Guide: How to determine the obviousness of the technical solution of a claim?

Introduction: The petitioner, a computer system company, filed a request for invalidation of the utility model patent named “additional information management system” (Patent No.: 200920129968.9). Entrusted by the petitioner, Linda Liu & Partners handled relevant issues of the invalidation procedure of the patent on behalf of the petitioner. The Patent Reexamination Board held that: the technical solution defined by the claim was substantially the same with the disclosure of the reference document; they belonged to the same technical field, solved the same technical problem, and had the same technical effect, thus the technical solution did not possess novelty over the reference document. If the technical solution of a claim had a distinguishing feature over the disclosure of the reference document, but the distinguishing feature had been disclosed by another reference document, and it was readily apparent for a person skilled in the art to arrive at the technical solution of the claim by combining the two reference documents, 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:
In the Request for Announcement of Invalidation, we adopted two ways to prove that claims 3 and 4 did not possess inventiveness, including ①Evidence 1 + common knowledge and ② Evidence 1 + Evidence 2. After supplementary search, we found an Evidence 3 with stronger probative force, and adopted four ways to prove that claims 3 and 4 did not possess inventiveness, including ①Evidence 1 + common knowledge, ② Evidence 1 + another part of Evidence 1, ③Evidence 1 + Evidence 2 and ④Evidence 1 + Evidence 3. Finally, the Patent Reexamination Board affirmed and adopted the above way ④. As shown above, the keys to the success of this case lie in the supplementary search for better evidences and adoption of combination of multiple and various evidences.