Article 2.2 of the PRC Patent Law defines that an “’invention’ refers to any new technical solution proposed for a product, a process or the improvement thereof”, which means the patent law defines the technical solution as a collection of technical means employing natural law to solve technical problems.
On the basis of this article, one issue that may occasionally arise during patent examination is a non-technical solution rejection. In such a case, in order to address the above problem, the three fundamental elements of a solution in an invention, i.e. technical problem, technical means and technical effects, need to be precisely identified in the response to the related office action.
More specifically, from the description, it is necessary to identify what problem the application is actually trying to solve with respect to the prior art. The examiner may have misconstrued the invention and incorrectly concluded the problem to be solved by the invention, or the examiner may have deliberately enlarged the scope of the problem so as to include aspects that are not actually solved by the invention. On the basis of the properly identified problem, the inventive matters presented in the invention may have to be pointed out in the response, as well as the specific technical means for realizing the efforts, which contributes to our efforts to overcoming the difficulties. When convincing the examiner that our independent claim includes a technical solution, it may be necessary to clarify to the examiner how the technical means interact with each other so as to utilize the laws of nature to solve the above identified problem and to achieve the desired technical effects that are also in accordance with the laws of nature.
By making appropriate argumentations or clarifications, the examiner may understand that the respective features or a combination of the features as defined in the claim for overcoming the difficulties in the field are not simply specified by mankind but aiming to achieve intentional improvements by means of the laws of nature. In addition, the examiner may understand from the arguments that the respective features or a combination of the features has embodied the natures that exist objectively and that are not results of our mental activities. In the response to the rejection, less or preferably no language related to human intelligence and objective intentions should be involved. Instead, terms used for describing the claimed solution or technical problem should be presented in a more technical manner and directed to specific technical effects, such as increasing manufacturing, operation or communication efficiency, improving a particular technical parameter, and reducing power consumption of a device or a particular component.
As tips for avoiding such issues in the future office action, when a patent application is being drafted, it may be necessary to include in the claims features that are obviously technical means and it may then be easier for the examiner to understand that these specific technical means are used to solve technical problems and achieve technical effects as mentioned in the description.