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A Brief Discussion on the Choice for the Closest Prior Art

12

NOV

2021

Introduction

In accordance with the logic of three-step method for evaluating inventive step, the closest prior art is the basis of three-step method of determination, only choose the closest prior art correctly, can the internal logic issues be avoided when determining the technical problems solved practically later, and it shall be more objective and proper for reasoning combined with enlightenment. It starts with the concept of inventive step and three-step method in this article, with specific cases for discussion and analysis: when there are multiple pieces of prior art belonging to the same technical filed as the invention and each of which discloses different contents, how to exactly choose the closest prior art based on reconstructing the process of invention.

In accordance with the regulations of Paragraph 3 Article 22 of Patent Law of China: inventive step means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has substantive features and represents progress. The three-step method used for determining inventive step that stipulated in the Guidelines for Patent Examination includes: (1) Determining the closest prior art; (2) Determining the distinguishing features of the invention and the technical problem actually solved by the invention; (3) Determining whether or not the claimed invention is obvious to a person skilled in the art closest prior art.

In accordance with the related regulations of Guidelines for Patent Examination, the closest prior art shall be a technical solution that is most closely related to the claimed invention. As for what is the “most closely related”, Guidelines for Patent Examination, in the way of exemplifying, stipulates factors that needed to consider for choosing the closest prior art: it may be an existing technology in the same technical filed as the claimed invention, and its technical problem to be solved, technical effects, or intended use are the closest to the claimed invention, and/or has disclosed the greatest number of technical features of the claimed invention; or be an existing technology which, despite being in a different technical filed from the claimed invention, is capable of performing the function of the invention and has disclosed the greatest number of the technical features of the invention. Accordingly, for determining the closest prior art, it can be considered from multiple aspects such as technical fields, technical issues, technical means, and technical effects. From this point of view, there is a certain extent of subjectivity of the choice for the closest prior art in the inventive step judgment.

However, the improper choice for the closest prior art can easily result in the deviation of examiners for understanding the technical solution, therefore, applicants’ confirmation to the closest prior art is also extremely important for the argument of inventive step. The following practical case will be combined to specifically analyze how to choose the closest prior art on the basis of reconstructing the process of invention.

Practical case

A patent of the invention named “tyre having improved wear and rolling resistance properties” with the patent number 2016800726449, in which claim 1 claims a tyre, in addition to some basic structure features, claim 1 defines two important technical features: (1) the crown reinforcement comprising at least one layer of circumferential reinforcing elements; (2) at least one longitudinally-oriented cut, the depth of the said at least one longitudinally-oriented cut is greater than or equal to 40% of the thickness of the tread, in that the ratio of the width measured at the bottom of said at least one longitudinally-oriented cut to the width measured at the surface of the tread on a new tyre of said at least one longitudinally-oriented cut is greater than 2 ( in short, said cut is the form of concealed voids that the bottom is wider than the top).

In the process of examining the application, examiners retrieved D1 and D2, both involved tyre filed and disclosed most part of technical features of claim 1, in which the difference lied in that D1 didn’t disclose the technical feature (2) of claim 1, and D2 didn’t disclose the technical feature (1) of claim 1. If only consider two factors, technical field and the number of features disclosed, the eligibility of D1 and D2 as the closest prior art seemed to be almost on a par.

The examiner explicitly regarded D1 as the closest prior art in the Office Action. According to the examination view of the examiner, D1 didn’t disclose the claim’s technical feature (2), based on the difference, the technical problem practically solved by claim 1 is how to improve the grip performance of tyre. Further, the examiner pointed out that D2 disclosed the above mentioned technical feature (2) which also plays the role of improving the tyre grip performance in D2, therefore, D2 provided enlightment for using the distinguishing technical feature (2) in D1 to solve its technical problems.

At the first sight, the examination ideas (including the choice of the closest prior art and the application for three-step method) of the examiners didn’t have obvious mistakes, but if restore the invention concept of the present invention, it can be seen that there was logic flaw in the above mentioned evaluation.

