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Thinking About the Feature of Parameters from an Administrative Litigation Judgment

25

JUL

2020

In accordance with Chapter 10 of Part 2 of the Examination Guideline, as for a claim of a chemical product which cannot be clearly characterized merely by features of structure and/or composition, it is permitted to further use physical/chemical parameter and/or manufacturing process to characterize the claim. In fact, with the rapid development of technology in the chemical field, more and more new products have been difficult to be clearly characterized merely by features of structural and/or composition. Therefore, for patent applications in chemical field, use of parameter features to characterize product claims so as to distinguish from prior art is not uncommon. However, the examination standards of novelty and inventive step for claims characterized by parameter features have always been the focus of debate between examiners and patent attorneys. The author hopes to clarify the judge's attitude towards product claims characterized by parameter features through a specific administrative litigation judgment, in order to bring some thinking and inspiration to the reader.

In the course of practice, the author has come into contact with a large number of product inventions whose claims contain parameter features. However, during substantive examination process and even reexamination process, examination standards of parameter features seem to be not uniform from one examiner to another. For example, in the case that a parameter feature in a product claim is not explicitly disclosed by the closest prior art, some examiners will identify the parameter feature as a distinguishing technical feature and then proceed to evaluation of inventive step, while some examiners will deduce that said claim does not possess novelty, based on the reason that said parameter feature cannot distinguish the claimed product from prior art product. Although the Examination Guideline has provided clear provisions on the presumption principle for novelty, it is inevitable that the subjective factors of the examiner will be incorporated when judging whether the presumption principle for novelty applies.

According to the provisions of the Examination Guidelines, for product claims including parameter feature, the examiner shall consider whether the feature of parameters in a claim implies that the claimed product has a certain particular structure and/or composition. If the parameter implies that the claimed product has a structure and/or composition distinct from that of the product disclosed in the reference document, the claim has novelty. On the other hand, if the person skilled in the art from the parameters cannot distinguish the claimed product from that disclosed in the reference document, it can be presumed that the claimed product is identical with the product in the reference document and accordingly the claim does not have novelty. This is the so-called presumption principle for novelty.

Case review: Administrative Litigation Judgment of First Instance, (2015) JingZhiXingChuZi No. 2556

On December 10, 2014, the Patent Reexamination Board filed Reexamination Decision No. 80170 for invention No. 200780001225.7 “Water-dispersible and multicomponent fibers from sulfopolyesters” in the name of Eastman Chem Co.

In the Reexamination Decision No. 80170, the Board pointed out: Claim 1 of the present application defines that the sulfopolyester exhibits a melt viscosity of less than 12,000 poise measured at 240° C at a strain rate of 1 rad/sec. Although D1 only discloses the glass transition temperature of its sulfopolyester without disclosing the melt viscosity range, those skilled in the art cannot determine whether the two sulfopolyesters are different in melt viscosity. In addition, Eastman failed to prove that the melt viscosities of the two has indeed constituted a difference, thus it is deduced that the sulfopolyester of claim 1 of this application and the sulfopolyester in D1 have no difference in melt viscosity. Therefore, the distinguishing technical features between claim 1 of this application and D1 are identified as: (1) claim 1 defines that the fiber has an as-spun denier of less than 6 denier per filament; (2) the sulfopolyester of claim 1 comprises between 60-80 mole % terephthalic acid and 0-30 mole % isophthalic acid, while the sulfopolyester in D1 comprises about 50 to about 96 mole % terephthalic acid. Regarding these two distinguishing technical features, the Panel finally concluded that the invention possesses no inventive step on the ground that it belonged to conventional technical means.

In the Administrative Litigation Judgment of First Instance, (2015) JingZhiXingChuZi No. 2556, the judge gave the conclusion that the basis for applying presumption principle for novelty in this case does not exist, and the limitation of melt viscosity in claim 1 of this application is a further definition of the properties of sulfopolyester with different composition, thus constitutes a difference from the technical solution disclosed in D1. Therefore, the respondent was wrong when determining difference between claim 1 of the present application and D1, and accordingly, the judgment of lacking inventive step made by the respondent is short of evidence. The Reexamination Decision No. 80170 made by the Patent Reexamination Board of the State Intellectual Property Office of the People's Republic of China was finally revoked.

