Difficult patent application response: Faced with unclear examination opinions on the 26.3 specification, we need to dare to "show our sword"

In patent application examination opinions, the most common phrases are "lack of novelty", "lack of creativity", and "unclear". Among them, "unclear" can be divided into "unclear claims" and "unclear specification". 'Unclear specification' refers to non-compliance with Article 26 (3) of the Patent Law (the specification should provide a clear and complete explanation of the invention or utility model, subject to the ability of technical personnel in the relevant field to implement it). Although compared to other types of examination opinions, the proportion of "unclear specification" examination opinions is not high, once it occurs, its consequences are extremely serious, often meaning that the patent application will be rejected.

Our usual strategy for responding to the review comments of "unclear instructions" is to seek external evidence to support and convince the examiner. However, due to the different specific circumstances of each case, it is often difficult to accurately find external evidence that can fully convince the review. Therefore, how to find strong internal evidence from the patent application text has become the key to whether the patent application can pass the examination.

1、 Case Summary

The patent application in question involves a rotating wind mist quenching device for high-temperature heat treated castings, and the patent application was rejected on the grounds that "the present application specification does not comply with the provisions of Article 26 (3) of the Patent Law".

The specific reason for rejection is that there is a contradiction between the description in the manual that "the first fan 12 is fixed to the first support frame 11" and "the first fan 12 is rotatably connected to the mounting bracket 111 through the mounting hole". It is unclear to those skilled in the art how the first fan 12 is rotatably connected to the mounting bracket 111 through the mounting hole, and the use of this method by those skilled in the art cannot solve the problem to be solved by the utility model. The accompanying drawings also lack a specific product structure for implementing this idea, which makes the content recorded in the manual unable to constitute a clear and complete technical solution, and therefore does not comply with the provisions of Article 26 (3) of the Patent Law.

Related patent drawings

2、 Case analysis

The main reason for the rejection of the patent application in question is that the examiner believes that the use of the term "fixed" makes it impossible for this application to solve the claimed technical problem, that is, the traditional quenching process can only cool one side or part of the workpiece on the workbench, and cannot achieve simultaneous cooling of multiple surfaces or the whole.

After careful analysis of the content and examination opinions of the patent application involved, we have found the following issues:

1. The understanding of "fixed" deviates from the application text

Article 26 (3) of the Patent Law stipulates that the specification shall provide a clear and complete explanation of the utility model, based on the ability of technical personnel in the relevant technical field to implement it; Therefore, the understanding of the term 'fixed' should be evaluated from the perspective of technical personnel in this field.

In addition, the patent application specification is a whole, and the understanding of the term "fixed" should be combined with the entire text of the patent application in question, rather than isolating the term "fixed" and only reading its literal meaning.

2. Blurred the solution to technical problems

From the perspective of the technical problem to be solved, the actual technical problem to be solved in this application is that traditional quenching processes can only cool one side or part of the workpiece on the workbench, resulting in poor uniformity of quenching temperature in various parts of the casting; The solution is to achieve uniform cooling on multiple surfaces, and on this basis, the first fan is installed in a "fixed" or "rotating" manner, which will not affect the solution to the technical problem in this application.

3、 Review ideas

Based on the previous analysis, a review has been initiated for the rejection decision of the application in question, with the main reasons for the review being:

1) Based on the full text of this application, it is recorded in multiple places that "the first fan 12 is rotatable", which can "make the adjustment of the fan angle more convenient". From this, it can be inferred that the application in question clearly states that the first fan 12 can rotate relative to the bracket type.

2) Based on the accompanying drawings and the content recorded in the manual, the manual clearly states that "the first fan 12 is fixed to the first support frame 11 through the installation bracket 111, and the first fan 12 can rotate relative to the installation bracket 111". Therefore, the term "fixed" here should be understood as "setting and installation", which means "restricting the first fan 12 from moving relative to the first support frame 11".

3) The actual technical problem to be solved in the case application is: how to solve the problem that traditional quenching processes can only cool one side or part of the workpiece on the workbench. To solve this problem, the two spray components in the application involved are located on the upper and lower sides of the rotating disk. During operation, the casting is located on the rotating disc assembly and rotates with the rotating disc; The first spray component and the second spray component respectively conduct spray cooling on two sides of the casting. In addition, the casting is always in a rotating state during quenching, which truly realizes 360 ° all-round quenching operation, to ensure the uniformity of quenching temperature at all parts of the casting, and can significantly improve the quenching quality of the casting.

It can be seen from this that the key to solving the technical problem is to drive the casting to rotate through the upper and lower spray components and the rotating disc, so as to realize 360 ° all-round quenching operation. Therefore, the "fixation" and "rotation" of the first fan 12 do not affect the solution to the basic technical problems of the scheme itself.

After the request for reexamination was made, the reexamination panel accepted our viewpoint and revoked the rejection decision. The patent application in question was granted authorization after further examination.

4、 Case insights

Patent applications rely on text to convey corresponding meanings, and different individuals may have different understandings of certain texts. When there are ambiguities in some content that lead to misunderstandings, corresponding legal provisions can be combined to start from the patent application text, fully utilizing the internal evidence recorded in the case to find breakthrough points.

At the same time, when encountering unclear review opinions on instructions that do not comply with clause 26.3, the agent should actively strive for them, argue with reason, and show a brave attitude. Even if the patent is rejected, a final solution can still be sought through the review process.