The inventiveness of the invention is well known, which means that as compared with the prior art, the invention has prominent substantive features and represents notable progress. In the process of inventiveness examination of the invention, the examiner generally evaluates the inventiveness of the claim in three steps, that is, (1) determining the closest prior art, (2) determining the distinguishing technical features of the invention and the technical problems actually solved by the invention, and (3) determining whether or not the claimed invention is obvious to those skilled in the art. For the inventiveness examination opinions, I have summarized the following reply experience in practice for your reference.
The first situation is that the examination opinions are unreasonable: when reading the examination opinions for the first time, we must first judge whether the examination opinions are correct or not. In practice, some of the examination opinions we encounter will be written in detail, such as comparing the technical features of claim 1 of the invention one by one, but some of the examination opinions will be written in general, such as directly referring to one paragraph to another paragraph of the description of the reference document 1, which disclose the technical features of claim 1 of the invention. No matter what kind of examination opinions, the examination opinions shall be analyzed word by word and sentence by sentence, and analyzed by combining with the contents of the application and the reference documents. In addition to be combined with the technical solution of the application, the technical problems to be solved and the beneficial effects to be achieved are also needed to be combined to further judge whether the examination opinions are correct or not. Once it is found that the examination opinions are unreasonable, the corresponding refutation can be made during the observation for responding this Office Action at this time to persuade the examiner.
The second situation is that the combination of existing technologies in the examination opinions is inappropriate: the combination of at least two reference documents is generally used in the evaluation of inventiveness. If only one reference document is used, it is generally evaluated in combination with common knowledge. On the surface, the examination opinions often seem to be reasonable, that is, determining the distinguishing technical features between the invention and the reference document 1, determining the technical problems to be solved according to the distinguishing technical features, and then finding the technical enlightenment in the reference document 2 and combining the reference document 1 and the reference document 2. In fact, sometimes, in order to make the combination of the two reference documents more reasonable, the examination opinions will equate the role of the distinguishing technical features in the reference document 2 with the technical problems to be solved by the distinguishing technical features between the invention and the reference document 1. Therefore, at this time, we should carefully read the invention and the reference documents, clarify the invention concepts of the invention and the reference document, and determine the technical problems to be solved by the invention and the technical problems that can be solved. Thus, it can be determined whether the technical problem to be solved by the distinguishing technical features between the invention and the reference document 1 is the role of the distinguishing technical features in the reference document 2. Under such a premise, it is necessary to judge whether the combination of the two reference documents is obvious.
The third situation is the inventiveness argument from different directions: this situation is applicable to the fact that we believe that the technical solution of the independent claim of the invention has prominent substantive features and represents notable progress, and it is not necessary to make adaptive modifications to the independent claim. In this case, it can be studied that whether the examination opinions provided is really persuasive. If the non-obviousness is simply argued, it is not convincing enough, just as the invention point of the invention is common general knowledge mentioned in the examination opinions. In this case, the Examples of the description can be carefully studied, because the Examples generally have effect data or information for proving the unexpected technical effects over existing technologies. The examiner can be better persuaded by the effect data or information, or in particular for the case in the chemical field, it is suggested that the applicant supplements some comparative test data to prove that the invention has prominent substantive features and represents notable progress.
In conclusion, when the inventiveness problems are constantly pointed out in the examination opinions in practice, it is not necessarily that the current claims do not possess inventiveness, but the arguments we provide are not convincing enough to let the examiner fully understand the technical solution and agree to the argument ideas. Therefore, when encountering the inventiveness examination opinions, first clarify the invention concept of the invention, then analyze the invention conception of the reference document, and judge whether the independent claim of the invention covers the invention conception which can be distinguished from the reference document, if not, the independent claim is modified adaptively according to the difference between the invention concept of the invention and the invention concept of the reference document. If the independent claim of the invention covers the invention conception which can be distinguished from the reference document, the claim cannot be modified first, but the reasonable arguments are made against the above three situations to better persuade the examiner.
