Zhongquan CAO v. the Patent Reexamination Board - An Invention-creation Should be Evaluated as an Organic Whole (Administrative Judgment (2012) Xing Ti Zi No.7 by the Supreme People's Court on May 3,2012)
A technical solution refers to a collection of technical means that are adopted to solve a technical problem and utilize the laws of nature. Generally, a technical means is embodied by one or more technical features. When an invention-creation, especially inventiveness of a claim, is evaluated, usually a standard three-step method is adopted. However, there is a deviation that an invention-creation is NOT evaluated as an organic whole and a claim is divided as several fragmented parts and the respective parts are evaluated separately. However, such kind of evaluation is inappropriate. In this case, the Supreme People's Court emphasized that an invention-creation should be evaluated as a whole.
In this case, a utility model patent No. ZL 200520014575.5 titled "An Oil-preserving Apparatus for a Bevel Gearset in a Sharpening Mechanism of a Cutting Machine" ("the involved patent" hereinafter) has the following four claims:
- "An oil-preserving apparatus for a bevel gearset in a sharpening mechanism of a cutting machine, characterized in that an oil blocking wall (4) is arranged around a bevel gear position (2) and an intermediate gear position (3).
- The oil-preserving apparatus of Claim 1，characterized in that the wall (4) is provided with a gap that enables the intermediate gear inside the wall to engage with a transmitting gear outside the wall.
- The oil-preserving apparatus of Claim 2，characterized in that the wall (4) is integrated with a bevel gear box (8) or a sharpening grinder box(1).
- The oil-preserving apparatus of Claim 1，characterized in that an arc cover plate (7) is provided on a transmitting gear (5) outside the wall (6)."
According to the description and claims of the patent, the patent is directed toward the problem of oil-preserving lubrication of the gear set in the cutting machine. To solve the problem, an oil blocking wall is arranged around the bevel gear position and the intermediate gear position to preserve the splashing lube around the bevel gear. Furthermore, an arc cover plate is provided on the position of the transmitting gear outside the wall, to prevent the lube inside the wall from being thrown out.
The Patent Reexamination Board made an examination decision No. 13216 for invalidation request on April 14, 2009, wherein it declared that all of the claims of the involved patent are invalid. In the examination decision, the panel held that all of the claims of the involved patent do not possess inventiveness over the disclosure of attachment 5-1 (US3672586).
The disclosure in attachment 5-1 relates to lubrication in a lubrication system for a winding machine. In the attachment 5-1, the lubrication system that comprises a slinger 160, gears 146, 150, a shield 200 and aprons 206 is mainly used to obtain lubricant from a sump 162 and to transport the lubricant to the components that require lubrication. A straight forward portion 200A, a cylindrical section 200B, a rearward quadrant 200C of the shield 200 and the aprons 206 are set to serve the above technical functions. In view of this, the shield 200 is provided with an oil inlet to obtain the lubricant from the sump, and the aprons 206 are provided with passageways 204 to receive the lubricant.
That is to say, the involved patent is to keep the lube around the gears so as to prevent the lube from leaking to outside, thereby achieving excellent lubrication of the gears and preventing the fabric from being polluted by the lube. However, the solution of the attachment 5-1 is to effectively transport the lubricant to the components that require lubrication within the winding machine. The shield 200 and the aprons 206 are set to transport the lubricant outside, rather than to keep the lubricant around the gear set and to keep the lubricant from leaking to outside as in the involved patent.
The left figure below shows an overall structure of the involved patent, while the right figure shows an overall structure of the attachment 5-1.
