1Forward

After filing an invention application, an applicant has several opportunities to amend the invention application on his own initiative, e.g., when a request for substantive examination is made or within three months after the application enters into the substantive examination, or when a PCT application enters the national phase or when a divisional application is filed. Generally, compared with amendments made in response to an office action, the amendments on one’s own initiative have fewer restrictions. For example, the applicant may amend or remove a technical feature within the content of the application as filed to expand the extent of the protection, or add a new dependent claim, etc., as only as the amendments to the application document of the invention or utility model do not go beyond the scope of disclosure contained in the initial description and claims. Currently, the judgment on whether amendments go beyond the content of the application as filed is rather strict. Then, in which cases the amendments in the manner of removing a technical feature do not go beyond the content of the application as filed? Hereinafter, analysis will be given with reference to relevant regulations of the Patent Law of the People’s Republic of China and the Guidelines for Patent Examination and a detailed case.

2Principles for judgment

Article 33 of the Patent Law prescribes that “an applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims”. In practical operations, it is found that the above prescript is rather abstract and is hard to grasp during practical operations. Therefore, some detailed manners such as unallowable additions, unallowable changes and unallowable deletions are listed in the Guidelines for Patent Examination.

The Guidelines for Patent Examination prescribes unallowable deletionsin part II, Chapter VIII-5.2.3.3: “the technical features which are definitely determined as the essential technical features of the invention in the initial application are deleted from the independent claim, i.e., the technical features which are described as the essential technical features throughout the initial application are deleted”.

The Guidelines for Patent Examination prescribes in part II, Chapter II-3.1.2 that “‘Essential technical features’ refer to the technical features of an invention or utility model that are indispensable in solving the technical problem and the aggregation of which is sufficient to constitute the technical solution of the invention or utility model and distinguish from the other the technical solutions described in the background art”.

Thus, the judgment on whether the deletion of a technical feature from an independent claim goes beyond the content of the application as filed should involve a judgment on whether the technical feature being deleted is an essential technical feature. As to the judgment on whether the technical feature is the essential technical feature, this technical feature should be placed in the technical solution of the application in combination with the technical problem to be solved, and should be compared with the technical solution in the background art.

Hereinafter, the judgment on whether the deletion of a technical feature goes beyond the content of the application as filed is described with reference to a detailed case.

3Example

Title: Workpiece transport device

Claim 1:

Workpiece transport device (1) for a machine that shapes workpieces (2) onexposed side surfaces (2') during their passage, having

at least one endlessly circulating transport belt (4), on the upper strand (4') of which the workpieces (2) are held by form and/or friction, and

having a fixed guide device (6) for the transport belt (4) that comprises a guide rail (8) holding the upper strand (4') along a transport section, where

the guide rail (8) on its upper side comprises a channel (8’) adapted to the form ofthe belt concernedand a base in which are disposed air outlet openings (10) connected with a compressed air source,

characterized in that

the workpiece transport device (1) comprises a linear guide element (12) designed to engage in a guide groove (2") provided in the workpiece (2) to be transported,

wherein the workpiece transport furthermore has at least one support skid (16) which extends laterally next to and substantially parallel to the transport belt (4), and the upper side of which is substantially flush with the upper side of the upper strand (4') of the transport belt (4), and at least one spring-mounted pressure rail (18) which extends above and substantially parallel to the support skid (16).

Click here to view image.

[Amendments on one’s own initiative]

Within three months after the application entered into the substantive examination, the applicant had made amendments on his own initiative, including deleting the feature “a channel (8’) adapted to the form ofthe belt concerned” from the above claim and adding a dependent claim containing this deleted technical feature.

[Opinions of the Examiner]

During the substantive examination, the examiner had pointed out that the above amendments go beyond the scope of disclosure contained in the initial description and claims, since the technical solutions before and after this technical feature was deleted have a substantial difference and the technical solution after the technical feature was deleted cannot be determined directly and unambiguously according to the disclosure contained in the initial description and claims. The opinions of the examiner were as follows:

①Basis for judging whether amendments go beyond the content of the application as filed is “whether the amended contents are definitely described in the initial description and claims or can be determined directly and unambiguously according to the information recorded in the initial description and claims”, but not “whether the deleted technical feature is an essential technical feature”;

② In the original application document, the guide rail always includes the channel on its upper side. Besides this guide rail, no guide rails with other types or structures are described. After the applicant deletes the above technical feature, the guide rail may include the channel on its upper side or include no channel on its upper side. This obviously goes beyond the content of original application document. Based on the above, a decision of rejection was made.

[Arguments of the Applicant]

The applicant regarded that the above amendments do not go beyond the scope of disclosurecontained in the initial description and claims, since the deleted feature “the guide rail (8) on its upper side comprises a channel (8’) adapted to the form ofthe belt (4) concerned” is not an essential technical feature of the workpiece transport device of the present invention. The detailed reasons are as follows.

①Essential technical features refer to the technical features of an invention or utility model that are indispensable in solving the technical problem and the aggregation of which is sufficient to constitute the technical solution of the invention or utility model and distinguish the same or the technical solutions described in the background art. However, the technical feature “the guide rail (8) on its upper side comprises a channel (8’) adapted to the form ofthe beltconcerned” does not differentiate claim 1 from the background art.

②The present application does not definitely indicate that this technical feature is an essential technical feature.

③This technical feature is not indispensable in solving the technical problem of the present application. The technical problem to be solved by the present application is that, “the workpiece to be machined is transported precisely and stably with high transport speeds”. Without this channel (8’), the transport belt can still endlessly circulate on the guide rail (8). Considering the technical feature “the linear guide element (12) is designed to engage in the guide groove (2") provided in the workpiece (2) on the transport belt (4)”, the positioning of the workpiece (2) during the transportation and processing is improved. The support skid (16) is substantially parallel to the upper side of the upper strand of the transport belt (4), which provides a particularly precise reference plane for the transported workpieces and a stabe support for the workpieces 2 during the machining process. The spring-mounted pressure rail 18 cooperates with the support skid 16 to stably guide and precisely position the workpieces 2, and prevent their deviation during the machining process. The above technical features can solve the technical problem of precisely and stably transporting the workpiece with high transport speeds and achieve the technical effect of machining theworkpiece with low tolerances.

④After deleting this technical feature, claim 1 can also achieve the technical effect of “the apparatus has a high transport speed and allows machining of the workpieces being transported with low tolerances” without amending the remaining technical features of claim 1.

[Results]

During the reexamination procedure, the board had agreed with the arguments of the applicant and withdrawn the decision of rejection of the present application.

4Conclusion

Based on the above analysis, we can get a following conclusion. When an independent claim is amended, if a technical feature deleted from this independent claim is not an essential technical feature of the application and the deleted technical feature has no relation with, i.e., is independent to other technical features, such amendment does not go beyond the scope of disclosure contained in the original description and claims and is in conformity with Article 33 of the Patent Law. Although the amendment by way of deleting a technical feature is within the content of the applicationas filed, such deletion should be made when amendments on one’s own initiative are allowed. If the deletion is made when responding to an office action, the deletion will not be allowed by the examiner according to Rule 51, paragraph 3 of the implementation of the Patent Law that “the amendments are not directed to the defects pointed out by the notification”. Therefore, the applicant should hold the opportunity of making amendments on his own initiative to amend the application document reasonably.