Facts and Procedure
SEB SA owns an invention patent titled “Dry Fryer” (ZL200910159735.8, application date June 8, 2005, priority date June 8, 2004 and granted on April 13, 2011) (“Patent”). TALL & STOUT Home Appliances (Shenzhen) Ltd. (“TALL & STOUT”), YUAN Yuxing and YI Chunhua respectively and successively applied to the Patent Reexamination Board of the State Intellectual Property Office of China (“PRB”) to declare the Patent invalid. The Patent defines a dry fryer, comprising main body for accommodating the food to be fried, container means, stirrer means, and main heater means that is mounted on the main body and designed to generate heat flow directed to strike substantially directly at least a portion of said food and provides at least majority of the heat for cooking. An automatic cooking apparatus disclosed by reference document 1 differs from the Patent only in the heating approach, in that the former adopts the traditional approach, namely heat source and food are separated by the container bottom. Reference document 3 discloses impingement oven airflow devices and methods. The PRB held that both approaches, namely heating by striking directly to the surface of food through heat flow and heating indirectly from the bottom, were regular heating approaches in cooking equipment field and well known by those skilled in the art, who then had motivations to replace the heating means of reference document 1 with that of reference document 3. Accordingly, the PRB held that the Patent lacked inventiveness.
SEB SA filed an administrative litigation before the Beijing First Intermediate People’s Court, which revoked the PRB’s decision. The third party YUAN Yuxing appealed to the Beijing Higher People’s Court, while the court affirmed the judgement.
Issues and Law
Article 22.3 of the Patent Law (2001) defines inventiveness as that compared with prior art before its application date, the invention shall have prominent substantive features and notable progress. The Guidelines further provides that in the course of determining inventiveness of an invention, what’s to be determined is whether or not the prior art as a whole gives a motivation to apply the distinguishing features to the closest prior art. The distinguishing feature between the Patent and reference document 1 is “heat flow directed to strike substantially directly at least a portion of said food,” which is disclosed by reference document 3. Both the PRB and the appellant claim that a person skilled in the art has motivation to replace the heating means of reference document 1 with that of reference document 3, while SEB SA claims the contrary. The issue of this case therefore is whether or not a person skilled in the art has motivation to combine reference document 1 and 3 to obtain the Patent.
Decision and Analysis
Reference document 3 discloses impingement oven airflow devices and methods, wherein individual heat transfer elements are affixed to each air pipe or conduit in close association with jet nozzles, and heat transfer elements may comprise device such as electrical heating coils. Jets from jet nozzles go through heat transfer elements and form heat flow which heats food by striking perpendicularly to the surface of the food, and this provides a majority of heat for cooking.
Courts of both the first instance and the second instance admit that reference document 3 discloses the technical features regarding heating approach of the Patent’s main heating means, but at the same time point out that reference document 3 applies those technical features to baking devices rather than frying devices to which the Patent belongs. Generally speaking, different cooking styles are based on different cooking principles to achieve their respective unique cooking effect (such as taste). Their heating approaches are relatively definite and heating approaches of other cooking styles cannot replace their own general options. The Patent and reference document 3 have applied different cooking styles to achieve different cooking effects based on different cooking principles. The technical features regarding heating approach in the reference document 3 could not be conceived in combination with reference document 1 to obtain the technical solution of the Patent. Besides, the technical solution of the Patent can use less oil to achieve the frying cooking style and realize the unexpected technical effects of frying. Therefore, the person skilled in the art does not have motivation to combine reference document 1 and 3 to obtain the Patent. The Patent hence has inventiveness.
The judging rule of this case can be understood as: if integrally compared with prior art of another technical field, the patent applies different technical principle to achieve different technical effects, there is usually no combining motivation. It needs to be pointed out that the appellant YUAN Yuxing claims in his appealing arguments that the heating approaches of both reference document 3 and the Patent are to solve the same technical problem, which is to achieve heat exchange, so combining motivation exists. The court of the second instance, however, does not accept and consider the identicalness of technical problems as a factor to determine the existence of combining motivation.
Courts of this case, through judgement of whether there exists combining motivation between frying field and baking field, clarify the integral comparison principle in the judgement of technical motivation and point out the factors to be considered in identifying the motivation, which has guiding significance for judging combining motivation between different technical fields.