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On Strategy for Overcoming Novelty Rejection according to Principle of Novelty Presumption

 
Lili SUN 
Chinese Patent Attorney

Regarding the examination on novelty of a product claim including a feature of performance or parameters, the Guidelines for Patent Examination provides the following principle:

The examiner shall consider whether the feature of performance or parameters in a claim implies that the claimed product has a certain particular structure and/or composition. If the performance or parameters 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 performance or 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, unless the applicant can, based on the application or the prior art, prove that the claimed product having the feature of performance or parameters is distinct from the product in the reference document in structure and/or composition. This principle is generally referred to as the “Principle of Novelty Presumption”.

In the novelty rejection to a product claim including a feature of performance or parameters, the examiner usually relies on the Principle of Novelty Presumption. Based on practical experience, the author would like to provide inspirations on the strategy for the response to such a novelty rejection in this article.

In fact, the Guidelines for Examination has already provided the ideology for the response, i.e., “based on the application or the prior art, prove that the claimed product having the feature of performance or parameters is distinct from the product in the reference document in structure and/or composition.” In practice, the strategy is not limited to proving that the claimed product having the feature of performance or parameters is distinct from the product in the reference document in structure and/or composition; the novelty rejection can be eliminated as long as there are sufficient reasons and/or evidence indicating that the claimed product is distinct from the product in the reference document.

The key to overcoming the novelty rejections based on the Principle of Novelty Presumption is to how to prove that the claimed product is distinct from the product in the reference document. The following are some ideas for a plausible response.

1. Experimental data

If possible, experimental data may be provided for the examiner as direct evidence that the product in the reference document is not within the claimed scope of protection. Specifically the product of the reference document may be tested by the method of the subject application; and the test results of the relevant performance and parameters may be submitted. In the case that the test results of the product of the reference document are not in the value range of the performance and parameters recited in the claims, it would be intuitive that the claimed product is distinct from the product in the reference document.

2. Logical reasoning

In some case, although the reference document does not disclose the performance or parameters involved in the subject application, it includes other features associated with the performance or parameters involved in the subject application. In that case, the applicant may try logical reasoning based on the technical knowledge in the art to argue that the product of the reference document does not have the performance or parameters defined by the subject application.

For example, for a claim directed to an adhesive with an adhesive force (α) of 1N/25mm under the following condition:

adhesive force (α): 180-degree peel strength (N/25mm) of an adhesive sheet produced with an adhesive layer formed by an adhesive on a substrate to an adherend of SUS-BA board at a peeling speed of 300 mm/min after placed still at 23℃, 50%RH for 30 min,

the Examiner raised novelty objection on the grounds that the application cannot be distinguished from the adhesive of the reference document based on the adhesive force (α) recited in the claim.

Through an analysis of the reference document, it was found that the reference document disclosed an adhesive sheet with an adhesive force of 0.01N/25mm that is the 180° peeling adhesive strength tested at a peeling speed of 300 mm/min at 23±2℃, 65±5%RH after the adhesive sheet was adhered to an un-tinned surface of alkaline glass.

It can be seen that the adhesive force of the reference document and the adhesive force (α) of the subject application were tested under different conditions, and were not directly comparable. Nonetheless, since the un-tinned surface of alkaline glass used in the reference document and the SUS-BA board used in the subject application were both inorganic smooth surface, the slight difference in the methods for testing the adhesive force could not cause significant difference in the measured value. As the value of the adhesive force in the reference document was far smaller than that of the subject application, it was appreciated that the adhesive force (α) of the adhesive sheet of the reference document was not within the range recited by the subject application.

3. Analyze structure and/or composition of the product

The feature of performance or parameters in the claim is definitely associated with the structure and/or composition of the product. Therefore, the novelty rejection could be overcome based on an analysis of the structure and/or composition of the products of the subject application and the reference document.

