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AFD China's Case Study on Assessment of Obviousness and Inventive Step in Patent Application

Many professionals have the same opinion that Chinese examiners follow very strict rules on the examination on inventiveness issue recent years. It looks common that Examiners may underestimate the inventiveness of claims. In many cases, after reviewing inventions over prior art references, examiners are likely to hold that the distinguishing features of the technical schemes in claims are actually conventional technical means, known common technical knowledge or conventional choice of a person skilled in the art, or can be easily/naturally conceived by a person skilled in the art according to actual needs, or can be obtained by a person skilled in the art through limited experiments. Thus, frequently it would be difficult to persuade examiners to change such hindsight view since the judgment is generally based on their own technical background and knowledge reserve. 

AFD meets such a case recently when prosecuting a patent application for a temperature determining method using on railway system. For this case, the challenge is how to successfully attack the Examiner’s opinion that establishing a model to determine parameters related to the stability of the track belongs to the conventional technical means in the art. 

The Examiner pointed out that the parameters used during the modeling process are the experimental indexes, which may be readily conceived by a person skilled in the art. 

However, after reviewing and studying on the application documents of this case and the reference cited by the Examiner, we find out that the difference between the two technical schemes of this case and that in the reference is not just the modeling issue, but even implies a solution to the current technical hurdle on stress free situation which affects the development of track traffic technique.

We believe that the content disclosed by the Reference focuses on dynamic characteristic analysis, i.e., the responsive relationship between force and track, but it does not disclose, teach, or relate to the inventive point of stress free temperature. In order to confirm our view, we set up discussions with the inventors and the technical staff of the applicant to further confirm that the Reference is absolutely not relevant to stress free temperature from the technical point of view. With the joint efforts, the reasonable and persuasive argument finally persuaded the Examiner to change her previous opinion and accept that claims of the present application possess inventiveness. 

AFD always tries to find a good approach to challenge examiners’ opinions and keeps smooth communication with inventors and applicants as well as examiners during the process of cases. 

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