Difficult Patent Application Response: How to Cut the Root and Crack the Technical Implications of Comparative Documents

When responding to patent application substantive examination, it is common to encounter a situation where an X-class document evaluates creativity, and this examination opinion can make the agent feel mixed.

The worry is that this type of X-type comparison file often has a lot of publicly available content, with similar technical fields, solution content, and achieved effects, only a few small differences in technical features, making the hope of authorization seem slim.

Fortunately, since there is only one comparison file, as long as the impact of the comparison file is cracked, there is a high probability of patent application being authorized.

But in the practice of patent application response, agents often feel at a loss on how to crack the impact of comparative documents. If we only focus on these small differences in technical features and blindly state that the comparative documents do not disclose this feature, and that there are corresponding technical effects, it is not painful and difficult to fundamentally gain the approval of the examiner.

At this point, a better approach is to start with comparing files, analyze their implementation principles in depth, and not miss any details. Perhaps the expected results can be obtained.

1、 Case Summary

The patent application in question involves a long-lasting special lubricating grease for soap free wind turbine bearings and its preparation method. After receiving the rejection notice, the patent applicant contacted us to see if there is still room for recovery and the possibility of reauthorization.

In this case, the examiner only cited one comparative document, which is also a lubricating grease composition for protecting wind turbine bearings. Compared with comparative document 1, the patent application in question is not only similar in field, but also protects the same substance for the same purpose, and both are protective components, with certain differences in component content.

The examiner believes that based on the comparison of documents, the distinguishing technical features are the replacement of conventional means in this field or can be obtained by technical personnel in this field through conventional experimental means, which does not have creativity.

2、 Case analysis

After accepting the agency commission for this case, we did not easily deny the prospect of re examination. Instead, we carefully compared the case with the comparative document 1 and identified the differences between the two, including the differences in the technical features of the claims and the corresponding explanations in the specification.

Firstly, we found that although both use substances with similar functions, they only have similar functions, and the specific selected substances are different. For example, the antioxidant in this case is tetraerythritol ester, while the antioxidant in comparison document 1 is a phenolic antioxidant.

Additionally, it is crucial to note that through analysis, we have further discovered that Document 1 provides a viewpoint in the background technology that the excessively high viscosity of the base oil can lead to insufficient flowability of the lubricating grease. The technical solution in File 1 is also based on the premise of this recognition, and the corresponding material composition parameters are selected. However, in the patent application involved, a relatively high viscosity of the base oil was chosen, and according to the data provided in the specification, it can be proven that the base oil still has good fluidity when the viscosity is high.

Our preliminary judgment is that this will be the "life-saving straw" for the application to revive the case. Because according to the disclosure of comparative document 1, if a base oil with high viscosity is used, it will reduce the fluidity of the oil, and it is impossible for technicians in this field to use a base oil with high viscosity to manufacture oil. That is to say, compared to the application in question, Document 1 does not provide technical inspiration, or rather provides completely opposite technical inspiration.

According to the relevant provisions of the examination guidelines, the "three-step method" is usually used to evaluate the creativity of patents, namely: (1) determining the closest existing technology; (2) Determine the distinguishing features of the invention and the technical problems actually solved by the invention; (3) Determine whether the claimed invention is obvious to those skilled in the art. Based on the creative evaluation rule and the comparison with Document 1, the scheme of this case is not obvious relative to the comparison document, that is, Article (3) does not hold. Based on comprehensive analysis, the application in question has the potential for authorization.

3、 Response strategy

Based on the previous analysis, we introduced our preliminary judgment to the client, and the client also expressed that this is indeed the innovative point of the involved application, but they have been following the ideas of the review opinion in the early stage and did not pay attention to the issue.

We initiate a review of the rejection decision of the application in question, and the review request also focuses on key points for elaboration. The logic is roughly as follows:

(1) In principle, the application in question and the comparative document 1 have different technical ideas. The application involved in the case still has good fluidity when the viscosity of the base oil is high, breaking the technical orientation and bias of the comparison document 1 that the high viscosity of the base oil leads to insufficient fluidity of the lubricating grease. The comparison document 1 has no technical inspiration.

(2) Provide a specific analysis of the relationship between the distinguishing technical features in the claims and the flowability of oils and fats. It is pointed out that although the substance added in the case application has similar functions to the added substance disclosed in comparative document 1, the specific composition of the substance is different, and there are also certain differences in the composition of the substance. It is precisely because of these differences that the technical effect of "still having good fluidity when the viscosity of the base oil is high" has emerged.

(3) The characteristic of creativity in explaining chemical inventions often lies in the adjustment of components. For complex chemical products, the product itself is a mixture composed of multiple substances, and the mixture itself is formed through a series of physical and chemical reactions of various substances in the raw materials. Sometimes even small changes in content can bring significant changes in effectiveness.

After the request for reexamination was made, although the examiner did not recognize the viewpoint during the pre examination stage, the reexamination panel accepted our viewpoint and revoked the rejection decision after entering the panel examination stage. The patent application in question was granted authorization after further examination.

4、 Case insights

Every case has its bones, and patent application agency is no exception. The response to this type of review opinion that uses X-class comparison files may be in a dilemma. As an agent, in the face of being passive in all aspects of the case, one should not give up easily. Instead, one should carefully study and excavate favorable arguments for the involved application, decipher the technical insights from the comparative documents, and take a risk in order to achieve the expected results for the client.