Enyuan Wang v. Beijing Trade Promotion Business Consulting Company (Invalidation Decision No. 21569 by the Patent Reexamination Board on October 28, 2013)
For an invention patent, no matter how clear a claim appears to be, understanding of the background may often completely disrupt our initial views on its meaning. Therefore, the content of a claim for an invention or a utility model shall be determined according to the language of the claim, in combination with the person having ordinary skill in the art, or PHOSITA’s understanding of the claim after he has read the description and drawings. The interpretation of the claim shall be in line with the purpose of invention. The technical solution having the defects of the existing technology to be overcome by the claimed patent shall be deemed not to fall into the protection scope of the patent right. The present case highlights that the protection scope of claims shall be reasonably determined according to what the invention is in substance.
The patentee has a patent ZL200810045235.7, entitled "zirconium silicate ceramic sandblasting beads", in which claim 1 seeks protection for zirconium silicate ceramic sandblasting beads, characterized in having the following chemical composition in wt% of the oxides: 50 to 80% of ZrO2 and HfO2, and 4.5 to 6.5% of Al2O3 or 4.5% to 6.5% of CaO2,and that when the composition does not contain CaO, the amount of SiO2 accounts for 15% to 45% of the composition, and when the composition contains CaO, the amount of SiO2 accounts for 10% to 45% of the composition".
The invention was granted a patent right in 2010, and its background technology involves a prior patent CN1050589C owned by Société Européenne des Produits Réfractaires. As the existing technology, yttrium oxide (Y2O3) and cerium oxide (CeO2) are used as a stabilizer. However, due to the high cost of these stabilizers, the ceramic beads produced with this technology are expensive and thus their application in the sandblasting field is limited. The present invention is a typical improved invention, which is based on the above background technology and uses cheap alumina (Al2O3) and calcium oxide (CaO) as the stabilizer in place of yttrium oxide (Y2O3) and cerium oxide (CeO2), thereby significantly reducing the cost, and still achieving similar results.
On May 29, 2013, the petitioner, Beijing Trade Promotion Business Consulting Company, submitted a request for invalidating the present patent, asserting that: claim 1 is written in an open mode instead of a close mode according to Chapter 10, Part II of the Guidelines for Patent Examination; and claim 1 itself is clear so that it is unnecessary to refer to the description to interpret the claim. Therefore the protection scope of claim 1 shall be determined as not excluding other unmentioned components. Based on the above understanding, the petitioner submitted as evidence an enforced judgment rendered in a lawsuit for patent infringement of CN1050589C, Civil Judgment (2009) Hu Gao Min San (Zhi) Zhong Zi No. 137, and stated that the commercial products that were accused of patent infringement, B120 (0.125-0.250 mm, having the chemical composition of “ZrO2+HfO2 63.94%, Y2O3 0.11%, CeO2 0.011%, SiO2 30.02%, Al2O3 5.84%, HfO2 1.45%”) and B60 (0.063-0.125mm, having the chemical compositionof ZrO2+HfO2 63.94%, Y2O3 0.13%, CeO2 0.015%, SiO2 29.902%,Al2O3 5.54%, HfO2 1.46%) should constitute a disclosure by use against claim 1 of the present patent since they fall into the protection scope of claim 1, thus destroying its novelty.
After examination, the Patent Reexamination Board holds that the determination of the protection scope of a claim shall not be separated from the content of the description and drawings so as to be limited to only the literal expression of the claim. If the person skilled in the art can judge from the disclosure as stated in the description that a claim should not have certain technical features, then the technical solution involving these technical features should be reasonably excluded from the claim scope as far as such exclusion is not evidently contrary to the written expression of the claim. The inventive point of the present invention is to use cheap Al2O3 or CaO as a stabilizer in place of expensive Y2O3 and CeO2, thereby reducing the production cost of ceramic sandblasting beads. Having reading the description, the person skilled in the art can determine that in order to achieve the purpose of the invention, the technical solution of claim 1 must have neither CeO2 nor Y2O3 and the technical solution containing CeO2 and Y2O3 can be reasonably excluded from the protection scope of claim 1. Therefore, the technical solution of claim 1, compared with the existing products B120 and B60, is different at least in that it does not contain Y2O3 or CeO2. Based on the above understanding, the accused products do not fall into the protection scope of the present patent and thus cannot destroy its novelty. Therefore, the Patent Reexamination Board rejected the request for invalidation.
