Date: 28 March 2022

Non-obviousness requirement is one of the core requirements for patentability. Since examination guidelines on non-obviousness varies in different countries, it is hard for applicants to obtain a consistent scope of rights in every jurisdiction with the same drafting and response strategy. Furthermore, different determination methods are adopted for patent applications in different technical fields, such as chemical inventions and mechanical inventions. This article aims to focus on mechanical and software patent applications, compare different regulations on non-obviousness in USPTO, CNIPA, EPO and TIPO, and provide our strategies for applicants.

A. Steps for determining Non-obviousness

1. The United States - USPTO

The steps for determining non-obviousness at USPTO include¹ :

i. Determining the scope and content of the prior art;

ii. Ascertaining the differences between the claimed invention and the prior art;

iii. Resolving the level of ordinary skill in the pertinent art;

iv. Objective evidence relevant to the issue of obviousness must be evaluated. Such evidence, sometimes referred to as "secondary considerations," may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results.

Accordingly, USPTO requires examiners to search and examine on all elements in a claim. That is, all recitation in a claim would be a part to determine whether the claim is obvious. A USPTO examiner needs to explain the reason for determining it obvious for all elements, no matter whether the element is technical or not.

However, it should be notice that USPTO does not limit the number of references to be combined. The examiner may combine many references to support an obviousness rejection, if it is proved that a person skilled in the art would have motivation to combine those references.

If the examiner combines many references, applicants may try to find some statements in the references that may help for response. For example, applicants may show that the statement in the reference would lead a person skilled in the art to a way contrary to the claimed invention, the proposed modification in the reference would render invention inoperable, the references disclose too many possibilities that a person skilled in the art would only achieve the claimed invention with undue experiment, etc. All clues in the references may be used to challenge the examiner.

2. China - CNIPA

The steps for determining non-obviousness at CNIPA include ²:

i. Determining the closest prior art;

ii. Determining the distinguishing features of the invention and the technical problem actually solved by the invention;

iii. Determining whether or not the claimed invention is obvious to a person skilled in the art.

In step ii, A CNIPA examiner would first determine the distinguishing feature between the claimed invention and the prior art, and then determine the technical problem actually solved by the invention based on the technical effect achieved by the distinguishing feature. Therefore, the technical problem actually solved by the invention determined by the examiner during prosecution may be different from the technical problem emphasized by the applicant when drafting the specification. It may also be different from which determined by the applicant when making a response to the examiner. This is similar to the regulations set forth in the Guidelines for Examination in EPO, which we will introduce in detail in the next part.

In step iii, the examiner would determine whether the claimed invention is obvious based on the distinguishing feature and the technical problem actually solved. Currently in practice, it is quite common that the examiner directly deems the distinguishing feature as a substitution of a common general means, and therefore determines the claimed invention obvious.

Accordingly, when making a response for the obviousness of mechanical and software patent applications, applicants should first notice that whether the examiner’s determination of the distinguishing feature in step ii is correct; for example, whether the examiner misunderstands and makes a wrong comparison between the elements of the claimed invention and the prior art. Next, applicants should focus on the technical problem actually solved by the invention, make sure the technical means to solve the problem that set forth in the specification, confirm the corresponding structure, connection or configuration based on the technical means, and infer the technical effect achieved by the technical means. Finally, compare the technical effect with the prior art. If there is any difference, the examiner may be easier convinced the difference between the claimed invention and the prior art, or that the technical means is not common or general.

B. Example and Analysis

We compare the possible Office Action that may be issued by USPTO and CNIPA with the following example:

Take the case in EPO Guidelines, G-VII, 5.4.2.1 as an example. If a claim recites:

Method of facilitating shopping on a mobile device wherein: (a) the user selects two or more products to be purchased; (b) the mobile device transmits the selected products data and the device location to a server; (c) the server accesses a database of vendors to identify vendors offering at least one of the selected products; (d) the server determines, on the basis of the device location and the identified vendors, an optimal shopping tour for purchasing the selected products by accessing a cache memory in which optimal shopping tours determined for previous requests are stored; and (e) the server transmits the optimal shopping tour to the mobile device for displaying.

In case that the difference between the claim and a prior art only lies in that: the prior art discloses a user may select a product to be purchased, while the claimed invention discloses two or more, then:

1. In China, the examiner should first determine the distinguishing technical feature, and determine the problem actually solved by the invention based on the distinguishing technical feature. In this example, comparing with the prior art, the problem actually solved by the invention is: how to adapt the mobile device used to enable the user to select two or more products in an efficient manner. Regarding the problem actually solved and the distinguishing feature, the CNIPA examiner is likely to deem the distinguishing feature as a substitution of a common general technical means, and since the means does not produce any unexpected effect, the distinguishing feature is obvious to a person skilled in the art. At this time, the applicant can try to focus on the connection between the hardware or software in the device. If there is statement in the specification describing that the distinguishing feature is resulted from the difference of the connection, it is easier to prove that the distinguishing feature is not common or general.

Regarding the problem actually solved and the distinguishing feature, the CNIPA examiner is likely to deem the distinguishing feature as a substitution of a common general technical means, and since the means does not produce any unexpected effect, the distinguishing feature is obvious to a person skilled in the art. At this time, the applicant can try to focus on the connection between the hardware or software in the device. If there is statement in the specification describing that the distinguishing feature is resulted from the difference of the connection, it is easier to prove that the distinguishing feature is not common or general.

2. In the United states, the examiner needs to search and examine on all elements in the claim. Also, if the examiner deems the distinguishing feature obvious, it is necessary to prove that the feature is common knowledge. A USPTO examiner is not allowed to simply reject a claim by stating it as a common knowledge without any proof. However, if the examiner did find another prior art that discloses “the user selects two or more products to be purchased”, the applicant can try to focus on the prior arts and find if there is any statement to rebut motivation to combine the prior arts.

In the next part, regulations in EPO and TIPO will be introduced in detail. Also, we will provide our comments and strategies to face such different regulations on non-obviousness of mechanical and software patent applications in different countries.