The present application documented in the background technology part that the tyre of the prior art in new state has a certain volume of open voids and concealed voids, in comparison to similar tyres not comprising such concealed voids, the presence of certain types of cuts comprising alternated concealed voids could lead to degradation of the performance properties in terms of wear, with the appearance of irregular shapes of wear. The primary cause of appearing irregular shapes of wear lies in: in the moulding and solidification process of tyre, the elastomer materials at the cuts comprising alternated concealed voids uncontrollably flow, causing local deformation of the crown reinforcement, these transformations have an adverse impact on the wear of tyre and especially the performance in terms of wear regularities. The applicant accidentally found that the presence of layer of longitudinally-oriented cut in the circumferential reinforcing elements can reduce or even prevent the said local deformation of crown reinforcement in the solidification process of tyre, further, it is possible to limit even prevent these irregular wear.

Therefore, the invention idea of the present invention is: finding the irregular wear problem→finding the reason leading to that problem (the local deformation caused by concealed voids)→finding the means to solve that problem(setting up the layer of circumferential reinforcing elements, that is, the above mentioned distinguishing technical feature 1).

By reading D1, it is not difficult to know that D1 is intended to improve the endurance and rolling resistance of tyre, it mainly studies the specific structure inside the circumferential reinforcing elements, but there is no related description for the shape of cut on the tread. As the cut of concealed voids is not involved, objectively, there is no irregular wear problem of tyre, when facing the said problem, people skilled in the art don’t have any motivation to make improvement on the basis of D1 at all. On the contrary, D2 disclosed that the tread surface includes cut with concealed voids, and there is presence of tyre irregular wear objectively. Therefore, in the face of irregular wear problems caused by concealed voids, skilled in the art just make improvement based on D2 instead of D1. In view of this aspect, D2 is more appropriate than D1 to be the closest prior art of the present invention.

If make D2 as the closest prior art, as it didn’t disclose distinguishing technical feature (1), and the present invention clearly documented the function of distinguishing technical feature (1) is solving the irregular wear caused by concealed voids, then the technical issue to be solved practically varied from “how to improve the grip performance of tyre” identified by examiners before to “how to solve the irregular wear caused by concealed voids”

However, as for D1, though it recorded distinguishing technical feature (1), it didn’t disclose that the layer of circumferential reinforcing elements has restraining effect on the tread irregular wear, so D1 cannot provide enlightenment on that using distinguishing technical feature (1) applied in D2 to solve its technical problems. Therefore, the combination of D2 and D1 is unable to destroy the inventive step of claim 1 of the present invention.

It can be clearly felt by this case that when choosing different documents as the closest prior art, there will be great changes in the technical problems solved by the invention and whether there exists judgment of technical enlightenment for the said problem in the prior art, and the conclusion whether the invention involves inventive step will be totally different. Only choose the closest prior art based on the invention concept, the overall principles can be grasped well, considering entirely in view of multiple aspects, then make objective decision on inventive step.

Conclusion

The evaluation process of inventive step is the procedure of reconstructing invention and judging whether the reconstruction process is obvious to a person skilled in the art. The reconstruction need to be based on a certain prior art, that is, the closest prior art is the starting point of reconstructing invention. Therefore, there should be the presence of contents related to technical problems to be solved by the invention in the prior art as the improvement starting point, that is, the closest prior art should have certain correlation with technical problems to be solved by the invention in the prior art, rather than documents with more disclosed technical features are more suitable to be the closest prior art. When determining the inventive step, grasp the idea of the invention and reconstruct the process of the invention from the perspective of the applicant, so that the closest prior art can be correctly chose and a more objective and more convincing creative conclusion can be provided.

About the Firm

Ge Cheng & Co Ltd.
Address Level 19, Tower E3, The Towers, Oriental Plaza, No 1 East Chang An Avenue, Beijing 100073, China.
Tel 86-10-8518 8598
Fax 86-10-8518 3600
Email davidcheng@gechengip.com , info@gechengip.com
Link www.gechengip.com

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