[authors: Cheng Liu and Tao Chen]

I Introduction

Under Rule 20.2 of the Implementation Regulations of the Chinese Patent Law, “The independent claim shall outline the technical solution of an invention or utility model and state the essential technical features necessary for the solution of its technical problem.” Lacking essential technical features falls in the circumstances of rejection as well as the circumstances of invalidation. Thus, overcoming the objection of lacking essential technical features is of great significance. This article intends to discuss the strategy for arguing against objection of lacking essential technical features based on an example case.

II Related Article of Guidelines for Patent Examination

Section 3.1.2 of Chapter 2, Part II of Guidelines for Patent Examination specifies as below:

“Essential technical features” refer to the technical features of an invention or utility model that are indispensable in solving the technical problem and the aggregation of which is sufficient to constitute the technical solution of the invention or utility model and distinguish the same over the technical solutions described in the background art.

In determining whether a certain technical feature is an essential technical feature, the examiner shall start from the technical problem to be solved and take account of the whole contents of the description, rather than simply take the technical features of an embodiment as the essential technical features.

Accordingly, in the determination of lacking essential technical features, “the technical problem to be solved” is a key factor. The drafting manner of “the technical problem to be solved” may vary according to different applicants. The technical problem to be solved is sometimes explicitly described in the written disclosure while sometimes not. Therefore, a key to arguing against the objection of lacking essential technical features is to correctly understand the technical problem to be solved by the invention.

III Case Introduction

The subject application relates to a big data analyzing method. The specification includes a section of “Problem to Be Solved”, describing that “in the case of grouping multiple samples, it is required to satisfy the following requirements: Requirement (1) …; Requirement (2) …; Requirement (3) …; Requirement (4) …; and Requirement (5) …. The present disclosure is accomplished in order to solve the afore-mentioned problems and intends to provide a big data analyzing method satisfying the various requirements described above.”

The office action points out that the technical problem of the subject application is to provide a big data analyzing method satisfying Requirements (1) to (5); in order to solve this technical problem, a feature recorded in the specification is the essential technical feature; independent claim 1 does not define this feature and thus lacks the essential technical feature.

However, under the provision of Guidelines for Patent Examination on essential technical features, the independent claim may only define a technical solution that is distinguished from those described by the background art and can solve one technical problems to be solved by the subject application. It is not required that the independent claim must solve all of the technical problems to be solved by the subject application.

On this basis, we did not amend claim 1 and merely argued as below.

Although the specification describes that the present disclosure “intends to provide a big data analyzing method satisfying the various requirements described above”, it is to be appreciated by a person skilled in the art that the object of invention described here is the comprehensive object; whereas it is sufficient for the technical solution defined by an independent claim to satisfy one or more of the requirements as compared with the prior art.

Based on the disclosure of the specification, by the group determination step according to claim 1, the sample group can be determined at higher accuracy as compared with the prior art, thereby satisfying Requirement (1). Thus, claim 1 can solve the technical problem to be solved by the present application.

The feature mentioned in the office action to be the essential technical feature is in fact a preferable embodiment for achieving better technical effect in addition to solving the technical problem, and is further improvement of the technical solution of the present application. That is, they are not the essential technical features.

The examiner was convinced by our arguments.

IV Case Analysis

The office opinions with regard to lacking essential technical features are given from the following three perspectives: (1) the technical problem to be solved by the subject application; (2) the technical feature mentioned in the office action is the essential technical feature for solving the technical problem; and (3) the independent claim lacks the essential technical feature.

In response, we may argue from the corresponding perspectives as below.

First, determining the technical problem to be solved by the independent claim, and judging whether or not the technical problem determined by the examiner is correct

The technical problem to be solved by the application could be a technical problem explicitly recorded in the specification, a technical problem directly determined from the specification, or a technical problem that can be deferred from the technical effect or the technical solution recorded in the specification. If the technical problem determined by the examiner is none of the above, it could be confirmed that the technical problem determined by the examiner is improper.

Where multiple technical problems are concluded from the disclosure of the specification, we may further determine whether or not the technical problem determined by the examiner is the one to be solved by the independent claim. It is possible that the technical problem determined by the examiner is indeed described in the specification, but is not the technical problem to be solved by the independent claim. In such circumstances, the technical problem determined by the examiner should also be deemed improper.

Second, based on the technical problem determined previously, determining whether or not the independent claim can solve the technical problem

If yes, we can argue directly. If the independent claim cannot solve the technical problem, we need to consider amending the claims to incorporate the essential technical feature.

Finally, further analyzing whether or not the “essential technical feature” determined by the examiner is essential for solving the technical problem determined previously

If yes, it would be necessary to incorporate this feature into the independent claim. If not, we should state the specific reasons based on detailed explanation in the response.

V Summary

The key to the determination of lacking essential technical features is to objectively and correctly determine the technical problem the subject application intends to solve. Convincing arguments can only be set forth based on determining the correct technical problem.

Foregoing is a simple conclusion of the authors’ practical experience in arguing against the objection of lacking essential technical features. It would be more than delightful if this article comes in handy. Further, if you have any suggestion and supplementary opinion, you are more than welcomed to let us know.