Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Amendment to the Numerical Range in the Claim — Analysis of Invalidation Decision No. 4W101965 made by the Reexamination Board
Peter ZHANG
PATENT ATTORNEY
LINDA LIU & PARTNERS
I. Introduction
The collegial panel announced the patent No.ZL02158707.8 for the invention named “R-Fe-B Sintered magnet containing micro oxygen and its manufacturing method” (hereafter referred to as “involved patent”) invalid wholly in the Invalidation Decision No.4W101965. The reason was that a number of the amendments to the Claim were beyond the scope of protection, which did not comply with the provision of Article 331 of the Patent Law. Among the amendments, the collegial panel considered the limitation of the feature of the numerical range from “100<O<1200ppm2” to “100 ppm <O<900ppm” was beyond the scope.
Why the above limitation of the numerical range which seemed having no expansion to the scope of protection was determined beyond the scope? This article will take this case as an example and analyze the relevant provisions regarding the amendment to the numerical range in the Patent Law in China.
II. The Process of the Case
1. Substantive examination
The examiner cited the prior art No.CN2257992A to determine whether the involved patent was of inventive steps. The prior art disclosed a kind of anisotropic sintered magnet in which the content of oxygen was 960ppm and the content of Nd, Pr and Dy in rare earth totaled 29.86%. In order to exclude the disclosure of the prior art cited by the examiner in the substantive examination, the applicant amended “100<O<1200ppm” to “100 ppm <O<900ppm” (amendment 1-A), and “20<(Nd、Pr、Dy/Tb)<30wt%” to “26wt%< (Nd、Pr、Dy/Tb)<30wt%” (amendment 1-B)3 in the Claim No.1. Based on the above amendments, the Claim was admitted by the examiner in the substantive examination and thus the involved application was granted.
When the involved application was granted, the Claim No.1 was as follows:
“(1) A kind of anisotropic sintered R-(Fe, TM)-B-X magnet, its features are:
Among the above elements, R refers to at least one of Nd, Pr and Dy in rare earth; total amount: 26wt%<(Nd、Pr、Dy/Tb)<30wt%;
TM refers to at least one of Ti, V, Cr, Mn, Co, Ni, Ga, Ca, Cu, Zn, Si, Al, Mg, Zr, Nb, Hf, Ta, W and Mo; X refers to O, C and N; 100ppm<O<900ppm, N<3000ppm, C<1000ppm”.
2. Invalidation examination
The collegial panel pointed out in the decision:
(1) As for the content of O, the original Specification contained the detailed ranges as 100ppm<O<400ppm, 40ppm<O<800ppm, and 800ppm<O<1200ppm, etc. (Please refer to the line 15 of the page 2 of the disclosed Specification of the involved patent) which covered the medians 400ppm, 800ppm, etc. of the range 100<O<1200ppm in the Claim No.1. Under such circumstance, the applicant should have firstly considered to amend the Claim according to the common way prescribed in Article 33 of the Patent Law, instead of amending it directly through specific disclaimer.
The content of oxygen disclosed in the prior art cited by the examiner in the substantive examination was 960ppm, while 400ppm and 800ppm, as the medians of the range 100-1200ppm, could be used as the basis for amendment, in order to exclude the above mentioned 960ppm from the scope of the Claim No.1.
The original Specification and the Claim both had no mention of the point 900ppm, and this point also could not be defined directly and absolutely from the details therein. Thus, the amendment 1-A mentioned above in the Claim No.1 was beyond the scope of the original Specification and the Claim, which did not comply with the provision of Article 33 of the Patent Law.
(2) In this application, the content of rare earth disclosed in the prior art cited by the examiner in substantive examination was 29.86wt%, while the scope of content of Nd, Pr, Tb and Dy was 26-30wt % in the Claim No.1 which did not excluded the disclosed point as above mentioned. Thus, such an amendment obviously could not be regarded as a specific disclaimer amendment which could avoid the limitation from Article 33 of the Patent Law.
The original application document of the involved patent did not specify the point 26wt% of the content of Nd, Pr, Tb and Dy, and this point also could not be defined directly and absolutely from the details therein. Thus, the amendment 1-B mentioned above in the Claim No.1 was beyond the scope of the original Specification and the Claim, which did not comply with the provision of Article 33 of the Patent Law.
Based on the above reasons, the collegial panel announced the involved patent invalid wholly.
III. Relevant Laws and Regulations
Since the involved patent was filed on December 26, 2002, the Examination Guidelines of 2001 should have been applied. The collegial panel pointed out in their opinions as above mentioned that the two amendment ways, including the way prescribed in Article 33 of the Patent Law and another special way of specific disclaimer amendment. The Article 5.2.2.1 of Chapter 8 of the second part of the Examination Guidelines set out as follows:
① “As for the amendment to the numerical range of the Claim which contains such a feature, only if the two end points after amendment have been disclosed indeed in the original Specification and/or the Claim, such amendment is allowed.”
