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Analysis on Ways of Responding to Common Knowledge
Tao CHEN
Chinese Patent Attorney
Electrical Engineering Department
Linda Liu & Partners
In the substantive examination of China today, Chinese examiners use common knowledge a lot in determining inventiveness. They usually point out that the invention is distinguished from the reference document in a certain distinguishing feature, which, however, belongs to the common knowledge of the field.
In responding to such Office Actions, it is rather difficult to prove that the distinguishing feature does not belong to the common knowledge of the field. We suggest arguing from another perspective, i.e., arguing that “a person skilled in the art is not motivated to combine the distinguishing feature with the most related prior art”. Hereinafter, we take an application the author handled as an example.
The present application (CN201180014828.7) claims an electromagnetic vibration suppression device. The examiner points out in the Office Action that claim 1 is distinguished from Reference 1 (JP2003073792A) in the feature that: the edge position calculation means is adapted to determine an edge position of the steel sheet by computation based on an inputted width dimension of the steel sheet and a displacement amount in a width direction of the steel sheet, the displacement amount being inputted in real time or at predetermined time intervals.
Regarding the distinguishing feature, the examiner further points out that: “Based on the teaching of the prior art, a person skilled in the art can conceive the idea of controlling the vibration suppression according to the edge position of the steel sheet; and in order to obtain the edge position of the steel sheet, he/she can easily conceive the idea of providing the edge position calculation means defined in claim 1.”
The above distinguishing feature is the inventive step that the applicant emphasizes, but the examiner determines by reasoning that the distinguishing feature belongs to the common knowledge of the field, and asserts that claim 1 does not possess inventiveness.
As the response, we could emphasize that the feature does not belong to the common knowledge and require the examiner to provide evidence. As a matter of fact, however, the examiner does not need to provide evidence when citing the common knowledge for the first time; moreover, even if the applicant raises an objection against the common knowledge, the examiner can still illustrate his/her reasons without providing any evidence.
Therefore, only requiring the examiner to provide evidence is not an effective method, and arguments from other perspectives shall be taken into consideration.
Firstly, the author would like to explain the role that common knowledge plays in the determination of inventiveness. It is prescribed in the third step of the “Three-Step Method” in Section 3.2.1.1 (3), Chapter 4, Part II of the Guidelines for Patent Examination of China that:
“At this step, the examiner shall make a judgment, starting from the most related prior art and the technical problem actually solved by the invention, as to whether or not the claimed invention is obvious to a person skilled in the art. In the course of judgment, what is to be determined is whether or not there exists such a technical teaching in the prior art as to apply said distinguishing features to the most related prior art in solving the existing technical problem (that is, the technical problem actually solved by the invention), whether such teaching would prompt a person skilled in the art, when confronted with the technical problem, to improve the most prior art and thus reach the claimed invention.
Under the following circumstances, it is usually thought there exists such a technical teaching in the prior art: (i) The said distinguishing feature is a common knowledge, such as a customary means in the art to solve the redetermined technical problem, or a technical means disclosed in a textbook or reference book to solve the redetermined technical problem …”
It can be seen from the above provisions that the aim of the third step of the “Three-Step Method” is to determine whether or not the prior art provides a technical teaching, while “distinguishing feature belonging to the common knowledge” is only a means to prove that the prior art does provide a technical teaching. Moreover, where the prior art provides a technical teaching, two preconditions shall be met: firstly, the most related prior art must have the technical problem actually solved by the invention, otherwise one does not need to make improvements to the most related prior art so as to solve the technical problem; secondly, the improvement based on the distinguishing feature must be an improvement instead of a damage to the most related prior art, otherwise a person skilled in the art has no reason to change the most related prior art.
Therefore, one can bypass the dispute over the common knowledge and prove that a person skilled in the art is not motivated to combine the distinguishing feature with the most related prior art from various aspects, for example: the most related prior art does not have the technical problem actually solved by the invention, the distinguishing feature cannot be combined with the most related prior art, or the combination of the distinguishing feature with the most related prior art would make the aim of the invention unachievable or the technical solution impracticable. According to the practical experience of the author, where the above circumstances are indeed true, the above arguments would be effective and would generally be accepted by the examiner.
However, it is not the case for the present application.
The author then finds out that the examiner asserts that: in order to obtain the edge position of the steel sheet, the edge position calculation means can be easily conceived. However, Patent Document 1 (JP 2009179834A) cited in the section of “BACKGROUND TECHNOLOGY” of the present application has already pointed out a solution of obtaining the edge position of the steel sheet and correspondingly controlling the vibration suppression, only that it uses edge position detection sensors for obtaining the edge position of the steel sheet. Therefore, in order to obtain the edge position of the steel sheet, providing the edge position detection sensor, instead of providing the edge position calculation means, can be easily conceived.
Based on such thoughts, the writer makes the following argument in the observations, which is accepted by the examiner:
“The prior art has given a solution of controlling the vibration suppression based on the edge position of the steel sheet. In order to obtain the edge position of the steel sheet, the prior art provides multiple edge position detection sensors in the width dimension of the steel sheet so as to use said sensors to detect the edge position of the steel sheet.
A person skilled in the art has access to all prior art of the field, therefore, in order to obtain the edge position of the steel sheet, a person skilled in the art can only conceive the idea of providing the edge position detection sensors existing in the prior art instead of thinking and studying other better solutions which are beyond the abilities of a person skilled in the art.”
The above-mentioned argument is a specific example and may be not suitable for some circumstances, but essentially, it is a way of proving that “a person skilled in the art is not motivated to combine the distinguishing feature with the most related prior art” by reasoning.
In conclusion, regarding the argument against common knowledge, instead of struggling with whether or not the distinguishing feature belongs to the common knowledge, it is recommended to draw the conclusion that the prior art does not provide technical teaching by arguing that a person skilled in the art is not motivated to combine the distinguishing feature with the most related prior art based on specific circumstances of each application. Of course, there are other ways of arguing against common knowledge, yet we cannot elaborate here due to limited space. We sincerely hope you, applicants and patent attorneys, find this article helpful and informative.
