Guide: How to determine whether or not a claim is supported by the description, whether or not it is clear and whether or not it possesses inventiveness.

Introduction:
The petitioner filed a request for invalidation of the invention patent named “pre-coated sand, preparation method thereof and composite water permeable brick” (Patent No.: 201110325746.6). Entrusted by the patentee, Linda Liu & Partners handled relevant issues of the invalidation procedure of the patent on behalf the patentee. The Patent Reexamination Board of the State Intellectual Property Office (SIPO) held that: (1) for a technical feature did not belong to invention points, if a person skilled in the art can clearly exclude the inapplicable parts by combining the description with the common knowledge of the field according to the function and role of the technical feature in the technical solution of the invention, then the technical feature was supported by the description; (2) for a claim referring to other claims, replacing the definition of a feature of the referred claims would not lead to unclarity of the scope of protection; and (3) if the distinguishing technical feature of a claim over the most related prior art was not disclosed or taught by the reference documents, then the claim had prominent substantive feature over the reference documents. Finally, the Patent Reexamination Board sustained the whole validity of the disputed invention patent.

Highlight of the case:
The petitioner claimed that: 1,2-cyclohexanediol diglycidyl ether defined in claim 4 did not belonged to cycloaliphatic epoxide resin, thus the scope of protection of claim 4 was unclear.

We argued that: as shown by Tables 1-2 on page 8 of Counterevidence 2 we submitted, epoxy resin of glycidyl ether was a kind of epoxy resin, thus 1,2-cyclohexanediol diglycidyl ether, as one of cycloaliphatic glycidyl ether, should be a kind of cycloaliphatic epoxy resin; moreover, even when substances did not belong to cycloaliphatic epoxy resin were defined, e.g., claim 1 defined “pre-coated resin is weather resisting cycloaliphatic epoxy resin” and claim 4 referred to claim 1 and defined “pre-coated resin is one or several of …. (substances that do not belong to weather resisting cycloaliphatic epoxy resin)”, yet claim 4 replaced “weather resisting cycloaliphatic epoxy resin” defined by claim 1 by one or several of the listed substances and had clear scope of protection.

Finally, the Patent Reexamination Board supported our arguments. As shown above, the key to the success of this case lies in the deep understanding of technique and law.