Interpretation and Analysis
An important question raised in the invalidation case is how to reasonably determine the protection scope of a claim. According to the provisions of Article 59, paragraph one of the Chinese Patent Law, the protection scope of the patent right for invention or utility model shall be determined by the terms of the claims; the description and the appended drawings may be used to interpret the content of the claims. This article definitely stipulates that the protection scope of a patent right is determined by taking the content of a claim as the objective basis, while allowing the use of the description and drawings to explain the claim scope.
First of all, the content of a claim plays a predominant role in determining the scope of protection of the claim. According to the guideline of Civil Judgment (2012) Min Ti Zi No. 3 issued by the Supreme Court, the content of a claim for an invention or a utility model shall be determined according to the language of the claim, in combination with PHOSITA’s understanding of the claim when he reads the description and drawings. In the retrial related to Civil Judgment (2012) Min Ti Zi No. 3, claim 1 recites "forming the surface of plastic film with a 0.04-0.09 mm thick uneven and rough face". As can be clearly understood from the above recitation, it means that the uneven and rough face on the surface of the plastic film has a thickness of 0.04-0.09 mm. Although the Examples of the description have mentioned that the thickness of the plastic film may be 0.04, 0.09, or 0.07mm, which shows the numerical values close to or even overlapping with those as recited in the claim, however, PHOSITA would in no case recognize that the above recitation was intended to mean that the thickness of the plastic film is in the range of 0.04-0.09 mm even after reading the description. Hence the recitation "forming the surface of plastic film with a 0.04-0.09 mm thick uneven and rough face" can be undoubtedly constructed as that the uneven and rough face on the surface of the plastic film has a thickness of 0.04-0.09 mm. It can be seen that the content of a claim plays a predominant role in determining the protection scope of the claim, while the description may be referred to if necessary.
However, if a claim needs to be interpreted to some extent going beyond the claim language, the disclosure of the description will play a significantly important part in determining the scope of the claim. Invalidation Decision No. 3817 issued by the Patent Reexamination Board is present as a relevant precedent. The question raised in this case is how to interpret the feature "lens" of claim 1. Literally, the feature "lens" embraces not only the planar lens but also the curved one. Having read the description and appended drawings, however, PHOSITA can recognize that for the purpose of achieving the effects recorded in the patent description and overcoming the defects existing in the background technology, the technical feature of "the planar lens" must be used, and that the technical solution involving "the curved lens" is not in the protection scope of the patent. Therefore, it can be determined that the claim covers only "the planar lens" according to the interpretation of the claim in combination with PHOSITA’s understanding of the description. Such practice for determining the protection scope of a claim from the substance of the invention not only balances the interests of patent owners and the public, but also promotes the settlement of dispute.
To sum up, it is quite necessary to determine the substantive scope of a claim according to PHOSITA’s understanding of the claim after they have read the description and appended drawings. Always keep in mind that "no matter how clear a claim appears to be clear, lurking in the background are documents that may completely disrupt initial views on its meaning".
