How to overcome office actions concerning common knowledge

Introduction

Patents are some of the most accessible tools for businesses to protect their innovations. By patenting an innovation, companies can enjoy exclusive monopolies, in exchange for disclosure, over new technology that has been developed and competitive advantages that have been created with the technology. However, as we all know, not all patent applications will be granted, especially applications for inventions, which must pass substantive examination before being granted.

Assessment of inventive step is one of the key elements of the substantive examination of inventions. In China, it is not uncommon for an examiner to issue an office action alleging that the claimed invention lacks an inventive step on the ground that the distinguishing feature of the invention is a common knowledge. ‘Customary means in the art’ is a significant type of common knowledge. Office actions concerning this type of common knowledge are fairly difficult to overcome because the rejection is not supported with any reference document and involves strong subjectivity.

This article will investigate the concept of common knowledge and introduce an effective strategy for responding to office actions related to customary means in the art. At the end of the article, three successful cases are also presented.

Concept of common knowledge

The concept of ‘common knowledge’ is not defined by the Chinese Patent Law nor its Implementing Regulations. The Guidelines for Patent Examination, although offering no definition of the concept, do cite two examples it, and state that “the distinguishing feature is a common knowledge, such as a customary means in the art to solve the re-determined technical problem, or a technical means disclosed in a textbook or a reference book to solve the re-determined technical problem” (see Section 3.2.1.1, Chapter 4, Part II). Thus, it can be seen that the Guidelines for Patent Examination divide common knowledge into two categories: the first category covers textbooks and reference books, and the second one is the customary means in the art.

For the first category of common knowledge, the examiner would cite evidence and point out the exact text in the cited textbook or reference book that describes the asserted common knowledge. As the exact text is available, the rejection can be dealt with as an inventive step rejection raised based on other literature, such as patent documents and articles in periodicals.

The second category of common knowledge, that is, customary means in the art, is rather a catch-all term. It is used by the examiner to reject a patent application on the ground of lacking inventive step when he or she fails to find any reference document to support his or her opinions. No evidence will be provided, only logical analysis and reasoning. As a result, the examiner can exercise their discretionary power to raise a rejection in relation to the customary means in the art, which leads to strong subjectivity in the office action. As no reference document is available for one to compare it with the patent application, rejections concerning the customary means in the art are often very difficult to overcome.

Response strategy

To develop a good strategy to overcome office actions concerning the customary means in the art, it is important to understand how the inventive step of an invention is assessed by examiners and where errors may occur in the process of assessment.

The Guidelines for Patent Examination provide for a “three-step approach” for examiners to follow (see Section 3.2.1.1, Chapter 4, Part II). The three steps are

1. determining the closest prior art;
2. determining the distinguishing features of the invention and the technical problem actually solved by the invention; and
3. determining whether or not the claimed invention is obvious to a person skilled in the art.

Among these steps, step (2) is crucial and directly affects the conclusion of whether a patent application involves an inventive step. When taking this step, the examiner, without finding any reference document related to the distinguishing features of an invention, often uses his or her own discretion to subjectively determine, by means of logical analysis and reasoning, whether the distinguishing features of the invention fall under the customary means in the art, and subsequently denies its inventiveness. As the examiner’s knowledge of the customary means in the art is often limited, logical errors may occur in the reasoning process, and the distinguishing technical features of the invention may be incorrectly deemed as customary means in the art.

When responding to an office action concerning the customary means in the art, it is very easy for one to follow the examiner’s train of thought and put up an argument surrounding step (3), that is, whether or not the claimed invention is obvious to a person skilled in the art. However, as the negative conclusion reached by the examiner is the result of errors in step (2), it would be the most effective to focus on the examiner’s findings in this step and question whether the examiner has correctly identified the distinguishing technical features of the invention and the technical problem actually solved by the invention. Once it is established that the distinguishing technical features and technical problem determined by the examiner are wrong, the conclusion drawn by him or her will be undermined.

To be specific, to respond to an office action, one should first analyse and re-identify the distinguishing technical features of the invention in comparison with the closest prior art cited by the examiner. Based on the technical effect that can be produced by the newly identified distinguishing technical features, the technical problem with the claimed invention, which is the technical task to improve the closest prior art to achieve a better technical effect, should be redefined. Through the aforesaid analyses, it will become obvious that the distinguishing technical features of the invention are not those found by the examiner. Consequently, the technical problem determined by the examiner is incorrect. Then, the applicant should proceed to demonstrate that the invention represents notable progress based on the advantageous technical effects that can be produced by the newly identified distinguishing technical features and draw the conclusion that, compared with the closest prior art cited by the examiner, the invention has prominent substantive features and represents notable progress, so the patent application for invention involves an inventive step.

