy hair and the like are technical problems that exist when a curling iron is used for volumizing hair.

The Court, therefore, held that it is reasonable to claim that “the technical problem actually solved by the present application is to ‘provide an appearance of greater hair volume with a firm support structure, while minimising visible patterns in the hair and not causing the undesirable appearance of frizzy hair’”.
The Court also held that “although reference 2 discloses ribs with a rectangular cross-section, it does not provide the technical enlightenment that its protruded rib shape can ‘provide an appearance of greater hair volume with a firm support structure, while minimising visible patterns in the hair and not causing the undesirable appearance of frizzy hair’”.
The CNIPA did not appeal after receiving the judgment, and the patent application was successfully allowed.

Arguing inventiveness from the perspective of technical problems
In the case study, because the examiner adopted a *ex post facto* analysis, the examiner failed to correctly determine the technical problem and thus failed to consider the correct technical problem when determining whether reference 2 offered a technical enlightenment. Consequently, the inventiveness of the claims was underestimated.
Conversely, regarding the examiner’s underestimation of inventiveness, an argument could be made regarding from the perspective of the examiner making an incorrect identification of the technical problem.

Has the technical problem been correctly identified?
During the examination, the examiner must objectively analyse and determine the technical problem actually solved by the invention. To this end, the examiner must first determine the distinguishing features of the claimed invention as compared with the closet prior art and determine the technical problem actually solved by the invention according to the technical effect of the distinguishing features. In this regard, the technical problem actually solved by the invention refers to the technical features in improving the closest prior art to obtain better technical effects.
The technical problem actually solved by the invention should be determined according to the effects of the distinguishing features in the claimed invention. If the examiner identifies the technical features or technical means *per se* as the technical problem, the examiner will violate the relevant provisions of the Guidelines for Patent Examination.
Since the technical features or the technical means are usually known after the technical solution of the invention has been understood, if the technical features or the technical means are regarded as a part of the technical problem solved by the invention, the examiner may no longer consider the technical problem when determining whether the technical solution is obvious; rather, the examiner may only pay attention to the technical means, which will lead to misjudgement and an incorrect conclusion on inventiveness.
In the case study, the technical problem identified by the examiner was how a more stable perm than that provided by the hemispherical shape could be provided; however, this identification is itself more akin to an implication and a guidance of the technical means (ie, it implies that greater stability can be achieved through a change in shape) rather than a technical effect achieved by the distinguishing technical features.
If an ordinary person skilled in the art with no creative ability uses the curling iron in reference 1 to volumise hair and realises that the volumising effect is not good enough, he or she will not necessarily be able to conclude that the effect could be improved by changing the shape of the iron’s teeth.
The examiner was inspired by the benefit of hindsight, reaching that conclusion only after having read the patent application documents.

Does assessment on technical motivation start from the technical problem actually solved?
In making an inventiveness assessment, the examiner must make an assessment, starting from the closest prior art and the technical problem actually solved by the invention, regarding whether the claimed invention is obvious to those skilled in the art.
During the assessment, what must be determined is whether a technical motivation exists in the prior art to apply the distinguishing features to the closest prior art to solve the existing technical problem (ie, the technical problem actually solved by the invention), where the motivation will prompt a person skilled in the art, when confronted with the technical problems, to improve the closest prior art and thus arrive at the claimed invention.
When determining whether there is a technical motivation in the prior art, it is necessary not only to pay attention to whether the prior art discloses the technical means but also to consider, starting from the technical problem actually solved by the invention, the role of the corresponding technical means in the prior art.
Setting aside the technical problem actually solved by the invention and only searching for technical means similar to the distinguishing features in the prior art will lead to an incongruity between the determination on obviousness and the first two steps (ie, determination of the closest prior art and determination of the distinguishing features of and the technical problem solved by the invention), thus affecting the conclusion on inventiveness.
In many cases, the references cited by the examiners disclose technical means that are similar to the distinguishing features but do not record the role of the technical means played in the references, or record a role different from the role played by the distinguishing feature in the claimed invention. In those cases, the content disclosed in the references should be objectively analysed from the perspective of those skilled in the art to identify the actual role of the technical means in the references.
If the technical means disclosed in the references play a different role in the references than the role played by the distinguishing features in solving the technical problem in the claimed invention, the references should not be deemed to provide a technical motivation.

Comment
The assessment on inventiveness is a logical reasoning process. Only when each step of the three-step method is properly accomplished can a correct conclusion on inventiveness be drawn.
As an intermediate step, determining the technical problem actually solved by the invention is closely related to the third step (ie, determining whether the invention is obvious) and may play a vital role in the assessment on inventiveness.
When responding to issues regarding inventiveness, if it can be argued that the examiner made an incorrect identification, (eg, the technical problem identified by the examiner in the case study) and the logical deduction of the examiner’s three-step method can be overturned, there is a chance to prove that the claims are inventive compared to the references cited, thereby advancing the permissibility of the application.