If the description of the subject application has described a specific relationship between the feature of performance or parameters in the claim and the structure and/or composition of the product, it can be determined whether the product of the subject application is distinct from the product in the reference document in structure and/or composition based on the disclosure of the description. However, in most cases, the description may not specify the specific relationship between the feature of performance or parameters in the claim and the structure and/or composition of the product, which means that more detailed analysis of the subject application would be necessary. For example, a comparison may be conducted between the examples and the comparative examples described in the description to conclude the relationship between the feature of performance or parameters in the claim and the structure and/or composition of the product, to see whether the product of the reference document is distinct from the subject application in structure and/or composition.

In an example case of an application that is directed to a photo-curable adhesive sheet and recites that the photo-curable adhesive sheet comprises an adhesive layer Y having all of the following characteristics (1) to (3):

(1) a gel fraction X1 i.e. gel fraction before radiation being within the range of 0 to 60%;

(2) a light transmittance at a wavelength of 390 nm being 89% or less, and having a light transmittance at a wavelength of 410 nm being 80% or more;

(3) a photo-curability of being cured by radiation of a light at the wavelength of 405 nm,

the Examiner alleged that the reference document discloses a photo-curable adhesive sheet that is highly similar to the subject application in terms of raw material system and preparation process; the product of the subject application cannot be distinguished from the product in the reference document based on the feature of performance or parameters in the claim. On this basis, the Examiner rejected the claim as lacking novelty.

The description of the subject application did not specify the relationship between the above characteristics (1) to (3) and the composition and/or structure of the photo-curable adhesive sheet. However, as seen from a comparison between Example 1 and Comparative Example 1, the mere distinction therebetween lies in the type of photo-initiator. Accordingly, the feature of performance or parameters in the claim implies that the claimed product comprises a particular photo-initiator. The reference document uses the same photo-initiator as Comparative Example 1 does. Thus, it can be determined that claim 1 is distinct from the product in the reference document in composition.

4. Analyze the preparation method of the product

In some case, the feature of performance or parameters is the result of a particular method adopted in the preparation of the product. In that case, the applicant may identify the distinction between the subject application and the reference document based on an analysis of the preparation methods.

For example, for a claim directed to a copolymerized polyester film, wherein the storage modulus of the copolymerized polyester film at 25℃ is 2500 MPa or less and the storage modulus of the copolymerized polyester film at 120℃ is 10 MPa or more, the examiner stated that the copolymerized polyester film of the reference document is the same with that of the subject application in composition and preparation process, and thus the claimed product was not distinguishable from the product of the reference document based on the storage modulus recited in the claim. Consequently, the examiner determines the claim to lack novelty.

The description of the application described that the storage modulus of the copolymerized polyester film was related to not only the type and the content ratio of the copolymerized ingredient of the copolymerized polyester but the stretching condition and subsequent thermal setting condition for producing the film. By comparison, the film manufacture method of the reference document was found to be performed under different stretching conditions and different subsequent thermal setting conditions from the application. With further reference to the description and the comparative examples, it was clear that the claimed copolymerized polyester film of the application cannot be obtained under the stretching condition and subsequent thermal setting condition of the reference document. Thus, the copolymerized polyester film of the application is distinct from that of the reference document.

The above cases are described in a simplified manner for the ease of explanation of the response strategies. Usually the actual situation would be far more complicated in specific cases. It would be necessary to carry out in-depth analysis of the application and the reference document to identify a suitable manner to prove the distinction between the application and the product in the reference document.

Strategy 2 is also convincing because the distinction between the claim and the product in the reference document is sufficiently elaborated. However, this strategy is contingent because the logical reasoning can only be made possible when the reference document includes other features related to the feature of performance or parameters of the application.

The latter two strategies are more universally applicable. However, extra caution should be taken in adopting these strategies, for the examiner may require the composition, structure, and/or preparation method be further limited in the claim in view of the argumentation that the feature of performance or parameters is brought about by a particular composition, structure, and/or preparation method of the product.
 

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