In the process of responding to office actions, arguing inventiveness is often a difficult point in convincing examiners, especially with regard to “common general knowledge” and “technical enlightenment” mentioned in office actions. Sufficient reasoning is particularly required to persuade examiners on these two points. This paper puts forward some humble opinions on arguing against “technical enlightenment”.
1. Core Judgment of Technical Enlightenment and Nature of Argumentation
The “technical enlightenment” referred to in office actions corresponds to the requirement in the Guidelines for Patent Examination for “judging whether a claimed invention is obvious to a person skilled in the art”. According to Article 22, Paragraph 3 of the Patent Law and the provisions of the Guidelines for Patent Examination, the core of judging technical enlightenment is: “to determine whether there exists any technical enlightenment in the prior art as a whole, that is, whether the prior art provides enlightenment to apply the distinguishing technical features between the present application and the cited prior art to the closest prior art to solve the existing technical problem”. In other words, the essence of argumentation is to prove that, for a person skilled in the art, the technical solution of the present application cannot be obtained through logical analysis, reasoning or limited experimentation based on the prior art (i.e., non-obviousness).
2. Common Approaches for Arguing Against Technical Enlightenment
Approach 1: Deny Relevance of Technical Fields
Examiners often cite prior art documents from different technical fields. In such cases, it is necessary to focus on demonstrating that “the prior art and the present application do not belong to the same, similar or related technical fields”, so that a person skilled in the art has no motivation to seek such technical enlightenment.
For example, if the present application relates to a light-emitting device, while the examiner cites a document related to a medical device, one may argue that the technical fields are different and thus the cited reference does not provide corresponding technical enlightenment.
However, one consideration remains: even if the cited reference belongs to an unrelated technical field, if the distinguishing technical feature performs the same or similar function in the cited reference as in the present application, simply arguing about different technical fields will most likely not be accepted by the examiner. In such cases, more effective reasoning from other perspectives should be adopted.
Approach 2: Deny That Technical Means Serve the Same Function Even if a cited reference discloses a technical means identical to the distinguishing feature, technical enlightenment can be denied as long as the function of the means in the cited reference differs from that in the present application. This is one of the most persuasive argument strategies. The function of a technical means corresponds one-to-one with the technical problem it solves. The three-step method for inventiveness is generally adopted for such argumentation.
If the application does not explicitly state the function of a technical means, the function may be inferred backward by combining the technical problem solved by the present application or the effect data verified in the experimental examples of the application. The function may then be compared with that of the corresponding technical means in the cited reference for argumentation.
Approach 3: Deny Motivation for Combination and Emphasize Synergistic Effect The three-step method is not applicable to all inventiveness arguments. For instance, if the technical problem solved by the distinguishing features between the present application and the cited reference 1 is the same or similar to that solved by the corresponding features in the cited reference 2, the three-step method may still fail to convince the examiner. In such cases, one may argue against the motivation to combine the cited documents or emphasize the synergistic effect of the feature combination.
Example 1: cited reference 1 requires a “high-temperature environment”, while the technical means of cited reference 2 are only applicable to a “low-temperature environment”. One may argue that a person skilled in the art has no motivation to combine the cited reference 2 with cited reference 1, as combination involves technical contradictions and may even invalidate the technical solution.
Example 2: The combination of technical features from cited reference 1 and cited reference 2 produces an unexpected technical effect, demonstrating that “the overall effect” exceeds “the sum of individual effects”. Although individual features are conventional in the prior art, their combination yields an unexpected technical effect. For instance, Catalyst A and Stabilizer B show ordinary effects when used alone, but their combination increases catalytic efficiency by 300%. This can prove the non-obviousness of the combination and that the combined effect exceeds expectations in the field.
The above are three common approaches for arguing inventiveness in responses. In practice, these approaches are best supported by experimental effect data to better convince examiners and facilitate prompt grant of the present application.
