For patent applications in the chemical field, it is often the case where an independent product claim only defines the components included therein, but does not define the contents of the components. In this regard, the examiner usually points out that the contents of the components are not limited in the claims, and only products including components with specific contents can solve the technical problem to be solved by the invention, so the claims cannot be supported by the description.
As to the above office action, it is important to consider whether the substance or improvement of an invention is related to the contents of the components when making a response. If the substance or improvement of an invention lies in the components per se, the solution to the technical problem only depends on the selection of the components, and those skilled in the art can determine the contents of the components according to the prior art or by simple experiment, it is permitted to only define the components in the independent claim and not define the contents of the components. However, if the substance or improvement of an invention lies both in the components and relates to the contents thereof, the solution to the technical problem depends not only on the selection of the components, but also on the determination of the particular contents of the components. In this case, both the components and the contents shall be defined in the independent claim.
If an independent claim for a product has defined the components contained therein and the amounts thereof, but the examiner considers that the range of some components and the amounts thereof defined therein is too wide, how should this situation be addressed? The following analysis is made in combination with a case.
Case
Claim 1 of an application document defines: "A thermoplastic resin composition comprising: 10% to 80% by weight of (A) component; 10% to 50% by weight of (B) component; 10% -70% by weight of (C) component; and 5-13 parts by weight of (D) component and 10-20 parts by weight of (E) component based on 100 parts by weight of a base resin including (A), (B) and (C) components".
The examiner pointed out that the description only disclosed the examples using the specific contents of (A), (B) and (C) components, which was not enough to support the content range defined in the claims, and the application documents only recorded and implemented the technical solutions of the specific (A), (B) and (C) types, which was not enough to support the broad protection scope of the components defined in the claims.
As to the above office action, the following response was mainly provided:
According to the disclosure of the description, the focus of the invention was not on adjusting types and amounts of base resin including (A), (B) and (C), but on using the special (D) and (E) components so that the purpose of improving the impact resistance and fluidity of the composition while maintaining the flame retardance of the composition was achieved. The types and amounts of the base resin were described in detail in the summary of the description in the application. The examples were only a reference for the implementation of the preferred technical solutions. For the technical solution which is not focused on the selection of the types and amounts of the base resin, the generalization of the base resin should be allowed to expand to the scope that is reasonably predicted and summarized according to the disclosure of the description and the prior art, rather than only being limited to the examples. The comparison between the examples and the comparative examples of the application can prove that the solution of the technical problem is due to the addition of the (D) and (E) components, and the amounts of the (A), (B) and (C) components in the base resin had a small impact on the solution of the technical problem of the application.
The key point of this application was mainly that the components (D) and (E) were added to the thermoplastic resin composition using the components (A) + (B) + (C) as the base resin to improve the flame retardance, impact resistance and fluidity of the thermoplastic composition, the solution of the technical problem thereof mainly depended on the components (D) and (E) with specific composition. Those skilled in the art can reasonably select the types and amounts of the (A), (B) and (C) components in the base resin according to the disclosure of the description in combination with the prior art. The generalization of the types and amounts of the (A), (B) and (C) components in the base resin in the application belonged to the scope that was reasonably predicted and summarized by those skilled in the art according to the disclosure of the description and the prior art. A reexamination was requested after the case was rejected, and the decision of rejection was withdrawn by the Patent Reexamination and Invalidation Examination Department of CNIPA.
The author believes that, in practice, when responding to the support problem of an independent claim relating to the compositions and/or contents of the product, whether the substance or improvement of an invention is closely related to the compositions and/or contents of the product can be considered. If the improvement of an invention lies in only the components per se and those skilled in the art can determine the contents of the components based on the sufficient disclosure of the description in combination with the prior art, as to the office action wherein the examiner indicates that the contents of the components should be defined in the claims, the applicant and the attorney can argue that the contents of the components need not be defined in the independent claim when making a response. If the key point of the invention lies mainly in certain components in a product claim, but not in types and contents of other components in the product claim, as to the office action wherein the examiner indicates the protection scope of the types and contents of other components is too wide, the applicant and the attorney may consider the impact degree of the types and contents of other components on solving the technical problem of the invention when making a response, and judge whether those skilled in the art can reasonably predict and summarize the types and contents of other components based on the sufficient disclosure of the description and the prior art.
The author gives an idea for solving the problem that claims related to typical composition or components when containing content technical feature cannot be supported by the description in the above. However, this idea may be similarly extended to deal with the problem that the other types of claims cannot be supported by the description.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