In the invalidation procedure, the patentee of the involved patent amended the claims by incorporating claim 2 into claim 1 to form a new independent claim 1. The panel adopted the standard three-step method, and held that the differences between the new claim 1 and the solution of attachment 5-1 lie in that: (1) the involved patent is aimed at a sharpening mechanism of a cutting machine, while the application environment of attachment 5-1 is a winding machine; and (2) in the involved patent the intermediate gear is engaged with an external transmitting gear, while in the attachment 5-1 gear 146 is coupled with a drive screw. Then, the panel further alleged that the above differences are all common sense in the art, and thus the new independent claim 1 does not possess inventiveness. In the examination opinions with respect to claim 3 (the original claim 4), the panel held that the aprons 206 are coupled with the straight forward portion 200A, the cylindrical section 200B and the rearward quadrant 200C of the shield 200, and the structure formed by this coupling functions to keep the lubricant around the gears. Therefore, the panel held that the aprons 206 in the attachment 5-1 are technically equivalent to the arc cover plate in claim 3.
In the subsequent procedures of administrative litigation, the courts of the first instance and second instance adopted the opinions set forth by the panel of the PRB.
In the retrial request, the petitioner (the patentee) submitted arguments that the feature in claim 1 of the involved patent, i.e., "an oil blocking wall (4) is arranged around a bevel gear position (2) and an intermediate gear position (3)," functions to keep the lubricant around the bevel gear set, so as to prevent the fabric for cut from being polluted. While in the attachment 5-1 there is a shield 200 that opens up and down, so as to spray the lubricant from the sump at the bottom to the outside of the shield 200, that is, this arrangement has an effect of "transportation", rather than keeping the lubricant inside the shield 200. Moreover, the additional technical feature of the amended claim 3, i.e., "an arc cover plate (7) is provided on a transmitting gear (5) outside the wall (6)," functions to directly keep the lubricant around the transmitting gear. The aprons 206 in the attachment 5-1 function to receive the lubricant sprayed from bottom to top and to transport the lubricant to other components that require lubrication, that is, this arrangement has an effect of "reception."
With respect to the above arguments, the Supreme People's Court held that when evaluate whether an invention-creation possesses inventiveness, not only the technical solution itself of the invention-creation, but also the following factors should be taken into consideration: the technical field that the invention-creation belongs to, the technical problem that the invention-creation solves, and the technical effect that the invention-creation produces. The above factors should be considered as a whole, which means that the aspects of the technical principle, the technical conception, the technical effect, and the like of the invention-creation should be considered comprehensively. Regarding this case, the Supreme People's Court alleged that the solution of the lubrication system disclosed in the attachment 5-1 mainly functions to solve the technical problem of transporting the lubricant effectively, in order to realize lubrication of the internal components in the winding machine, rather than prevent the fabric from being polluted by the splashing lubricant as in the involved patent. Based on the technical solution disclosed in the attachment 5-1, those skilled in the art would have no motivation to improve the features of shield 200 and aprons 206 in the lubrication system, and then apply them into the sharpening mechanism of the cutting machine, so as to solve the technical problem to be solved by the involved patent, i.e., to prevent splashing of the lubricant and keep the lubricant around the bevel gear.
In the above invalidation procedure, the panel failed to take into consideration the substantial difference between the solution of the involved patent and that of the attachment 5-1; rather, the panel tried to adopt some analytical skills to find the "objective" correspondences between the features disclosed in the reference and the features in the claims of the involved patent. From the perspective of the invention concept, it seems that there exist significant differences between the solution of the involved patent and that of the attachment 5-1. However, the panel improperly splits a claim of the involved patent, which should be considered as a whole, into several features so as to "find" the corresponding parts in the reference, thereby reaching the conclusion that the claims of the involved patent do not possess inventiveness. And in the procedures of the first and second instances, the judge also failed to correct this improper practice.
In addition, in the substantive examination procedure, the following situations are often encountered: the examiner splits a claim as a whole into several isolated "technical features" and evaluate each of these features separately, and then seeks to locate the corresponding description for each feature in the references or simply asserts one or more features belong to common sense in the art, regardless of the overall conception of the technical solution.