As far as the present case is concerned, it involves the question of whether or not the claimed composition optionally comprises the components Y2O3 and CeO2. Claim 1 is in an open mode, which does not explicitly exclude the components Y2O3 and CeO2. That is, the composition of the claim 1 can be interpreted as comprisingCeO2 and Y2O3 as the optional components. However, it is clearly recited in paragraph  of the description that “the Chinese patent No. CN1050589C discloses molten ceramic beads and its use. The disclosed molten ceramic beadsembrace a broad range of ZrO2-HfO2-SiO2 compositions with additional oxides Y2O3 and CeO2, showing excellent wear resistance, and can be used as a high-grade grinding and dispersing media. However, the ceramic beads have a limited application and almost no acceptance in the sandblasting industry because of its high cost resulting from the use of Y2O3 and CeO2 as a stabilizer”, and in paragraph  of the description that “the purpose of the present invention is to provide zirconium silicate ceramic sandblasting beads that is inexpensive, capable of eliminating the internal stress, and improving the surface treatment to metal or plastic workpieces". Furthermore, in Summary of Invention and Embodiments of the description are disclosed blasting beads having ZrO2-HfO2-SiO2 composition with additional Al2O3 and CaO for solving the above technical problems of the existing technology and achieving the desired technical effects. The inventive merit of the present invention is to select cheap Al2O3 and CaO as a stabilizer to reduce the production cost of ceramic blasting beads. PHOSITA can understand that for the purpose of reducing production cost, the use of Y2O3 and CeO2 as a stabilizer is not desirable upon reading the description. Therefore, Y2O3 and CeO2 can be reasonably excluded from the composition of claim 1.
The determination of the protection scope of a claim in this case embodies the Supreme Court’s spirit of how to determine the scope of a claim according to what the invention is in substance. In terms of the claim language, it covers both the technical solutions of containing Y2O3 and CeO2 as a stabilizer and of containing none of CeO2 and Y2O3. In this situation, the disclosure of the description becomes significantly important for the interpretation of the claim. Actually, claim 1 was not made so perfect, as it fails to expressly exclude such technical solution that the inventors had intended not to claim. Recent years China has seen the increasing number of applications and granted patents, which has raised worries about their quality. Such worries are being aggravated by a flood of utility model and design patents granted without going through the substantive examination. It becomes quite common that people question the validity of granted patentsClaim 1 at issue takes an open mode, and therefore the claim language does not expressly exclude Y2O3 or CeO2. This should have been an obvious defect. However, as the description of the patent has sufficiently described the object of the invention to solve the clearly specified problem, PHOSITAcan understand that the inventive merit lies in reducing production cost by replacing the cheap stabilizer deliberately selected for the expensive one. The composition containing expensive Y2O3 and CeO2, no matter what amount they are added in, shall not be considered to aim at solving the problem of the existing technology and achieving the object of the invention. Therefore, it departs from the scope of the claimed invention. During the examination of the invalidation case, the Patent Reexamination Board has interpreted the claim scope according to what the invention is in substance, excluding those compositions that depart from the purpose of the invention, further confining the scope. Such a practice advantageously balances the interests of the patent owner and the public.
Looking back to the present invalidation case, the focus of debate actually comes from the flaw in the language of claim 1. This issue would be avoided if the claim had been made in line with the inventive merit of the invention, by fully taking into account the technical problems to be actually solved the technical means adopted, and the desired technical effects so as to reasonably define the claim scope. For example, independent claim 1 can be re-drafted as zirconium silicate ceramic sandblasting beads, characterized in that: having the following composition: 50 to 80% of ZrO2 and HfO2, and 4.5 to 6.5% of Al2O3 or 4.5% to 6.5% of CaO2; when the composition does not contain CaO, the amount of SiO2 is 15% to 45% of the composition, and when the composition contains CaO, the amount of SiO2 is 10% to 45% of the composition, expressed as the weight percentage based on the oxide weight, wherein the zirconium silicate ceramic blasting beads do not contain Y2O3 or CeO2.
To sum up, when drafting a patent, the applicant shall take fully account of the technical problems to be solved by the technical solution, the technical means adopted and the desired technical effects, so as to accurately grasp the inventive merit of the invention, and reasonably define the claim scope.
 Civil Judgment (2012) Min Ti Zi No. 3
 Invalidation Decision No.3817
 Explanation on the Chinese Patent Law, Xintian Yin, published by the Intellectual Property Press (2011)
 Civil Judgment (2009) Hu Gao Min San (Zhi) Zhong Zi No. 137
 Autogiro Co. of America v. United States, 384 F.2d. 391, 397, 155 USPQ 697