② “Under the circumstance that the original Specification and/or the Claim does not disclose the other medians of the original numerical range of a feature, in light of the disclosure of the prior art or the invention could not be implemented by using a certain part of the original range, the specific disclaimer amendment of that part from a broader range of the Claim is allowed as long as the application still meets the requirement of novelty and inventive steps by excluding the above mentioned part of range and the Claim after amendment as a whole still covers a definite scope of protection.”
In the 2010 Examination Guidelines, the Article 5.2.2.1 of the Chapter 8 of the second part set out the same point as the above ①. As for the above ②, the Article 5.2.3.3 of the Chapter 8 of the second part set out similar provision regarding disclaimer which is not allowed, as follows:
“Under the circumstance that the original Specification and the Claim does not disclose the other medians of the original numerical range of a feature, in light of the disclosure of the prior art affects novelty and inventive steps of the invention, or the invention could not be implemented by using a certain part of the original range, the specific disclaimer amendment of that part from a broader range which makes the numerical range as a whole clearly does not cover that part, is not allowed, since such amendment is beyond the scope of the original Specification and the Claim, unless the applicant can prove the invention could not be implemented by using the points within the disclaimed part of range according to the original application details, or the invention still meets the requirement of novelty and inventive steps by using the points within the disclaimed range.”
We may understand the purpose of Article 33 of the Patent Law, under the first-to-file principle, to avoid the applicant introduces new matter which is not included and disclosed (expressly or implicitly disclosed) in the original application document through amendment, so as to damage the interests of the country or the public.
As for the provision of the above ①, since the public may select a better range or point which may have better result from the disclosed range of an application (it is deemed as new matter), if the applicant is allowed to amend the range without limitation, it would make the public lose the chance to conduct further research based on the application. Therefore, only if the two end points after amendment have been disclosed indeed in the original Specification and/or the Claim, the above amendment is allowed.
As for the provision of the above ②, the author of this article considered it an exception of amendment to the Claim. This amendment is a special way of amendment under the circumstance that the original Specification and the Claim does not contain the other medians of a range of a certain feature due to which the amendment of the above ① is not available. Such amendment is subject to strict limitation. It is allowed only under the following two circumstances, namely, A. the disclosure of the prior art affects novelty and inventive steps of the application; B. the invention could not be implemented by using a certain part of the original numerical range. Only under the above mentioned two circumstances, the applicant is allowed to adopt the specific disclaimer amendment. As for the above mentioned A, the Claim after amendment should meet the requirement of novelty and inventive steps in respect of the prior art. As for the above mentioned B, the applicant needs to persuade the examiner to accept that the disclaimed part is a numerical range which could not be implemented.
IV. Analysis on this Case
In this case, in order to avoid the technical feature of 960ppm disclosed by the prior art, it needed to amend the numerical range of the Claim. However, according to the 2001 Examination Guidelines, it should have been firstly considered whether the other end points have been disclosed in the Specification when to make the amendment.
As for the content of O, the original Specification indicated the specific ranges as 100ppm<O<400ppm, 40ppm<O<800ppm, 800ppm<O<1200ppm, etc. Thus, to avoid 960ppm, the end points 400ppm and 800ppm which have been disclosed in the Specification should have been firstly considered in the amendment. Only if the Specification does not disclose the other medians, it can be considered to make the amendment through disclaimer of a part of the numerical range according to the above ② in order to avoid 960ppm, and argue the amended range is of novelty in respect of 960ppm.
As for the content of the rare earth, the point 29.86wt% was disclosed in the prior art. Thus, according to the Examination Guidelines, this point should have been avoided if to make the amendment according to the above ②. However, the amended range 26-30wt % obviously covered 29.86wt%. Such amendment did not comply with either of the two circumstances of the amendment through disclaimer prescribed in the Examination Guidelines. Thus, the collegial panel considered such amendment did not meet the requirement of specific disclaimer amendment.
Actually, the amendment through disclaimer is not allowed and it is a way of amendment beyond the scope of protection. Only if it complies with the above mentioned two circumstances A or B, the amendment is allowed. Since the amendment of the content of rare earth did not comply with the circumstances of “specific disclaimer” prescribed in the Examination Guidelines, such amendment was considered beyond the scope.
As for this case, the author had the following thoughts:
1. Regarding the amendment to the numerical range through limitation
There is a view that if the original document of a patent application discloses a certain range, it means any point within the range is available for the application. Thus, the limitation of a broader range would not make it beyond the scope. For example, if the temperature range of an experiment is 20℃-80℃, it means the patent can be implemented as long as the temperature is within the range of 20℃-80℃. Thus, the patent of course can be implemented in the temperature range 40℃-60℃. Therefore, the amendment of the range to 40℃-60℃ is not beyond the scope of the original Specification.
Another view is that according to Article 33 of the Patent Law, the applicant may amend the patent application document. However, the amendment to the application document for invention and utility model should not exceed the scope specified in the original Specification and the Claim. If the above 40℃ and 60℃ have not been disclosed in the original document, it means the technical solution containing the range of 40℃-60℃ is not disclosed in the original document. And this technical solution cannot be directly and absolutely defined. Thus, the above amendment is beyond the scope, which does not comply with the provision of Article 33 of the Patent Law.