Through the above case, it is not difficult to find that, during the reexamination process, the Board applied presumption principle for novelty to the parameter feature in the product claim, that is, the Board deduced that there is no difference in melt viscosity between the sulfopolyester of claim 1 of this application and the sulfopolyester in D1. However, at the same time, it also recognized by the Board that feature (2) constitutes a distinguishing technical feature between claim 1 and D1. Since feature (2) directly reflects the composition of sulfopolyester, that is to say, the Board has acknowledged that there is a difference in composition between the sulfopolyester of claim 1 of this application and the sulfopolyester in D1. Obviously, it is logically unreasonable for the Board to determine the composition feature (2) as a distinguishing technical feature while applying presumption principle for novelty to parameter feature.

The original intention of formulating presumption principle for novelty is to meet the requirements of principle of administrative economy. In the field of chemistry, there are many types of parameters. The parameters are formally represented by numerical values ​​or mathematical expressions, and reflect structure, composition, performance, and/or effects. For example, the characteristic peaks of the X-ray diffraction pattern of the crystal form can directly reflect the structure of the product, while the parameters such as melting point, strength, modulus, etc. directly reflect the performance of the product. The reason of applying presumption principle for novelty to product claims containing parameter features in the substantive examination process is because there are many parameters that characterize the physical and chemical properties of the product, and the description of different physical and chemical properties of the same product will lead to different characterization manners of the same product. For some parameters that indeed imply a specific structure or composition of the product, a person skilled in the art can judge the difference between the product defined by the parameter and the prior art product. However, since it is difficult to exhaust all parameters for the disclosure of a product in the prior art, for some parameters, a person skilled in the art possibly cannot judge the difference between the claimed product and the prior art product. If the claimed product is substantially the same as the product disclosed in the prior art and only comprises parameters that are not explicitly disclosed in the prior art, a patent right would be obtained improperly. Since the administrative agencies lack the necessary means and conditions to verify whether the reference documents disclose the corresponding parameters during examination process, the establishment of presumption principle for novelty can save administrative resources to a certain extent, which is a good reflection of principle of administrative economy.

However, the so-called "presumption principle for novelty" does not reflect the logical relationship between basic facts and presumed facts, but only the legal relationship between the two. Therefore, it is only a presumption at the legal level, not a presumption at the fact level. As for presumption at the legal level, cases may exist that the presumed fact violates the basic fact. In order to avoid the examiner using "presumption principle for novelty" across-the-board to negate novelty of the product claim defined by parameter features, the Examination Guideline further provides that: the claim is considered novel if the applicant can, based on the application or the prior art, prove that the claimed product having the parameter feature is distinct from the product in the reference document in structure and/or composition. That is to say, the applicant has the discretion to determine the content and drafting manner of the application document, since it uses parameter feature to define a product claim, in order to avoid patent right being obtained improperly as mentioned above, it has the obligation of explaining difference between the patent application and the prior art. If the difference of structure and/or composition between claimed product and prior art product cannot be clearly determined by the parameter feature, the presumption principle for novelty applies and the burden of proof will be left to the applicant. If the evidence or statement submitted by the applicant does not indicate difference between claimed product and prior art product, the applicant shall bear the corresponding disadvantageous consequences, but if the applicant can prove difference indeed exists between claimed product defined by parameters and prior art product, the logical basis of presumption principle for novelty will no longer exist.

Through the above administrative litigation judgment, it is not difficult to find that the judge is more concerned about the balance between the grant of patent rights and the exercise of patent rights. According to the examiner's point of view, the parameter features have no limiting effect on the scope of protection of the claims, but according to the judgment of infringement stage, determination of protection scope of a claim needs to consider all technical features in the claim, then the parameter features do have limiting effect on the protection scope. When a patentee initiates an infringement lawsuit, it is necessary to prove that all the characteristics (including parameter characteristics) of the infringed product fall within the scope defined by the claim. Even if all remaining features of the infringed product other than the parameter feature fall within the scope of protection of the patent claim, the patentee still cannot claim his own rights at this time, which will definitely cause doubt and dissatisfaction of the patentee and go against balance between patent right and public interest.

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