Besides the above, one may also request the examiner to produce evidence in support of his or her opinions. The Guidelines for Patent Examination provide that, where an examiner finds that the technical features contributing to solve the technical problem are common knowledge, he or she should usually provide evidence (Section 4.10.2.1, Chapter 8, Part II). Although the rule encourages, rather than obliges the examiner to produce evidence, with the aforesaid request being made, the examiner will be pressured to reconsider his or her previous rejection carefully. He or she may admit that the claimed invention involves an inventive step or, at least, he or she will conduct more searches for evidence.

Case studies

The most important element for the above strategy is to redefine the technical problem actually solved by the claimed invention. Once it is proved that the technical problem determined by the examiner is incorrect, the examiner will have no choice but to reconsider his or her opinion. Three cases are presented here to demonstrate how the technical problem of an invention may be redefined in response to a rejection concerning the customary means in the art. In all three cases, the rejections of the examiners were successfully overcome.

Case 1

The patent application for the invention under No. 202010092528.1 concerns an online forensic method based on the macOS system, and Reference Document 1 (NSTL National Center for Scientific and Technical Library Documentation, pp. 25-30, 31 December 2014) is the closest prior art cited by the examiner, which discloses the design and implementation of a static forensic system for Apple computers based on the Windows platform. The examiner issued a rejection decision on the basis that the patent application for invention lacked an inventive step. In the decision, the examiner held that based on the distinguishing technical features of the first claim of the patent application and Reference Document 1, the technical problem actually solved by the invention was “how to improve the efficiency of forensics”, and the distinguishing technical features of the first claim were the customary means in the art.

A request for re-examination was filed in response to the rejection decision. In the request, analyses were made to re-identify the distinguishing technical features of the claimed invention in comparison with the closest prior art, and then redetermine the technical problem actually solved by the invention based on the technical effect that could be produced by the newly identified distinguishing technical features. The analyses led to the conclusion that the technical problem solved by the invention was:

(1) how to perform online forensics while the macOS operating system is running; (2) how to automatically identify the category of the file system and call the corresponding operation program according to the identified content; and (3) how to extract plaintext data from encrypted disks or partitions or volumes to reduce the difficulty of parsing so that to save resources

This was different from the conclusion of the examiner in the rejection decision. Apparently, the technical problem determined by the examiner was incorrect.

Case 2

The patent application for the invention under No. 202011502493.0 concerns a page generation method, and Reference Document 1 (CN 106095506 A) is the closest prior art cited by the examiner, which discloses a page-loading method and device. During the substantive examination, the examiner issued the first office action on the basis that the patent application for invention did not involve an inventive step. In the first office action, the examiner considered that based on the distinguishing technical features of the first claim of the patent application and Reference Document 1, it could be found that the technical problem actually solved by the invention was “by what device the page is loaded”, and the distinguishing technical features of the invention were the customary means in the art.

A response was filed against the first office action. By analysing the claimed invention in comparison with the closest prior art cited by the examiner, it was shown that the technical problem solved by the invention was, instead of “by what device the page is loaded” as determined by the examiner in the first office action:

In SSR (Server Side Rendering) mode, to avoid long waiting time between servers due to interface timeout or long return time of the interface, which will make the rendering of the page to slow down, and the user to wait too long.

Therefore, the technical problem determined by the examiner was incorrect.

Case 3

The patent application for invention under No. 202011040403.0 concerns a priority-based email delivery method, and Reference Document 1 (CN103401764A) cited by the examiner is the closest prior art, which discloses an email delivery method. During the substantive examination, the examiner issued the first office action on the basis that the patent application for invention lacked inventive step. In the first office action, the examiner held that, based on the distinguishing technical features of the first claim of the patent application and Reference Document 1, the technical problem actually solved by the invention was “how to prioritize each type of email”, and the distinguishing technical features were the customary means in the art.

The applicant responded to the first office action and redefined the technical problem of the invention in consideration of the closest prior art cited by the examiner. The new technical problem defined was, instead of “how to prioritize each type of email” as determined by the examiner in the first office action:

how to determine the actual urgency of emails and dynamically adjust the delivery mechanism of emails (to determine the priority of emails according to the successful delivery time and reading acknowledgement time of emails, that is, to effectively determine the actual urgency of emails according to the recipient’s attention to emails, and update the priority level regularly to ensure the accuracy of the final priority level)

Hence, the technical problem determined by the examiner was incorrect.