According to Paragraph 1, Article 59 of the Patent Law, the scope of an invention or a utility model patent shall be determined from the terms of the claims. The specification and the drawings may be used to interpret the claims. Article 2 of the Interpretation of Supreme People's Court on Issues Concerning the Application of Law in the Trial of Dispute over Infringement of Patent Rights, effective as of 1 January 2010, further provides that the courts shall determine the scope of a claim prescribed in Paragraph 1, Article 59 of the Patent Law based on persons skilled in the art's understanding of the terms of the claim upon review of the specification and drawings.
Beijing CCPIT trade consulting center (hereinafter trade center) filed an invalidation request with the Patent Reexamination Board of the State Intellectual Property Office (hereinafter the Board) against the patentability of Claims 1-7 of PRC Pat. No. 200810045235.7 (hereinafter the ‘235 patent). Independent Claim 1 of the `235 patent is as follows (translation):
- A fused ceramic bead, characterized by having the following chemical composition in percentage by weight on the basis of oxides: 40 to 80% ZrO2and HfO2; 4.5 to 6.5 %Al2O3 or CaO; a quantity of SiO2 representing 15 to 45% of the composition when CaO is absent from the composition and 10 to 45% when CaO is present in the composition.
The ceramic bead disclosed in the primary invalidation exhibit of the trade center has two components, Y2O3 and CeO2, in addition to the components recited in Claim 1 of the ‘235 patent. The trade center argued that the transitional phrase in Claim 1 of ‘235 patent "having…" renders Claim 1 open-ended, as it does not exclude components such as Y2O3 and CeO2. Furthermore, Claim 1 is clear in expression and it is unnecessary to refer to the specification and drawings of the ‘235 patent for claim construction. Thus Claim 1 lacks novelty and inventiveness. However, the Board opined that persons skilled in the art would understand that Claim 1 excludes Y2O3 and CeO2 upon review of the specification and drawings of the ‘235 patent. Therefore, the Board issued No. 21569 invalidation decision and sustained the validity of the claims of the ‘235 patent. The trade center appealed the case to Beijing 1st Intermediate People's Court, which issued Beijing 1st Intermediate People's Court's Administrative Judgement No. Yi Zhong Zhi Xing Chu Zi No. 2553 (2014) and dismissed the appeal based on reasons similar to those adopted by the Board in the invalidation decision.