Can a utility model application be granted for a technical solution that includes particle substance in the utility model claims? This question actually concerns the protection object of utility model. For this, we study the relevant provisions of the Examination Guidelines.
I. Provisions on the Protection Object of Utility Model Related to Particle Substance According to Article 2, paragraph 3 of the Chinese Patent Law, the utility model should be an improvement proposed for the shape and/or structure of a product. The shape of a product refers to certain space-shape possessed by the product, which can be observed from the outside. Section 6.2 of Chapter 2 in the Part I of the Patent Examination Guidelines clearly states: As for the product which has a non-fixed shape, such as the substance or material in gaseous state, liquid state, powder state or particle state, its shape cannot be regarded as the shape feature of a utility model product. However, it should be noted that, a product may have a certain technical feature of non-fixed shape substance, such as the substance in gaseous state, liquid state, powder state or particle state, provided that it is defined by the structural feature of the product. For example, it is allowable to have alcohol (ethanol) of non-fixed shape included in the technical solution relating to the shape or structure of a thermometer.
It can be seen that in the claims of the utility model application, when there is a technical feature related to particle substance with non-fixed shape, if such particle substance is limited by the structural features of the product, the technical feature is allowed. II. Case Analysis In the practice of utility model application, how to consider and respond to the examination opinions on particle substance? Below we exemplify the response strategy through a case analysis.
Regarding this case, the examination notification mentioned the following rejection:
The technical solution to which claims 1-6 sought includes "scattering particles disposed over the display element", "an average diameter of the scattering particles is 0.8μm to 3.0μm", "the scattering particles are disposed in the first high-refraction layer", "the scattering particles are disposed in the organic encapsulation layer", "the scattering particles are disposed in the touch insulating layer", "the scattering particles are disposed in the adhesive layer or the protection layer", which means that the scattering particles are doped into various layers, which is a limitation on the composition of the substance, and the composition of the substance does not belong to the construction of the product protected by the utility model patent, therefore it is not in conformity with the provisions of Article 2, paragraph 3 of the Chinese Patent Law.
After reviewing the above examination opinions, we first studied the above-mentioned provisions of the Patent Examination Guidelines and understood that there are the allowable exceptions for particle substances. Then, we considered whether the particle substances in this case meet the allowable exceptions. For the limitation of the component substances mentioned in the examination opinion, we studied whether the technical solution involves the component substances. Further, we also searched for the granted utility model patents that allow particle substances and compared them with the limitation of particle substances in this case, and concluded that these granted utility model patents could be regarded as evidence that the technical solution related to scattering particles in this application belongs to the protection object of utility model. Finally, the arguments are made as follows:
“First, according to the provisions of the Patent Examination Guidelines on the protection object of utility model, a product may have a certain technical feature of non-fixed shape substance, such as the substance in gaseous state, liquid state, powder state or particle state, provided that it is defined by the structure feature of the product. The scattering particles in this application belong to particle substances, which are limited by the structural features of product (e.g., the first high-refraction layer, the organic encapsulation layer, etc.).
Second, "component" refers to the various components in a mixture. In this application, it is not limited that scattering particles exist in the mixture, and the features of scattering particles are not a limitation on the composition of the substance. In addition, referring to the contents of the description, this application aims to prevent users from visually recognizing the color bands due to reflection from pixel electrodes by setting the scattering particles, and this application does not mention the content of scattering particles in various layers.
In summary, the features in the claims of this application are not limitations on the composition of the substance, which is in conformity with the provisions of Article 2, paragraph 3 of the Chinese Patent Law.
In addition, the applicant retrieved some granted utility model patents (e.g., CN216210335U, CN216640134U, CN216526646U, CN213877345U, CN212230460U, CN211699543U and CN211786498U), which also limit the technical features of particle substances in the claims. As an example, claim 1 of CN216640134U defines that "the top of the fluorescent anti-slip layer (6) is provided with groups of TPV fluorescent particles (7) at equal intervals". As another example, claim 1 of CN216210335U defines that " the material of the polarization dispersion film includes an adhesive layer and dispersed particles dispersed in the adhesive layer, and the particle size of the dispersed particles is 1 μm to 18 μm". As yet another example, claim 1 of CN213877345U defines that “the fluorescent layer comprises a first matrix stacked on the quantum dot layer, and fluorescent particles dispersed inside the first matrix; the fluorescent layer further comprises a first diffusion particle dispersed inside the first matrix”. For the examiner's reference, the above-mentioned granted patent documents for utility model are attached as evidence that the technical solution related to scattering particles in this application belongs to the protected object of utility model.
Through the above arguments, this case finally was deemed to comply with the provisions of the Patent Law on the protection object of utility models and was granted. For similar examination rejection, the applicant should first clarify the relevant provisions, analyze whether the application meets the exceptions, and if necessary, search for similar cases from granted patents as evidence, to make a reasonable and well-founded response in order for such subject matters to be granted.
