Chinese specialized IP court judges can have a significant effect on the examination decision made by CNIPA.

Recently, we received an Administrative Written Judgment issued by Beijing Intellectual Property Court, in which a Decision of Reexamination to maintain a Decision of Rejection for an invention patent application is affirmed by the Court.

In the patent application, there are three independent claims: claim 1 relating to a material capable of trapping a flammable gas (e.g., hydrogen); claim 5 relating a closed enclosure containing radioactive materials and further containing the material of claim 1; and claim 14 relating to the use of the material of claim 1 for coating radioactive materials. The Decision of Rejection indicates that claim 1, claim 5 and claim 14 are all obvious over cited Document 1 in combination with Document 2.

In the Administrative Written Judgment, the Court agrees that claim 1 is obvious over prior art, but holds a totally different opinion from the examiner for claims 5 and 14.

Specifically, according to the Judgment, Document 1 relates to a hydrogen absorbing material used for a cell. Although claim 5 also contains hydrogen absorbing materials, the product of claim 5 is actually a closed enclosure containing radioactive materials. Document 1 is in the field of cell, it is not possible for the field of cell to face the problem "the concentration of hydrogen in the container enclosing nuclear wastes is very high". A person skilled in the art reading the solution of Document 1 would not have the motivation to "reduce the concentration of hydrogen in the container enclosing nuclear wastes". Without the motivation, a person skilled would not find Document 2 to solve the above technical problem. Therefore, taking Document 1 as the closest prior art, it could not be concluded that claim 5 is obvious over Document 1 combined with Document 2. On the basis of the similar reasons, it also could not be concluded that claim 14 is obvious over Document 1 combined with Document 2. Thus, the Court actually indicates that claims 5 and 14 are inventive over Document 1 combined with Document 2.

However, although the opinion of the reexamination panel for claims 5 and 14 are incorrect, the Decision of Reexamination is still affirmed and maintained by the Court. For this matter, the Court explains that there is no regulation in China for granting a part of claims for a patent application (that is different from the invalidation procedure, wherein partial invalidation is available), and since claim 1 and dependent claims referring thereto are obvious, the general conclusion in the reexamination decision to maintain the decision of rejection is correct.

From this case, we could know that, as long as the examiner in reexamination decision is right in rejecting a part of claims, the reexamination decision to reject the patent application would be deemed correct, even if the examiner is wrong for some other claims. We can understand the attitude of the court, that is, for the reason of time saving and procedure saving, "a partial mistake is not a mistake, only an overall mistake is a mistake". Bearing this in mind may be important for an applicant to make a decision for further action when receiving a Decision of Reexamination to reject patent application.

In addition, under the situation above, although the Administrative Written Judgment could not alter the rejected state for the application, we could make use of the judgment in an attempt to obtain a patent right for the claims which were incorrectly rejected in Decision of Reexamination. For example, it may still be possible for the applicant to file a divisional application to pursue the claims (in the case above, claims 5 and 14) which were incorrectly rejected, and the advantageous conclusion of the Court for these claims could be submitted for supporting the patentability during substantive examination of the divisional application.

Nevertheless, it should be noted that although the Court believes these claims are inventive over the current prior art combination, it does not mean that these claims necessarily involve an inventive step. Taking the case above as an example, even though the Court believes claims 5 and 14 are inventive over Document 1 combined with Document 2, it does not mean that claims 5 and 14 would necessarily be considered by examiner responsible for the divisional application as involving inventive step. The examiner could cite other prior art documents to reject claims 5 and 14, or could even use Document 2 as the closest prior art and reject claims 5 and 14 with a holding that they are obvious over Document 2 combined with Document 1.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.