Paragraph 3 of Article 22 of Patent Law in China stipulates :"creativity" means that compared with the prior art, the invention has outstanding substantive characteristics and significant progress, and the utility model has substantive characteristics and progress.
In the notice of review opinion, examiners usually use the following ways to negate creativity:
1. The relevant technical features in this application are disclosed in the closest Prior Art comparison document 1. Usually in the Notice of Opinion the examiner will say that one of the technical characteristics recorded in Document 1 is equivalent to one of the technical characteristics in this application.
2. The distinguishing technical features between this application and comparison document 1 are disclosed by comparison document 2 and other comparison documents.Usually in the Notice of comments, the examiner will say that comparison document 2 (or other comparison document) discloses some distinguishing technical features between this application and comparison document 1. And that technical characteristic plays the same role in comparison Document 2 (or any other comparison document) as it does in this application.Comparison Document 2 (or other comparison document) gives the technical implications of applying the technical characteristics to the closest Prior Art comparison document 1, that is, comparison document 2 (or other comparison document) ,when combined with comparison document 1, can obtain the technical solution of this application.
3.The distinguishing technical characteristics between this application and the comparison document 1 are easy to think of and are common knowledge or conventional technical means in this field.
In view of the above ways the examiner used to negate the creativity in the examination opinion notice, we should make targeted reply according to their own characteristics, specifically:
In view of the first opinion, we need to find the relevant technical features recorded in 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 characteristics are not identical and belong to two different technical characteristics, then the technical characteristics constitute the distinguishing technical characteristics between this application and comparison Document 1.We can discuss the creativity in detail according to the function of the distinguishing technical characteristics in this application, the technical problems actually solved and the technical effects achieved.
In view of the second opinion, we need to find the place where there are 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 the application.If not, then comparison document 2 does not disclose the distinguishing technical features of the application by technical means, in which case the reply is relatively simple.And if the technical characteristics recorded in comparison document 2 are the same as those in this application,in this case, we need to determine what is the role of the technical characteristic in comparison document 2 and in this application, that is, whether the same technical characteristic plays the same role in comparison document 2 and in this application, if not, then comparison document 2 still does not disclose the technical characteristics in this application.If they are the same, we can only see if there is a combination revelation between comparison document 1 and comparison document 2.If there is no combination revelation, we can elaborate on the technical personnel in this field will not think of the technical means of combining the technical scheme of the comparison document 2 on the basis of the comparison document 1.If there is a combination revelation, we can also further see whether the technical means of comparison document 1 can be combined with that of comparison document 2, and whether there is a combination barrier between the two.
In response to the third opinion, we may follow the examiner's lead and take a further look at whether the distinguishing technical features in this application can be thought of, and if not, what technical means can be easily thought of.For known common sense and conventional techniques, we can have a look at the area whether there is this kind of technical means, if there is this kind of technology means, we need to take a further look at that technology is used to solve what problems in the conventional so as to further determine whether it in this application is belong to the normal application, is there any effect that cannot be reached by conventional technology.
In summary, upon receipt of the review opinion, the inventor and the applicant need not be unduly concerned even if the examiner considers that the entire claim in this application is not creative. The review opinion is only the Examiner's preliminary conclusion and does not imply that there is no possibility of reply to the authorization:
1.The review opinion issued by the examiner is not completely correct: at this time, the examiner can be persuaded to authorize by deleting, merging or directly stating the opinion of the claim.
2)The review opinion issued by the examiner is absolutely correct: we can find some scheme content not recorded in the claim from the specification to add to the original claim, and redefine the invention point, so as to persuade the examiner to authorize.