Rebutting objections to inventiveness

For instance, with respect to apparently broad claims, examiners used to raise objections that the claims were not supported by the description under article 26.4 of the Patent Law. Nowadays, in similar scenarios, examiners raise inventiveness objections under article 22.3 on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art.

Also, in raising objections to inventiveness, examiners usually emphasise obviousness of the claims. This trend poses new challenges to patent attorneys and applicants. To address inventiveness objections, practitioners may consider using the following strategies.

Formulating arguments highlighting non-obviousness

In rebutting inventiveness objections, it is important that the arguments highlight the non-obviousness of the claims, in addition to the superior technical effects disclosed in the description.

For instance, applicants may prove that the two or more references cited by the examiner are mutually exclusive in terms of working principles, and accordingly cannot remedy each other or be combined—a fact proving that the references would not prompt those skilled in the art to arrive at the claimed invention.

Submitting prior art evidence or further experimental data

To support the claims, applicants may consider submitting prior art evidence, provided that the evidence would not be detrimental to the claims. For instance, if examiners raise inventiveness objections on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art, applicants may submit prior art showing that all the claimed embodiments are supported by the same theory and are expected to produce the intended technical effect, thus proving that all the claims cover embodiments that are inventive over the cited prior art.

In addition, applicants may consider submitting further experimental data to support the claims in terms of inventiveness. It must be noted that examiners usually do not consider further experimental data intended to support the claims in terms of protection scope, and the data to be submitted is preferably collected by repeating the experiments disclosed in the applicant’s description with the technical solution of the prior art.