AFD China Triumphs over Difficult Case Previously Considered Having No Substantial Patentable Content
One of the most difficulties every patent attorney would encounter is when all pending claims and the rest contents in application documents are held as having no substantial patentable content to be granted by examiners. Where Examiners believe that a patent application does not have the prospect of being granted, generally there is slim likelihood to reverse such an opinion.
Chinese examiners follow very strict rules on the examination on inventiveness issue recent years. It is common that Examiners may underestimate the inventiveness of claims and too easy for them to identify a distinguishing feature as a common knowledge in the art.
AFD’s prosecution regarding such a scenario in one case may shed some lights on how to response and make a win in this situation. We also develop a working approach within AFD team to deal with this kind of the action and our associates follow it very well.
Back to the case, the AFD team did not give up when receiving an Office Action in which the examiner was going to reject the patent application based on the reason of lacking substantial patentable contents in all contents of the application documents. The team ran detailed analysis and deduced that the examiner may come to the conclusion based on a wrong assumption, where the examiner compared a combination of separate and non-composable technical features from two incompatible embodiments described in the Reference with the technical features of a claim in this application. This is not easy to be found if one is not very proficient with hidden rules and tricks of patent drafting and at the same time familiar with the technology. Accordingly, we addressed in the response that the reference actually describes two incompatible embodiments where the technical features included by each of the two incompatible embodiments neither are interchangeable nor can be put together. It is incorrect for the Examiner to comment on the inventiveness of a claim in this application over such combining technical features from two incompatible embodiments.
The team also challenged the examiner on that the distinguishing feature technical being conventional technical means in the art was incorrect and asked the examiner to give his evidence for such a holding. With all these non-arguable opinions, the Examiner accepts our arguments.
Thereby, this patent application which was initially thought having no prospect of being granted by the Examiner is directly granted after just one Office Action.
In this case, AFD team managed to immediately grab the key points of the case and then well organize the response.
Reading carefully in the patent application document and references with independent view, trying to find the loophole of the Examiner’s analysis, incorrect course of inference, or any unreasonable conclusion, attacking those weaknesses one by one with well-founded arguments and deeply analysis is what AFD recommends and has been trying our best to do when dealing with difficult situations.