However, such method of evaluation for a claim is not appropriate. For an invention-creation, first it should be considered as a whole so as to grasp its substance. That is to say, an invention-creation should be evaluated comprehensively based on several aspects, such as the technical field(s) involved by the invention-creation, the technical problem(s) to be solved by the invention-creation, the technical effect(s) produced by the invention-creation, and the like; that is, the principle and conception of the invention-creation should be taken into consideration, such that the technical solution defined by a claim can be evaluated as an organic whole. The legal professionals, such as the examiners, the judges, the attorneys, etc., should always be reminded that legal analysis tools and skills are to serve for ascertaining the facts, rather than the reverse. Regarding the present case, if the solutions of the involved patent and the attachment 5-1 can be considered comprehensively as a whole by the Patent Reexamination Board and the first and second instances, the large amount of complex analysis used to obtain an improper conclusion would be unnecessary.
In case of overall consideration, a technical solution should be evaluated in a unit of feature. That is, two extreme cases should be avoided: one is to evaluate the technical conception as a whole, and the other is to split a complete claim into several fragmented parts to evaluate the respective part separately. To accomplish this, the followings should be paid attention to: the relationship between the claims and the description; the selection of the most pertinent prior art; and the division of features.
The association between the claims and the description, especially the effect of the description on explanation of the claims, has been discussed substantially before. Here, one should be emphasized is that, due to limitations of the language expressions, when a claim is considered as a whole, the technical solution claimed by that claim should be necessarily interpreted in conjunction with the description. This means one or more terms used in the claims should be interpreted in connection with the contexts in which one or more terms are placed. For example, the terms of "oil-preserving apparatus" and "oil blocking wall" in the present case. The intention to define clearly the protection scope by a claim itself is good, but in the practice the description cannot be ignored and must be memorized, especially in the substantive examination procedure.
Regarding the selection of the most pertinent prior art, an overall invention concept should be considered, based on the author's understanding. If an overall concept of a prior art is pertinent, then naturally the number of related features being disclosed by the prior art is large. Furthermore, most of the present inventions belong to "improved-type" invention, and usually there will exist prior arts that have the pertinent technical conception. In the current examination practice, it is often the case that the most pertinent prior art for an invention only has the similar technical field, but discloses few of the technical features in the claim to be evaluated, and sometimes even only discloses the contents in the preceding portion. And the examiner would regard most of the features in the claim as distinguishing technical features and then allege that such distinguishing technical features have been disclosed or belong to common sense in the art; however, it is hard to say that this method of evaluation is reasonable.
One of the most common problems in the division of technical features is that the features in one claim are split into several fragmented parts and the respective parts are evaluated separately. Among many precedents, one of the problems is that a feature is punctuated inappropriately and then being held that the punctuated portion is not clear; a further problem arises when the contexts in a claim are not taken into consideration and being held in an isolated way that a certain feature is not supported by the description; even further problem arises where a claim is split into several isolated parts and the similar content for each part is searched in the prior arts respectively, and sometimes a part of them is regarded as common sense in the art if the similar content cannot be found. All of the above cases do not comply with the requirements that an invention-creation should be considered as a whole.
Moreover, in the division of technical features, sometimes the connection relationship and the signal flow should also be taken into consideration, as well as some feature points that are not obvious in the claims. This is because the connection relationship and the signal flow are also technical features that shall not be ignored, especially in the inventions of electrical field. The feature points that are not obvious are usually some terms that can be interpreted in connection with the description and should not be ignored.
In practice, when the claims are drafted, it is necessary that the claims should reflect the substance of the technical solution in a clear and complete way, and the technical features embodying the invention point should be highlighted. Furthermore, the embodiments should be described clearly based on the description and the accompanied drawings. Especially, structural features should be clearly indicated in the drawings and should be described in conjunction with the drawings in a "look-and-say" way. Regarding this case, the substance of the technical solution of the present invention is not obviously reflected in the claims, and the descriptions in the detailed description are not sufficiently clear either. Otherwise, a different result might be obtained in the initial invalidation procedure. In addition, what should be emphasized is that when an attorney encounters with the examiner's opinions that ignore the overall conception of the technical solution, he/she should have the courage to insist his/her arguments so as to obtain a reasonable result by an appropriate communication with the examiner.
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