According to the provision of the Examination Guidelines and the result of the above case, the examiners obviously held the latter view in practice in China and they adopted a stricter standard toward the amendment through limitation.
2. Regarding the relation between the common amendment and the “disclaimer amendment”
The so-called common amendment of the numerical range in the Claim refers to the amendment in which the end points have been disclosed in the original Specification and/or the Claim, that is, the provision ① of the Examination Guidelines.
According to the provision ② of the Examination Guidelines, if the original Specification and/or the Claim does not specify the other medians of the original range of a certain feature, it would be a precondition to adopt the “disclaimer amendment” which was also reflected in this case.
However, under the circumstance that the original Specification and/or the Claim specifies the other medians of the original range of a certain feature, if the disclosure of the prior art affects novelty and inventive steps of the new range amended according to the medians, is the “disclaimer amendment” available in order to avoid the disclosure of the prior art and argue the amended Claim is of inventive steps? (Question X) The Examination Guidelines have no provision regarding this question.
Regarding the above Question X, a view is that taking “the original Specification and/or the Claim does not disclose the other medians of the original range of a certain feature” as the prerequisite of the specific “disclaimer amendment”, if the amendment is made based on the other medians of the original range of a certain feature of the original Specification and/or the Claim, which still could not avoid the disclosure of the prior art, since the original Specification and/or the Claim has disclosed the other medians of the original range of a certain feature, it does not meet the prerequisite of the specific “disclaimer amendment” and thus amendment is not available.
Another view regarding the above Question X is that “the original numerical range” of the Examination Guidelines can be understood as “the new numerical range amended according to the medians”. Based on such understanding, “the other medians of the original range” of the Examination Guidelines can be understood as a point that could exclude the disclosure of the prior art after amendment by using the medians. Thus, a different answer to the above Question X is obtained, that is, the specific “disclaimer amendment” is available.
According to the opinions of the collegial panel in the invalidation decision, “As for the content of O, the original Specification contained the detailed ranges as 100ppm<O<400ppm, 40ppm<O<800ppm, and 800ppm<O<1200ppm, etc. (Please refer to the line 15 of the page 2 of the disclosed Specification of the involved patent) which covered the medians 400ppm, 800ppm, etc. of the range 100<O<1200ppm in the Claim No.1. Under such circumstance, the applicant should have firstly considered to amend the Claim according to the common way prescribed in Article 33 of the Patent Law, instead of amending it directly through specific disclaimer.”
To understand the opinion of the collegial panel from the context, it seems that the specific disclaimer amendment can still be adopted if the medians specified in the original Specification and the Claim could not avoid the point 960ppm disclosed in the prior art. This is an assumption made by the author. But it seems such assumption is reasonable and good for the applicant. Thus, the author agrees with the above second opinion4.
3. The influence of this case on the draft of the application documents
Based on this case, the author believes, in addition to provide the example of the two end points of the numerical range, it is better to also provide more points of a number of numerical ranges, so as to have possibly more options of amendments which are not beyond the scope in the following examination. Certainly, if the applicant does not want to provide the ranges or points which may truly reflect the substantial features in the patent application (the applicant wants to keep it as “know-how”), this should be taken into consideration in order not to present such ranges or points.
There is also a view that if the Specification does not contain any median of the numerical range, under the circumstance that the points disclosed in the prior art affect novelty or inventive steps of the application, the applicant may directly adopt the specific disclaimer amendment to avoid the corresponding point disclosed in the prior art, which is a convenient way for amendment.
As for the above view, the author thinks it is advisable for the applicant to specify a number of end points in the Specification and/or the Claim for the possible amendment in future, under the circumstance that the examination to the specific disclaimer amendment is very strict and it is difficult to have a full expectation of the prior art cited by the examiner, and if without full confidence to persuade the examiner to accept that the applicant still meets the requirement of novelty and inventive steps by disclaiming the part of numerical range.
4. Conclusion
As for the amendment to the numerical range, especially the amendment through limitation, it is likely to have a granted patent with the claim beyond the scope due to the negligence of the applicant, the attorney and the examiner.
Since China does not have amendment procedure after the patent is granted, such defect resulted from an amendment which is beyond the scope is no less that a time bomb, which causes great instability to the granted patent. If such defect is learned by the competitor who files invalidation against it, the patent is very much likely to be invalidated.
Coincidentally, in the invalidation decision No.WX7372, the collegial panel found the end points 11 and 30 of the amended numerical range “11~30” in the Claim No.1 of the patent were both not disclosed in the original Specification and/or the Claim. Thus, the technical solution limited by the Claim No.1 was beyond the scope of the original Specification and/or the Claim, which did not comply with the provision of Article 33 of the Patent Law. Therefore, the involved patent was invalidated finally.
The applicant needs to be very careful when to make a response to the Office Action and try best to use the medians disclosed in the original document. When to adopt the special way of specific disclaimer amendment, the applicant needs to have sufficient argument to prove the Claim containing the amended numerical range is of novelty and inventive steps, or the disclaimed numerical range could not be used to implement the application.
