Guide: How to determine whether or not a claim possesses novelty and/or inventiveness over reference documents？

Introduction: A mechanical business company, as the first petitioner, and an enterprise, as the second petitioner, filed a request for invalidation of the utility model patent named “control circuit of sewing machine” (Patent No.: 200920315148.9). Entrusted by the second petitioner, Linda Liu & Partners handled relevant issues of the invalidation procedure of the patent on behalf of the second petitioner. The Patent Reexamination Board of the State Intellectual Property Office (SIPO) held that: if the technical solution of a claim had been disclosed by the reference document of the same technical field, and the technical problem the technical solution intended to solve and the expected technical effect were the same with those of the reference document, then the claim did not possess novelty over the reference document; if the distinguishing feature of the technical solution of the claim over the reference document was a technical means that a person skilled in the art can easily conceive and choose according to actual needs, and such choice did not require any creative labor or have any unexpected technical effect, then the claim did not possess inventiveness. Finally, the Patent Reexamination Board announced that the disputed utility model patent was wholly invalidated.

Highlight of the case:
The first petitioner provided Attachments 1-1 to 1-3 as evidences and pointed out that claims 1-10 of the disputed patent did not possess novelty or inventiveness over Attachments 1-1 to 1-3.

We provided Attachments 2-1 to 2-5 as evidences and pointed out that claim 1-10 of the disputed patent did not possess novelty or inventiveness over 2-1~2-5.

Finally, the Patent Reexamination Board adopted our Attachment 2-2 and grounds, and determined that claims 1-8, 10 did not possess novelty over Attachment 2-2, and claim 9 did not possess inventiveness over the combination of Attachment 2-2 and the common knowledge of the field. As shown above, the key to the success of the case lies in the prudent choice of evidences.