In accordance with the relevant provisions of the Chinese Patent Law, the amendments to the application document made by the petitioner submitting a request for reexamination shall be limited only to overcome the defects indicated in the decision of rejection. The case above requirement is not considered to be met in the following cases:
(1)where a claim amended extend the extent of protection as compared with the claim rejected in the decision of rejection;
(2)where a claim in the amendment is derived from the technical solution that lacks unity with the claims rejected in the decision of rejection;
(3)where the type of a claim is altered, or the number of claims is increased; or (4)where the amendments are directed to the claims or the description that were not involved in the decision of rejection, unless they are intended merely to correct obvious clerical errors or to amend the defects of the same nature with that indicated in the decision of rejection.
With regard to the above case (1), the usual manner to amend it is to incorporate one or more dependent claims or incorporate a new technical feature according to the description on the basis of the independent claim to which the decision of rejection is directed. Such amendment is in line with the above-mentioned case (1). However, in practice, sometimes the technical solution that the patent applicant truly seeks to protect cannot be achieved in a way that directly conforms to the abovementioned case (1), such as deleting one or more technical features while incorporating one or more other technical features. For example, in the decision of rejection for a patent application, the protection scope of the targeted claim is A+B, in which A represents the technical features included in the original claim of the publication text, and B represents the technical features incorporated in response to the previous office actions. In the decision of rejection, the examiner pointed out that the incorporated feature B could not make this application patentable, and did not accept the applicant's amendments and arguments. In this case, if the technical feature B is deleted while the new technical feature C is incorporated when the reexamination request is submitted, where there is no relationship between the technical feature B and the technical feature C, then whether the protection scope of A+C can be considered as not expanding the protection scope of the claim compared with that of A+B.
In this case, both of the protection scopes cannot be directly compared. Since the decision of rejection was made due to the technical features incorporated in our response to the previous office actions being not accepted by the examiner, after analysis, if there is no more sufficient reason to make the incorporated technical feature B overcome the decision of rejection, then from the perspective of the protection scope of the claim, in order to maximize the protection scope of the claims, we can consider deleting the incorporated technical feature B and incorporating the new technical feature C. That is to say, if we think that the incorporated technical feature B has no contribution to the patentability of the claim, retaining it in the claim will narrow the protection scope of the claim to be granted a right. In this case, we can try to make the above amendments. If the examiner or the Reexamination Board determines that “the protection scope of the amended claim has been expanded compared to the claim targeted by the decision of rejection”, then we can incorporate new technical features into the claim targeted by the decision of rejection, that is, the protection scope of the claim becomes the form of A+B+C.
To sum up, when submitting a request for reexamination, if the further amendments are required to be made to the claims, it might be considered deleting the technical features incorporated in the response to the previous office actions and then incorporating new technical features to argue. In this way, it may help the applicant avoid unnecessary restriction on the protection scope.
